[E-trademarks] Compound Mark That Incorporates Another Mark

[Dale Quisenberry]

Thanks, Laura.

The known word is not generic or descriptive, and not disclaimed.

I view my client’s mark as being fanciful and thus strong.  The existence of the coined word joined with the registered known word, it seems to me, creates different meaning, sound and commercial impression.  Just looking for some case law that supports that argument.

Thanks again for your response.

Dale

C. Dale Quisenberry
Quisenberry Law PLLC
13910 Champion Forest Drive, Suite 203
Houston, Texas 77069
(832) 680.5000 (office)
(832) 680.1000 (mobile)
(832) 680.5555 (facsimile)
www.quisenberrylaw.com<http://www.quisenberrylaw.com>

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From: Laura Geyer <lgeyer at ndgallilaw.com>
Date: Friday, 3 January 2025 at 12:45 pm
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Dale Quisenberry <dale at quisenberrylaw.com>
Subject: RE: Compound Mark That Incorporates Another Mark
Dale:

The answer here really depends on the nature of the “known word” in the blocking mark. Is the “knownm word” descriptive/generic in the context of your or their services or does it instead have some strength as part of the other mark? Is it disclaimed from the blocking mark?

There’s good [well, bad in this situation] authority that a using a “known word” that is/is incorporated in someone else’s trademark along with a coined term doesn’t defang it, because it suggests an association or cobranding type situation. But if the shared “known word” is highly or merely descriptive in the context of the goods/services then it seems like the usual arguments for that situation would apply.

An admittedly extreme situation might be say, “[Coined term] Apple”. If the goods/services are music/computers/anything where the word “apple” (a very well-known word]) is not highly descriptive (fruit-related, perhaps?), then the “known word” apple is going to be assumed to be associated with Apple, Inc. for LOC purposes. But if it’s [XYRWYXY] APPLE STAND, and the other mark is [BOB’S] “APPLE STAND” then the word apple there is generic in that context and can’t cause confusion.

Kindly,
Laura

Laura Talley Geyer | Of Counsel

ND Galli Law LLC
1200 G Street, N.W., Ste 800
Washington, DC 20005
Tel: (202) 599-9019 (direct)
https://ndgallilaw.com/laura-geyer/
https://ndgallilaw.com/

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Dale Quisenberry via E-trademarks
Sent: Friday, January 3, 2025 1:24 PM
To: Crane, Susan via E-trademarks <e-trademarks at oppedahl-lists.com>
Cc: Dale Quisenberry <dale at quisenberrylaw.com>
Subject: [E-trademarks] Compound Mark That Incorporates Another Mark

EXTERNAL EMAIL
Listmates,

I have a pending application where my client’s mark is a compound mark that includes a known word and a made up word.

The Examiner issued LOC refusal based on a registered mark on the known word.

Does anyone have a handy reference to another application with a response to office action that rebuts this type of refusal?

Thanks in advance.

Dale

C. Dale Quisenberry
Quisenberry Law PLLC
13910 Champion Forest Drive, Suite 203
Houston, Texas 77069
(832) 680.5000 (office)
(832) 680.1000 (mobile)
(832) 680.5555 (facsimile)
www.quisenberrylaw.com<http://www.quisenberrylaw.com>

This email may contain information that is confidential and subject to the attorney-client privilege, work product doctrine and other applicable privileges.  This email is intended to be received only by those to whom it is specifically addressed.  Any receipt of this email by others is not intended to and shall not waive any applicable privilege.  If you have received this email in error, please delete it and immediately notify the sender by separate email.  Thank you.


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