criticalthinker
Member
I have an educational program in the Northern US that uses a specific phrase. The names and trademarks I use below are not the actual names/trademarks.
For the sake of this post let's say the phrase is "Better Retirement Planning For You". I've been using a similar phrase for about one year now, though much more actively in the last 5 months as I finally saved enough to produce written materials and publish dozens of semi-professional videos that contain the phrase.
Earlier this week someone pointed out that a company down South applied to trademark a similar phrase in March 2013 and filed an ITU as well - their version contains another of their trademarks. Let's call it "Better Retirement Planning with ACME Financing".
The application has not yet been published for opposition at this point. Here's what I do know based on my research:
1. USPTO examining atty responded July 2013:
"Registration of the applied-for mark is refused because of a likelihood of confusion with the marks X, Y and Z." Citing the applicants own similar trademarks containing its business name, the atty went on to write "The examining attorney finds that the term ACME Financing is the dominant feature of both applicant�s and registrant�s marks. Turning first to registrant�s marks, ACME Financing is dominant for three reasons."
He cited three reasons then wrote "In each mark, consumers understand that ACME Financing is the source of the services, as the marks highlight this fact through the use of the phrase �An ACME Incorporated COMPANY.� Consumers will understand that while ACME Incorporated may in some way own or control ACME Financing, the services consumers receive come directly from ACME Financing. Because of this, the commercial impression of registrant�s marks emanates from the term ACME Financing."
2. This month, January 2014, the applicant's atty responded:
"Applicant is the owner of U.S. Reg. Nos. X, Y and Z. The assignments regarding these registrations have been submitted to the Assignment division (concurrently with this filing). As such, Applicant respectfully requests that the Section 2(d) refusal be withdrawn." He also appears to have amended the application to add an additional class.
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Now to my questions...
What does the applicant's attorney mean by "The assignments regarding these registrations have been submitted to the Assignment division"?
Is he trying to have registrations re-assigned in a way that might circumvent the issues raised by the examiner? Can the examiner deny the request? And how long does it generally take before an examiner responds to something of this nature?
I volunteer my time to travel the region to provide information at no cost and no catch. I like to give back to local communities. So, there's no budget to file trademarks or wage legal battles. What are my options in a scenario such as this? I spent so much time and effort already on the content that I use, but the fact is I have not been using the phrase for years - just for a significant portion of 2013. I am at a loss of about what to do. Might I have to recreate all of the content without the phrase in it? Should I discontinue using it or not worry for the time being?
Any insight would be appreciated.
Thanks!
For the sake of this post let's say the phrase is "Better Retirement Planning For You". I've been using a similar phrase for about one year now, though much more actively in the last 5 months as I finally saved enough to produce written materials and publish dozens of semi-professional videos that contain the phrase.
Earlier this week someone pointed out that a company down South applied to trademark a similar phrase in March 2013 and filed an ITU as well - their version contains another of their trademarks. Let's call it "Better Retirement Planning with ACME Financing".
The application has not yet been published for opposition at this point. Here's what I do know based on my research:
1. USPTO examining atty responded July 2013:
"Registration of the applied-for mark is refused because of a likelihood of confusion with the marks X, Y and Z." Citing the applicants own similar trademarks containing its business name, the atty went on to write "The examining attorney finds that the term ACME Financing is the dominant feature of both applicant�s and registrant�s marks. Turning first to registrant�s marks, ACME Financing is dominant for three reasons."
He cited three reasons then wrote "In each mark, consumers understand that ACME Financing is the source of the services, as the marks highlight this fact through the use of the phrase �An ACME Incorporated COMPANY.� Consumers will understand that while ACME Incorporated may in some way own or control ACME Financing, the services consumers receive come directly from ACME Financing. Because of this, the commercial impression of registrant�s marks emanates from the term ACME Financing."
2. This month, January 2014, the applicant's atty responded:
"Applicant is the owner of U.S. Reg. Nos. X, Y and Z. The assignments regarding these registrations have been submitted to the Assignment division (concurrently with this filing). As such, Applicant respectfully requests that the Section 2(d) refusal be withdrawn." He also appears to have amended the application to add an additional class.
-------------------------------------------------------
Now to my questions...
What does the applicant's attorney mean by "The assignments regarding these registrations have been submitted to the Assignment division"?
Is he trying to have registrations re-assigned in a way that might circumvent the issues raised by the examiner? Can the examiner deny the request? And how long does it generally take before an examiner responds to something of this nature?
I volunteer my time to travel the region to provide information at no cost and no catch. I like to give back to local communities. So, there's no budget to file trademarks or wage legal battles. What are my options in a scenario such as this? I spent so much time and effort already on the content that I use, but the fact is I have not been using the phrase for years - just for a significant portion of 2013. I am at a loss of about what to do. Might I have to recreate all of the content without the phrase in it? Should I discontinue using it or not worry for the time being?
Any insight would be appreciated.
Thanks!
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