[E-trademarks] Mark Significance?

[Michael Brown]

Remember that failing to provide some statement as to a word's significance
in a mark is also likely to kick in one of the new surcharges, multiplied
by all classes in an application.

Michael Brown
Michael J Brown Law Office
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michaeljbrownlaw at gmail.com
michael at mjbrownlaw.com
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On Wed, Feb 12, 2025 at 6:31 PM carla calcagno via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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!
>>
>>
>>
>> Best,
>>
>> Miriam
>>
>>
>>
>> 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!
>>
>>
>>
>>
>>
>> *Eran Kahana*
>> *Counsel*
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