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

[Sam Castree]

Y'know, I'm starting to think that examiners don't understand what a
collateral attack on the registration actually looks like.  You're entirely
right and the examiner is wrong.  In the past, I've had some success with
just laying out what I'm actually saying.  "No, I'm not attacking the
*validity* of the registered mark.  My point is that the registrant's scope
of protection doesn't extend to my client's mark because..."  (But, of
course, put in more lawyerly language.)  Check TMEP §§ 1207.01(d)(iv) and
1216.02 for stuff about collateral attacks, and point out how you aren't
doing that.

Cheers,

Sam Castree, III

*Sam Castree Law, LLC*
*3421 W. Elm St.*
*McHenry, IL 60050*
*(815) 344-6300*

On Wed, Jun 18, 2025 at 5:19 PM Scott Landsbaum via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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.
> 323-314-7881 / f 323-714-2454
> 8306 Wilshire Blvd., Suite 420, Beverly Hills, CA  90211
> www.scottlandsbaum.com / www.linkedin.com/in/scottlandsbaum/
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