[E-trademarks] Mark that was not distinctive when registration was granted but maybe is now

[asarabia2]

Don't you have to prove fraud?

Regards,

Tony

IP Business Law, Inc.
320 via Pasqual
Redondo Beach, CA 90277
(310)377-5171
www.calrestitution.com

On 7/29/2025 10:29 AM, Jessica R. Friedman via E-trademarks wrote:
> (Hypothetical) My client wants to register BROWN PREMIER for financial 
> advisory services. There is a Principal registration on the books 
> for PREMIER FINANCIAL. “Premier” clearly is laudatory; it’s even one 
> of the examples that the TMEP gives of laudatory marks. At the time of 
> application, the applicant had been using it for only three years, so 
> there no presumption created by five years of use. So, it seems that 
> this was a completely descriptive mark. But the PTO didn’t object 
> under Section 2(e) or ask for evidence of secondary meaning. It simply 
> suggested that the applicant disclaim the word FINANCIAL, which it did.
>
> If this registration for PREMIER FINANCIAL is cited against an 
> application to register BROWN PREMIER, I’d like to argue that the 
> existing registration shouldn’t have been granted because the mark was 
> merely descriptive and had not acquired distinctiveness. But now 
> PREMIER FINANCIAL has been in use for 20 years. Let’s assume that now 
> it is distinctive. Does that fact preclude me from arguing 
> successfully that the registration was invalid from the getgo?
>
> Jessica R. Friedman
>
> Attorney at Law
>
> 300 East 59 Street, Ste. 2406
>
> New York, NY 10022
>
> Phone: 212-220-0900
>
> Cell: 917-647-1884
>
> E-mail:_jrfriedman at litproplaw.com_
>
> URL: _www.literarypropertylaw.com <http://www.literarypropertylaw.com>_
>
> 1479430908386_PastedImage
>
>
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