[E-trademarks] Mark Significance?
Pamela Chestek
pamela at chesteklegal.com
Wed Feb 12 22:48:10 UTC 2025
Because you improperly shifted the burden of proof, asking naive
applicants to confess before they know what they're being charged with.
If the examining attorney had no reason to believe that "Triangle" was
geographically descriptive because their examination of objective
evidence did not show that the consumer's understanding of the term is
one of geographic descriptiveness, by providing that information you've
both added even more capriciousness to an already capricious process and
added more work to the examining attorney.
Pam
Pamela S. Chestek
Chestek Legal
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pamela at chesteklegal.com
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On 2/12/2025 2:28 PM, Edward Timberlake wrote:
> 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 <http://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/>
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>> <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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