HOW I SECURED MY CLIENT'S COVETED TRADEMARK AFTER THE USPTO TOLD HIM NO
Aug 12, 2022OUTCOME: "I was really disappointed and worried when the USPTO told me they thought Playa Pizza was too similar to Beach Pizza's trademark. Enter Attorney Cannon. She saved the day and convinced them to give us our trademark!" Stephen Facella, Owner of Playa Pizza
My client, Stephen, came to me with a letter he got from the U.S. Patent and Trademark Office denying him his trademark. The cause? A frozen food brand named Beach Pizza. The USPTO applied the trademar ... k doctrine of foreign equivalents. "Playa" means "beach" in Spanish . . . so in the eyes of the USPTO, the names Playa Pizza and Beach Pizza were one and the same. Now on top of being disappointed that his application got rejected, Stephen worried he was infringing on Beach Pizza's mark. First, I took it old-school with Menendez v. Holt. Nothing like having a standing United States Supreme Court opinion from the 1800s to support your case! I made the USPTO aware of important legal precedent in favor of my client from the highest court in the land. I told the USPTO that their decision was inconsistent with public policy, the objectives of trademark law generally, and the United States Supreme Court precedent established in Menendez v. Holt. I even used their own training manual against them, citing The Trademark Manual of Examining Procedure § 1207.01(b)(vi) (B). Finally, I wrapped up with 818 F. Supp. 635, 636 (S.D.N.Y. 1993), reminding them that the doctrine does not apply to a mark comprised of two languages. My client won and the rest is history!
