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

Tue Jul 29 19:11:26 UTC 2025

There are two PTO rules at work here:

  1.  You can’t attack the validity of a registration cited against your application—you’d have to file a petition to cancel.
  2.  Even if you file a cancellation action, mistakes by examiners or the PTO are generally not a basis for invalidating a registration.

As Carla rightly points out, while you can’t attack the validity of the cited registration in an OA response, you can argue that the registration is weak and entitled to a limited scope of protection.

Kevin Grierson
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of carla calcagno via E-trademarks
Sent: Tuesday, July 29, 2025 2:55 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: carla calcagno <cccalcagno at gmail.com>
Subject: Re: [E-trademarks] Mark that was not distinctive when registration was granted but maybe is now

EXTERNAL EMAIL
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<mailto: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<mailto:jrfriedman at litproplaw.com>

URL: www.literarypropertylaw.com<http://www.literarypropertylaw.com/>

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> on behalf of asarabia2 via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Date: Tuesday, July 29, 2025 at 2:09 PM
To: e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com> <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: asarabia2 <asarabia2 at gmail.com<mailto: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<http://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<mailto:jrfriedman at litproplaw.com>

URL: www.literarypropertylaw.com<http://www.literarypropertylaw.com/>

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