[E-trademarks] Mark Significance?

Edward Timberlake ed at timberlakelaw.com
Wed Feb 12 21:50:30 UTC 2025


Such Significance!



Sincerely,

Ed Timberlake
*Board Certified Specialist in Trademark Law
<https://www.nclawspecialists.gov/for-the-public/find-a-board-certified-specialist/results/detail/?id=29473>*

*Timberlake Law* <http://timberlakelaw.com/>
Chapel Hill, NC

Schedule a call on Clarity <https://clarity.fm/edtimberlake>
ed at timberlakelaw.com
919.960.1950








On Wed, Feb 12, 2025 at 4:49 PM Miriam Richter, Esq. via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> That is yet another reason I love you Carl!
>
>
>
> Best,
>
> Miriam
>
>
>
> Miriam Richter, Attorney at Law, P.L.
>
> *Make Your Mark!** ®*
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> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
> Of *Carl Oppedahl via E-trademarks
> *Sent:* Wednesday, February 12, 2025 3:26 PM
> *To:* For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc:* Carl Oppedahl <carl at oppedahl.com>
> *Subject:* Re: [E-trademarks] Mark Significance?
>
>
>
> So far as geography and foreign language are concerned, I feel pretty
> strongly that I cannot say categorically it has no foreign language
> equivalent or geographic meaning.  Seems to me you could string any twelve
> characters together it by chance it might turn out to be the name of an
> intermittent stream in Siberia, or it might turn out to mean something in
> some language that I do not know about.  Seems to me I would be lying to
> say that I actually know the answer to be "no".
>
> So what I always say is "applicant is unaware of" any geographical or
> foreign language significance.
>
> As to industry significance, I typically say "yes of course the wording
> such-and-so has *enormous* significance in the relevant industry, namely
> as an indicator of the origin of the applicant's goods.  Applicant is
> unaware of any other significance."  I often put "enormous" in bold and
> italics.
>
> On 2/12/2025 1:42 PM, carla calcagno via E-trademarks wrote:
>
> If it is an unusual word and the Examiner can't find any meaning in the
> numerous resources available to them, I have seen them issue this inquiry
> just to ensure that they haven't missed anything. A simple response that
> the term has no industry, geographical,or foreign language significance in
> relation to the goods suffices.
>
>
>
> Regards
>
>
>
> Carla
>
>
>
> On Wed, Feb 12, 2025 at 3:23 PM Eran Kahana via E-trademarks <
> e-trademarks at oppedahl-lists.com> wrote:
>
> I received an office action with a “Mark Significance” requirement asking
> for industry, geographical, and foreign language significance. I am trying
> to determine what triggered it. An application for a nearly identical name
> (for different goods) sailed through without triggering it. The office
> action don’t cite the TMEP for this and I wasn’t able to find TMEP
> instructions on point. Does the examiner do any sort of research that
> causes this?
>
>
>
> Thanks!
>
>
>
>
>
> *Eran Kahana*
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