[E-trademarks] Not allowed to argue weak mark?

[Robert Reynolds]

Scott,

                I’d wager this misunderstanding depends on the type and amount of evidence you submitted. If proof of use of similar marks for similar goods and/or registrations for goods at least as similar to the cited mark takes up the bulk of your response, then the EA misconstruing the argument seems more like bad faith. If there’s only a little evidence of actual use in commerce (or other registrations) then it could be an honest mistake.

                But no, arguing about the marketplace strength of a registration is absolutely a valid response, and is not a collateral attack against the registration. Maybe drop in a relevant cite to Juice Generation or Jack Wolfskin if they were missing from the original response, to nudge them in the right direction?

I have no advice on how to gently say “sorry, I think we may be talking past each other, here...” to the USPTO.

Bob Reynolds
Senior Counsel
Klintworth & Rozenblat IP LLP
2045 W. Grand Ave, Ste B PMB 84396
Chicago, Illinois 60612
direct 773.770-2554  fax 773.570.3328
rreynolds at kandrip.com<mailto:rreynolds at kandrip.com>
www.knrllp.com<http://www.knrllp.com>

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Scott Landsbaum via E-trademarks
Sent: Wednesday, June 18, 2025 5:17 PM
To: for trademark practitioners <e-trademarks at oppedahl-lists.com>
Cc: Scott Landsbaum <scott at scottlandsbaum.com>
Subject: [E-trademarks] Not allowed to argue weak mark?

Hi All, Re-phrasing an email from last week to see if I can generate some input here.  In response to a 2(d) refusal, I argued that the cited registration is weak because it's used extensively in the market by different companies for identical goods.  Thus, the minor differences between our mark and the cited registration should be sufficient to avoid any confusion.  The examiner rejected the argument by claiming I am attacking the validity of the cited registration, which of course isn't allowed in this context.  This seems to me a really off response. I'd greatly appreciate a gut check here to see if I'm missing something in my argument or the examiner's response.
Thanks.

Regards,
Scott

Scott Landsbaum, Inc.
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