[E-trademarks] Mark Significance?

Wed Feb 12 23:30:50 UTC 2025

Good point Carl, but let's remember that even if Applicant is innocent, the
registration still will be vulnerable to cancellation for at least the
first five years on the inherently improper significance grounds.   After,
that you can only cancel on the grounds of fraud.  Very High bar.

On Wed, Feb 12, 2025 at 4:50 PM Miriam Richter, Esq. via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> That is yet another reason I love you Carl!
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> Best,
>
> Miriam
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> Miriam Richter, Attorney at Law, P.L.
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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!
>
>
>
>
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