[E-trademarks] Push back against a TM bully

[Edward Timberlake]

While I'm not at all unsympathetic concerning the cruelties of capitalism
or the complexities of trademark (and trademark registration) law, is it
strictly accurate to say the coffee shop is "also selling products that we
hold a trademark for—greeting cards, candles, books, home goods, bags"?

Are registrations covering retail store services featuring particular goods
exactly the same as registrations covering those goods?

The stationary shop registration covers "retail store services featuring
stationery, jewelry, cards, books, home goods, towels, earrings, bracelets,
pins, pencils, pens, stickers, scarves, all purpose carrying bags, bags,
rings . . ."

Is that the same as the stationary shop "holding a trademark for" stationery,
jewelry, cards, books, home goods, towels, earrings, bracelets, pins,
pencils, pens, stickers, scarves, all purpose carrying bags, bags, rings .
. . ?

If the stationary shop registration for

post.script.

as a trademark for

retail store services featuring pens

had exactly the same effect as a registration for

post.script.

as a trademark for goods, namely,

pens

wouldn't we expect registration for

post.script.

to have been refused based on the existing registration (owned by Staples)
for

POSTSCRIPT

as a trademark for

ball point pens?


One of the post.script. registrations:

https://tsdr.uspto.gov/#caseNumber=88979242&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch

POSTSCRIPT COFFEE registration:

https://tsdr.uspto.gov/#caseNumber=97341338&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch

Staples' POSTSCRIPT registration:

https://tsdr.uspto.gov/#caseNumber=78887515&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch



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 Tue, Feb 25, 2025 at 7:47 PM Lara Pearson via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> Ooops - article links:
>
>
> https://www.sfchronicle.com/realestate/article/postscript-business-san-francisco-19986839.php
>
>
> https://sfstandard.com/2025/02/22/two-postscript-shops-same-name-san-francisco-feud/
>
>
>
>
>
> On Tue, Feb 25, 2025 at 4:41 PM Lara Pearson <lara at brandgeek.net> wrote:
>
>> Happy Tuesday TM List friends!
>>
>> If you're in the SF Bay, you may have heard of the post.script dispute.
>>
>> Here's a fun angle: the prior user started a petition
>> <https://docs.google.com/forms/d/e/1FAIpQLSd2ZNLFGeVoLoUXGSqMz8uR1LMUYdIVFTcstxCz5BSpUFT55A/viewform>
>> to try to get the infringer to stop. Thought I'd circulate it here for
>> folks to sign, if so inclined (or support in other ways if you are able). I
>> connected with Chandler, who owns post.script, and suggested she contact
>> law school clinics, while she keeps shining as much of a light on her
>> dispute as possible, since we all know, vampires cannot survive in the
>> light.
>>
>> Be kind,
>>
>> Lara Pearson (she/her/hers) [Why pronouns
>> <https://medium.com/gender-inclusivit/why-i-put-pronouns-on-my-email-signature-and-linkedin-profile-and-you-should-too-d3dc942c8743>
>> ?] (Hear how I say my name <https://namedrop.io/larapearson>)
>>
>> Law Office of Lara Pearson Ltd, PBC
>>
>> Leader, Brand Geek
>>
>> Lara at BrandGeek.net | Ph: 775.833.1600 | My bio
>> <http://brandgeek.net/about/>
>>
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>>
>> *Protecting the Brands that are Changing the World**®*
>>
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>>
>>
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>>
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>>
>>
>> --
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