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

[Scott Landsbaum]

Thank you. I was beginning to feel a little disoriented.  I will try
calling the examiner.  In my response, I did cite and quote from TMEP §
1207.01(b)(ix) and numerous cases and provided evidence of 26 instances
where the exact mark is being currently used to sell identical goods as the
cited registration, along with another 4 instances of variations similar to
the applied for mark (again on the exact goods).

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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On Wed, Jun 18, 2025 at 3:48 PM John Dugger via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> Hi Scott,
>
> I recommend calling the Examining Attorney to discuss and then following
> up with a formal response. In my experience, it can be very helpful to hash
> potential misunderstandings out via phone before laying out the formal
> argument in writing.
>
> All the best,
>
> John
> Sent from my iPhone
>
> On Jun 18, 2025, at 5:36 PM, Sam Castree via E-trademarks <
> e-trademarks at oppedahl-lists.com> wrote:
>
> 
> 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/
>>
>> NOTICE: This e-mail is intended solely for the individual or individuals
>> to whom it is addressed and may contain confidential attorney-client
>> privileged information and attorney work product. If you are not the
>> intended recipient, please do not read, forward, print, copy or distribute
>> it or any of the information it contains.  Please delete it immediately and
>> notify us by return email or by telephone at (323) 314-7881.
>>
>> IRS CIRCULAR 230 DISCLOSURE: Any discussion of tax matters contained in
>> this or any email (including any attachments) or in any oral or other written
>> communication is not intended to be used and cannot be used for the purpose
>> of avoiding U.S. tax related penalties or in connection with the promotion,
>> marketing or recommendation of any of the matters addressed in the
>> communication.
>> --
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>>
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