[E-trademarks] Mark Significance?

Wed Feb 12 22:28:13 UTC 2025

If you say "I chose the mark Triangle Cleaners because my dry cleaning
establishment is in the Triangle area," I'm not suggesting that should
result in a geographic descriptiveness refusal because that was your
inspiration — simply that the knowledge of the geographic significance of
"Triangle" to somebody outside of the Triangle area of North Carolina could
influence the assessment of whether registration on the Principal Register
was appropriate, and also whether and how much evidence of acquired
distinctiveness might be appropriate under the circumstances.

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 5:08 PM Pamela Chestek via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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
> PLEASE NOTE OUR NEW MAILING ADDRESS
> 4641 Post St.
> Unit 4316
> El Dorado Hills, CA 95762
> +1 919-800-8033
> pamela at chesteklegal.com
> www.chesteklegal.com
>
> 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>*
>
> *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 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.
>>
>>
>>
>> *Kevin Grierson*********
>>
>> |
>>
>> Partner
>>
>> <https://www.cm.law/>
>>
>>
>> [image: Mobile:]
>>
>>   757-726-7799
>>
>> [image: Fax:]
>>
>>   866-521-5663
>>
>> [image: Email:]
>>
>>   kgrierson at cm.law
>>
>> *Please note: Culhane Meadows is now CM Law
>> <https://www.cm.law/cm-law-formerly-culhane-meadows-launches-second-decade-with-fresh-name-and-modern-brand/>*
>>
>>
>>
>> *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*
>> *Counsel*
>> 612.672.8385
>> *Bio* <https://www.maslon.com/ekahana>   *vCard*
>> <https://www.maslon.com/bio/vcard/681>   *LinkedIn*
>> <http://www.linkedin.com/in/erankahana/>
>>
>>
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