[E-trademarks] Compound Mark That Incorporates Another Mark

[Rebecca Brandau]

They are getting tougher in this type of situation.  The short story is
that we eventually failed to convince the examiner or his super, after
extensive arguments about numerous ways in which the two marks were not
likely to be confused. The super finally confessed that the real (only)
reason was that the cited mark was the only registered mark they could find
that included the word in question in the given classification, despite
many other distinguishing features of the two marks, use, target customer,
type of store..... The client finally decided to develop a new mark,
although the subject mark is still being used on the same goods, with no
objection by the owner of the cited mark.
You can try arguing all the other elements which lead to lack of
likelihood of confusion, but be sure to first search for other "similar"
marks in the same class; the more the better.  (Oh, yes, this client
refused to have a search done because they had made up the mark themselves.)
Good luck,
/Becky/

On Fri, Jan 3, 2025 at 1:24 PM Dale Quisenberry via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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
>
>
>
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