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

[carla calcagno]

Hi Jessica

 More fundamentally, the EA usually won't withdraw based solely on the
argument that a registration is invalid, as technically this is not within
their jurisdiction. You may argue however, that  the sole common portion ot
the two marks is at th least  very diluted ( I imagine if you look at the
register it is), and inherently highly suggestive or laudatory. Thus, the
marks in their entireties are not likely to be confused.

Often this will get the EA to withdraw.

Good luck!

On Tue, Jul 29, 2025 at 2:15 PM Jessica R. Friedman via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> If I do, then I lose, because clearly it is really the fault of the PTO
> examiner who said, just disclaim FINANCIAL.
>
> 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 <jrfriedman at litproplaw.com>*
>
> URL: *www.literarypropertylaw.com <http://www.literarypropertylaw.com>*
>
>
>
> [image: 1479430908386_PastedImage]
>
>
> *From: *E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf
> of asarabia2 via E-trademarks <e-trademarks at oppedahl-lists.com>
> *Date: *Tuesday, July 29, 2025 at 2:09 PM
> *To: *e-trademarks at oppedahl-lists.com <e-trademarks at oppedahl-lists.com>
> *Cc: *asarabia2 <asarabia2 at gmail.com>
> *Subject: *Re: [E-trademarks] Mark that was not distinctive when
> registration was granted but maybe is now
>
> 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 <jrfriedman at litproplaw.com>*
>
> URL: *www.literarypropertylaw.com <http://www.literarypropertylaw.com>*
>
>
>
> [image: 1479430908386_PastedImage]
>
>
>
>
> --
> E-trademarks mailing list
> E-trademarks at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>
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