Can a specimen submitted in a trademark application by registrant be suggestive? And argued that a difference in commercial impression between the registrant and applicant
Is this a sound argument?
Intellectual Property Law Attorney
Your question is incomprehensible. A specimen submitted by a registrant can, indeed, be suggestive. I am guessing that your trademark application was rejected on the ground of likelihood of confusion. In any event, here is the bottom line. If you are trying to handle a trademark application (or opposition to someone else's application) on your own, you are making a serious mistake. Preparing and prosecuting trademark applications is a sophisticated and complex matter---if you do not retain counsel to represent you chances are any trademark rights that you procure will be worthless. Dealing with the trademark office is not for amateurs.
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Trademark Application Attorney
Like Maurice said, the specimen can be suggestive. Another way to say this would be that your trademark is suggestive as used in connection with the specimen submitted, or in connection with the goods/services being claimed. The specimine, or goods and services, are relative to the trademark.
For any of us to help you though, you are going to need to be a lot more clear about what you at asking, or At least what you are trying to accomplish. The only way to really ensure that you get what you are hoping for is to talk with a trademark attorney. It's worth it to go the extra mile in the beginning because trademark registrations can be difficult or impossible to 'fix' once you've made a mistake.
I am not your lawyer and this comment does not create an attorney-client relationship. Plus, it is not a good idea to base legal decisions solely on comments posted to an open forum board. However, I hope that you will seek the advice of an attorney if you feel that your situation requires such expertise.
The answer to the 1st part of your query is "of course," and it should exemplify a suggestive TM. But is your TM viable and available? The 2nd part of your query is incomplete. I'm guessing you don't know what a "suggestive" TM is, and perhaps what a "specimen" is, and I can tell that you can't make a sound argument that would support a TM application.
The USPTO examining attorneys are the de facto judges of TM applications,and they're TM experts. You don't stand a chance of convincing them of anything, and the fees are non-refundable. If you don't wnat to waste your time money and effort invested so far, hire a TM lawyer if you want to defend your TM.
Avvo doesn't pay us for these responses, and I'm not your lawyer just because I answer this question or respond to any follow-up comments. If you want to hire me, please contact me. Otherwise, please don't expect a further response. We need an actual written agreement to form an attorney-client relationship. I'm only licensed in CA and you shouldn't rely on this answer, since each state has different laws, each situation is fact specific, and it's impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue.
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Trademark Application Attorney
Your question indicates you have done some reading on trademark law. Ever heard that a little knowledge can be a dangerous thing. The specimen may not be suggestive, but the mark may be. Your specimen must be a true copy of the mark as used in commerce. However, I suspect your question is related to confusion between a specimen and the mark itself and whether the mark is "merely descriptive" or suggestive. A "merely descriptive" mark may not be registered until is has acquired distinctiveness. A suggestive mark is inherently distinctive and may be registered at the time of its first use. If you did not understand what I just said, you need to get a trademark lawyer.
This response is not to be used as legal advice. This response is only a general answer to a general question. To give actual legal advice it is necessary to obtain much more detailed information.
Intellectual Property Law Attorney
Q: " Can a specimen submitted in a trademark application by registrant be suggestive?"
Q:"And argued that a difference in commercial impression between the registrant and applicant Is this a sound argument? "
A: Well, it's gibberish that presumably means you are trying to respond without an attorney to a refusal to register, which at first blush seemed to be on the ground of your mark being "merely descriptive" as evidenced by the suggestive nature of the mark as used in your specimen. Sounds like a sound rejection. Arguing a difference in impression would be irrelevant to that and not sound. Your apparent argument that there is a different commercial impression between "registrant and applicant" suggests there is an additional (or only) refusal based on likelihood of confusion (section 2d) with a prior registered mark. How your specimen suggests the other mark is impossible to tell without seeing the specimen and the cited registration. You apparently have singled out one of the "Polaroid factors" and ask if saying it does not apply is a sound argument. That an incomplete argument. An attorney would look at all the factors and argue the factors show no likelihood of confusion. An attorney might work out a consent agreement with the registrant. You apparently don't know what you don't know. An attorney would know the law on this and likely have little trouble fashioning a sound responsive argument. I know trademark attorneys and you, sir, are NO trademark attorney. You are in well over your head and have no business doing this. Responding to a refusal to register is something for which you need an attorney. In fact, you are already paying the price for not having gotten an attorney to do a trademark clearance search in the first place and for not getting a clearance opinion based on that search that you didn't have done and for not having an attorney do the application so as to best overcome whatever is now being cited against you.
L2BL: You can use TEAS or TEAS PLUS to file a trademark application yourself, but you need an attorney when your trademark application gets rejected. And expect it all to cost more than if you used a trademark attorney to begin with.
I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.
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