[E-trademarks] Mark Significance?

Wed Feb 12 22:08:05 UTC 2025

My guess is you would get far too much noise if you asked that question, 
with people telling you "it's a combination of the first letters of my 
kid's names."

Also, the burden is on the office identify the barriers to registration. 
The statutory bases for refusing registration are about the objective 
meaning to a consumer, not the wide variety of reasons I might have for 
choosing a trademark. If I say "I chose the mark Triangle Cleaners 
because my dry cleaning establishment is in the Triangle area," should 
that result in a geographic descriptiveness refusal because that was the 
applicant's inspiration, even though "Triangle" could have many, many 
different meanings and therefore wouldn't ordinarily get a geographic 
descriptiveness refusal? So you're going to deny some registrations, but 
not others, depending on what the applicant confesses? That surely plays 
even more havoc with a system that is already pretty capricious.

Pam

Pamela S. Chestek
Chestek Legal
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On 2/12/2025 1:13 PM, Edward Timberlake via E-trademarks wrote:
> Rather than ask why a significance inquiry was made in this case one 
> might reasonably ask why significance statements aren't a part of all 
> applications for registration.
>
> If there's something you know (about how a mark might be likely to be 
> perceived in a particular industry) that the Trademark Examining 
> Attorney doesn't know that could influence the analysis of whether 
> registration is appropriate under the statute, mightn't it make sense 
> for you to be required to disclose it (without needing to be asked)?
>
> At least in my opinion, the fact that we're not asked to make a 
> separate statement in the vast majority of instances more than 
> outweighs the occasional need to make one.
>
>
> 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>/
>
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>
>
>
> On Wed, Feb 12, 2025 at 3:54 PM Kevin Grierson via E-trademarks 
> <e-trademarks at oppedahl-lists.com> wrote:
>
>     Right.  There’s even a checkbox for it in the ROA form.
>
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>
>     *From:*E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On
>     Behalf Of *carla calcagno via E-trademarks
>     *Sent:* Wednesday, February 12, 2025 3:43 PM
>     *To:* For trademark practitioners. This is not for laypersons to
>     seek legal advice. <e-trademarks at oppedahl-lists.com>
>     *Cc:* carla calcagno <cccalcagno at gmail.com>; Eran Kahana
>     <Eran.Kahana at maslon.com>
>     *Subject:* Re: [E-trademarks] Mark Significance?
>
>     EXTERNAL EMAIL
>
>     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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