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

[Edward Timberlake]

Given the case by case nature of trademarks (and trademark registration),
I'm not sure I'd be in a hurry to jump to the conclusion that something
like PREMIER would necessarily be considered to be merely descriptive in
every context.

And, for example, the sheer number of live registrations on the Principal
Register not based on acquired distinctiveness, in Class 36 alone, where
the mark contains PREMIER but where PREMIER has not been disclaimed, seems
like it would make it difficult to argue that any registration containing
PREMIER where PREMIER had not been disclaimed would necessarily be a
mistake.

[image: Trademark-Search-07-29-2025_02_45_PM.jpg]

Sincerely,

Ed Timberlake
*Board Certified Specialist in Trademark Law
<https://www.nclawspecialists.gov/for-lawyers/certification-standard-summaries/trademark-law/>*

*Timberlake Law* <http://timberlakelaw.com/>
Chapel Hill, NC

Schedule a call on Clarity <https://clarity.fm/edtimberlake>
ed at timberlakelaw.com
919.960.1950








On Tue, Jul 29, 2025 at 2:14 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
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20250729/b6c79a6a/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001[8].png
Type: image/png
Size: 8891 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20250729/b6c79a6a/attachment.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001[62].png
Type: image/png
Size: 8891 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20250729/b6c79a6a/attachment-0001.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: Trademark-Search-07-29-2025_02_45_PM.jpg
Type: image/jpeg
Size: 915014 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20250729/b6c79a6a/attachment.jpg>