Response to Trademark Office Action

[servicemark]

What is the name of your state (only U.S. law)? IL

We have a website with the name comprised of 2 words that is similar to another site with the same 2 words but with an additional "A" in between the 2 words and they have a registered mark. We hosted our service on their site using them as our backend. They are in IC 42 (SaaS) and we are in IC 35. They deactivated our account for conflict reasons. We replied quoting different classifications (42 vs 35). They asked us to place a link to their site on our page - we complied and they reactivated our account. All of this happened in 2009 and we coexisted ever since.

In 2014, they shutdown/discontinued their service. In 2016, we filed for our trademark and received an office action quoting similarity with the other mark. We sent several emails to the other party about their discontinued service and got no response. In August, their trademark was CANCELED due to failure to renew usage (6 year).

Is the above adequate to respond to office action quoting email messages of conflict from 2009, resolution and coexistence due to different classifications, discontinuance of their service and cancellation of their mark? As they discontinued in 2014, do we need to wait for 3 years before claiming the mark?

NOTE: Office Action was received by us in June BEFORE their trademark was canceled in August. Office Action was based on the then LIVE trademark at the time of mailing it. We looked at the Response form and the only response we need to give looks like explaining the above facts (Point # 1 below ) and no need to amend the mark, description or classification. Am I right?

QUESTIONS FROM THE RESPONSE FORM:
1. Do you need to respond to a refusal to register your mark, including (but not limited to) a possible finding that your mark appears to be...

Also, do we need to mention these points in the response under # 3:
a. Consent to register name(s) - conflict resolution from 2009
b. Concurrent use claim - same conflict resolution as above


Is it necessary to hire an attorney for this response or it is simple enough to do it ourselves?

Thanks much!

 

[quincy]

What is the name of your state (only U.S. law)? IL

We have a website with the name comprised of 2 words that is similar to another site with the same 2 words but with an additional "A" in between the 2 words and they have a registered mark. We hosted our service on their site using them as our backend. They are in IC 42 (SaaS) and we are in IC 35. They deactivated our account for conflict reasons. We replied quoting different classifications (42 vs 35). They asked us to place a link to their site on our page - we complied and they reactivated our account. All of this happened in 2009 and we coexisted ever since.

In 2014, they shutdown/discontinued their service. In 2016, we filed for our trademark and received an office action quoting similarity with the other mark. We sent several emails to the other party about their discontinued service and got no response. In August, their trademark was CANCELED due to failure to renew usage (6 year).

Is the above adequate to respond to office action quoting email messages of conflict from 2009, resolution and coexistence due to different classifications, discontinuance of their service and cancellation of their mark? As they discontinued in 2014, do we need to wait for 3 years before claiming the mark?

NOTE: Office Action was received by us in June BEFORE their trademark was canceled in August. Office Action was based on the then LIVE trademark at the time of mailing it. We looked at the Response form and the only response we need to give looks like explaining the above facts (Point # 1 below ) and no need to amend the mark, description or classification. Am I right?

QUESTIONS FROM THE RESPONSE FORM:
1. Do you need to respond to a refusal to register your mark, including (but not limited to) a possible finding that your mark appears to be...

Also, do we need to mention these points in the response under # 3:
a. Consent to register name(s) - conflict resolution from 2009
b. Concurrent use claim - same conflict resolution as above


Is it necessary to hire an attorney for this response or it is simple enough to do it ourselves?

Thanks much!

You are in the advertising/business class and they are in the computer/science/legal class, and these were originally considered conflicting by the USPTO? Are/were the services offered overlapping?

A mark can be considered abandoned if it has not been used for three years or more in a continuous fashion. Someone else at that time can potentially register the same mark. This is not to say that the previous owner of the mark cannot challenge the other user's registration and use of the mark. The previous owner of the mark can. And, if the previous owner can show an acceptable reason for non-use of the mark (e.g., bankruptcy or other financial problems, product modifications), the new owner can be prevented from registering the mark and using the mark.

Because proving a mark has been abandoned can often be a difficult and costly task (this largely because a mark does not have to be registered to be rights-protected), it is generally smartest for a new company to choose a name unique to them. Starting off with a name where no conflict exists or could exist eliminates for the company a lot of potential future legal grief.

Unfortunately, you have been using your mark for some time and have an interest in retaining it. Because the other company does not need to have a registered mark to have trademark protection, however, and the USPTO has already reviewed your application and has questions due to your mark's similarity with an existing mark (although, yes, I understand it is no longer "Live"), I do think you would be smart to consult with a trademark attorney in your area for a review and for help with a response to the trademark examiner's office action.

I should add that receipt of action letters from the USPTO by trademark applicants is not unusual. Trademark applicants will often hear from the trademark examiners, because most applications will have problems that necessitate this contact. Most action letter problems discovered by an examiner on examination of the application can be handled simply with a phone call to the examiner ... but I am thinking from what you describe (or, at least, how you are describing it) you might find it not so easy.

Good luck.

 

[servicemark]

I forgot to mention that they were in Saas and we are in classifieds advertising business. Our Goods and Services do not overlap with theirs which is why they re-activated our account to use them as our backend in 2009 which is why we continued to use the mark along with their backend (we have all the email communication from their counsel documented).

In 2014, we received a notification that their SaaS business was being shutdown (they did shut down after that) and launching a new SaaS with a different brand (they did launch a new SaaS brand) which was also shut down this year as per their official notification to all partners.

We received the Office Action in Jun 2016 and in Aug 2016, their original mark allegedly conflicting with our's was Canceled by USPTO due to 6-year renewal failure.

Is it simple enough to have a conversation with the Examiner, clarify facts, find out what supporting docs they need along with our Response and do it ourselves or hire an attorney?

Thanks!

 

[quincy]

I forgot to mention that they were in Saas and we are in classifieds advertising business. Our Goods and Services do not overlap with theirs which is why they re-activated our account to use them as our backend in 2009 which is why we continued to use the mark along with their backend (we have all the email communication from their counsel documented).

In 2014, we received a notification that their SaaS business was being shutdown (they did shut down after that) and launching a new SaaS with a different brand (they did launch a new SaaS brand) which was also shut down this year as per their official notification to all partners.

We received the Office Action in Jun 2016 and in Aug 2016, their original mark allegedly conflicting with our's was Canceled by USPTO due to 6-year renewal failure.

Is it simple enough to have a conversation with the Examiner, clarify facts, find out what supporting docs they need along with our Response and do it ourselves or hire an attorney?

Thanks!

Yes, it could be as simple for you as having a conversation with the examiner to clarify facts. Whether you want to have an attorney assist you is ultimately up to you. I think that having an attorney go over your application and the examiner concern prior to contact with the examiner could help you with this clarification.

 

[servicemark]

Yes, it could be as simple for you as having a conversation with the examiner to clarify facts. Whether you want to have an attorney assist you is ultimately up to you. I think that having an attorney go over your application and the examiner concern prior to contact with the examiner could help you with this clarification.

Thank you very much!!

 

[quincy]

Thank you very much!!

You're welcome, servicemark. Thanks for the thanks.

Good luck.