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Which option should I amend for rejection of my trademark?

Tarzana, CA |

My trademark application for my logo was denied. I applied under the classes for stickers and clothing. I can resolve this by doing one of the following and I just wanted to get clarification on this statement:

Submit evidence that the applied-for mark is an indicator of secondary source; that is, proof that the mark is already recognized as a source indicator for other goods or services that applicant sells/offers.

I understand it to an extent, but with one shot of dispute, I want to make sure I do it right. If anyone has any other advice they think would be valuable, I would greatly appreciate it.

Attorney Answers 4

Posted

I have 40 years of evidence that tells me you are making a huge mistake trying to do this on your own. I have some "other advice" I think would be valuable, but you likely will not appreciate it. GET AN ATTORNEY.

It seems you have been rejected for descriptiveness if you are being asked to provide proof of secondary meaning ("secondary source" in your messed up lingo). And you think that needs to be on goods other than those you are trying to register? Not hardly. You say you "understand it to an extent"--yes, that would be to a miniscule extent, i.e. NOT AT ALL.

When in a trademark legal conflict with a trademark examining attorney, you are totally outclassed and outgunned unless you have a trademark attorney working for you. Most of the attorneys that post here can totally outgun and outargue the average trademark examining attorney, but you - well you are at the point where if you don't get an attorney you appear headed for loss of your brand name. Since that is likely a major key to your business, don't you think it might make sense to get an attorney so someone that has a clue what secondary meaning means is responding to the rejection? You are NOT going to get enough hear to avoid hiring an attorney, but you might here find one that can pull your rear out of the frying pan it is in. Get mad at me if you want, but you need someone to knock some sense into you so you get an attorney before you totally screw this up (if you haven't already.)

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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2 comments

Bruce E. Burdick

Bruce E. Burdick

Posted

Interesting. I see from your other comment that you actually did get a rejection for ornamentation where secondary source is the way you prove secondary meaning.In that way they are one and the same concepts.You proved secondary meaning by showing that thedesign has a meaning as a brand name other than merely as an ornamentation on the shirt, so that someone seeing the ornamentation on the shirt will take it as being a familiar brand logo since they are familiar with the brand. For example, if you saw a "bitten apple" logo on a shirt pocket you would immediately think of Apple Computer whose products so many people love and not merely ornamentation. the examiner is asking you to prove something like that. I doubt you can.

Bruce E. Burdick

Bruce E. Burdick

Posted

Swype error: You proved secondary--->You prove secondary meaning Obviously you have not proven it yet, Nor will you, I suspect, ever be able to prove it.

Posted

First, why was the logo rejected - generic? It is difficult to provide specific advice without reading the full Office Action.

Regarding the request to submit evidence, have you used the logo on other products, for example, clothing?

If you have used the logo on other products, do you have advertisements, purchase orders, etc. that show that the logo is associated with your business?

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7 comments

Asker

Posted

My logo was and is being used on stickers and clothing and was deemed ornamental. The only advertisements we Facebook posts advertising when to get our clothing.

Ronald Ethan Perez

Ronald Ethan Perez

Posted

The USPTO Trademark Attorneys use a manual (TMEP - see www. uspto.gov) when examining applications. Here is a link to Sec. 1202.03(c) regarding “Secondary Source” for an "ornamental" rejection: http://tmep.uspto.gov/RDMS/detail/manual/TMEP/Apr2013/d1e2.xml#/result/RDMS/detail/manual/TMEP/Apr2013/TMEP-1200d1e1773.xml?q=ornamental&start=1&ccb=on&ncb=off&icb=off&fcb=off&ver=Apr2013&sort=relevance&syn=adj&cnt=10&results=compact&index=2#highlight

Bruce E. Burdick

Bruce E. Burdick

Posted

Now it becomes clear why the Examiner used the term "secondary source". The Examiner was suggesting to you how you could establish secondary meaning in your situation. I am rather familiar with that Olin ski logo case since I was trademark attorney for Olin and handled the Olin Ski logo for many years. William Jones at Olin made new law in that case by showing that the logo had secondary meaning as a brand name for skis made by Olin, so that people seeing the logo would think of it as meaning the brand rather than ornamentation. Here you have no famous brand do people won't think off it as a brand. That is, you have no secondary meaning.

