[E-trademarks] Mark Significance?

[Sam Castree]

"*the wording such-and-so has enormous** significance in the relevant
industry, namely as an indicator of the origin of the applicant's goods*"
What an amazing response.

Cheers,

Sam Castree, III

*Sam Castree Law, LLC*
*3421 W. Elm St.*
*McHenry, IL 60050*
*(815) 344-6300*



On Wed, Feb 12, 2025 at 3:28 PM Carl Oppedahl via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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*
>> *Counsel*
>> 612.672.8385
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>>
>>
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