Asker

Posted

I have a YouTube channel that aggregates more than 500,000 subscribers and generate 6.6 video views a month. I do believe I have a brand.

Asker

Posted

YouTube channel and website both with generate a significant amount of revenue.

Ronald Ethan Perez

Ronald Ethan Perez

Posted

Would you be willing to share your mark with us (if permitted by Avvo rules)? We could give you better input, esp. since we can access the USPTO webite and read the Trademark Attorney's exmination report. Please review Avvo's rules regarding legal advice from this website.

Ronald Ethan Perez

Ronald Ethan Perez

Posted

I notice that someone is hitting the "Flag" in these posts - we may be going outside of the Avvo rules of conduct

Posted

Attorney Perez properly referred you to the instructions on how to establish that your logo does, in fact, indicate the source of goods or services that you offer to the marketplace rather than simply being a nifty design that you happen to put on stickers and clothes. [Attorney Burdick was wrong to assert that your use of the phrase "secondary source" was an erroneous reference to "secondary meaning." The two concepts are different.]

The problem for you is that it does not appear you use the logo as a source identifier for any products other than stickers and clothes. Those intructions, therefore, won't be of any help to you at all.

IF you submitted a sticker as your specimen of use you could try to submit a new specimen showing the logo as you use it on clothes -- USED AS A MARK, not just displayed as a nifty logo in the center of the shirt.

Those two options are the only ones that I can think of at the moment. If this logo is important to your business -- which it should be if it's the main way that you brand your clothes -- the you have no choice but to hire a trademark attorney. Good luck.

The above response is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.

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5 comments

Bruce E. Burdick

Bruce E. Burdick

Posted

Attorney Ballard shows the lawyer error of making one to many statements. He was correct in saying I misread the asker as intending to say secondary meaning rather than seconds source. That, as it turns out was right. But then attorney Ballard continues with the dumb statement that secondary source and secondary meaning are different concepts. Not true, they are but forms off the same concept, secondary meaning. The whole point of secondary source is to prove secondary meaning, and was why the court used that terminology, secondary source. How do I know this? I was attorney for Olin from 1977-1993 and managed the Olin ski licensing. I lived that case, and made a lot of money for Olin from it, although it was several years after that case before I took over the brand. I doubt attorney Ballard was even out of high school in 1973 when my immediate predecessor at Olin won that seminal case on secondary meaning of a logo on a shirt. I made a lot of money licensing that logo for Olin, based on that principle. It is one of the seminal cases on secondary meaning and collateral licensing of logos. These are not different concepts. I know, as unlike attorney Ballard, I lived it.

Bruce E. Burdick

Bruce E. Burdick

Posted

Swype error: seconds source--->secondary source

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

Attorney Burdick is clearly wrong. "Secondary source" refers to other products or services that are branded with what the Trademark Examiner believes is an ornamental design -- submitting evidence of those branded, secondary sources is a proper response to traverse the rejection for being ornamental. This concept has NOTHING to do with "secondary meaning." That phrase refers to the association that consumers make between a descriptive phrase and the product or service branded with that phrase. Burdick needs to re-learn trademark law from the ground up -- IF he can after 40 years of apparently doing it wrong.

Jon Kenneth Perala

Jon Kenneth Perala

Posted

Do you think this debate really helps the asker? He clearly understood the issue is secondary use, because he said so in his question. Do you actually try to understand the asker's question or just look for opportunities to belittle him? The concept of secondary source is whether the mark functions as a trademark at all. Whether it serves as a source identifier of goods on other products. Secondary meaning focuses on whether a mark is distinctive. They are not the same. Even a generic mark can serve as a source identifier. The question is not whether it is a trademark but whether the owner can exclude others from using it.

Jon Kenneth Perala

Jon Kenneth Perala

Posted

Of course, generic marks cannot serve as source indicators. Poor editing created an erroneous sentence.

Posted

One example of secondary source is a university that sells t-shirts, mugs, etc. emblazoned with the university logo. The logo on a shirt would be considered ornamental because the university is not considered a source/producer of t-shirts. The university is, however a source of educational services. By showing use of its logo in offering educational services, the university can show a secondary source, allowing the logo to be used as a mark for t-shirts and other goods.

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