Should I reapply (respond to a non-action) for a federal trademark registration after being rejected for these reasons?
The law office wants me to reapply immediately.
I paid $3000 for the initial application (in 2 categories: service and product).
To respond to the non-action, it will cost $1500-$2000.
Are the reasons given difficult to overcome?
Am I better off making another trademark and logo?
6 attorney answers
Essentially you could have filed a reply to the opposition if you believe that likelihood of confusion did not exist between the marks. However, since the marks seem to be similar and are in the same industry, I suggest you choose a different mark for your company.
I, too, agree with Bruce Burdick's response. My experience of the examining attorneys at the US Patent & Traademark Office is that they are highly competent. If one of them rejected your application based on a very similar or the same mark for the same goods and services, there will in all likelihood be a likelihood of confusion between the two trademarks. In the absence of some compelling evidence to the contrary, I would not second guess the decision of the examining attorney in this matter. If you have not invested that much in the trademark, I would consider finding an alternative name. You may want to do a cost-benefit analysis of keeping the current name, the chances of prevailing in litigation, and the costs of litigation versus selecting a new name, screening it, and marketing it. In many cases, the second option will be preferable. Also, there is a lot you can do on your own to pre-screen a name (before a more formal clearance), such as checking if the domain name (.com) is available, doing a Google search and a US Trademark Office search (www.uspto.gov) to see who may already be using the same or a similar name for similar goods and services. It could also help you to develop a more arbitrary, fanciful, and unique trademark name (e.g., names like Kodak and Xerox) that have a smaller risk of existing already. I generally advise clients that they are better off starting out with a trademark that doesn't have any issues with it (or at least a lower risk of the possibility of an infringement claim). Good luck!
No attorney client relationship is created with this post and no legal advice has been rendered. This is for general informational purposes only and does not apply to any specific set of facts which have been reviewed by me. The information contained in this response has not been verified and is not necessarily accurate or reliable, or applicable to any particular jurisdiction. Always hire a licensed attorney to represent your legal interests.
STOP! Go no further until you have consulted with several other lawyers in private about your situation and most I know would offer a free phone consultation for this purpose. We obviously have no idea what the disposition of your mark is and can only advise after knowing all the relevant facts. In some cases, it is well worth responding as we have several on our docket at present. The fees you paid for clearance are high but not surprising especially if the lawyer charges hourly after the search as been performed. Some firms such as mine offer this service on flat fee basis and we conduct our own searches in-house. But rest assured what you paid is quite common especially when better options have not been discovered. I am just surprised that this conflict, which is at the federal level, not even common law, did not come up on the clearance especially after paying 3K?
Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence upfront and before you submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the link below for a detailed explanation of the due diligence process and a guide on how to choose a strong trademark.
I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.
DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed with the law firm of Natoli-Lapin, LLC on the basis of this posting.
You say "the law office" wants you to reapply. It sounds like you have the advice of already one attorney. and that you are balking at the cost. The $3000 fee for even two applications seems rather high to me, but you do not say what other services might have been included with this fee.
I agree with attorney Burdick that the attorneys in this forum will not overstep this relationship. That said, if you have time to get a second legal opinion, and a lower estimate, by all means do. Your original attorney should respect that and readily give you any information regarding deadlines.
Generally, 15 USC 1052 (d) refusals to register are difficult to overcome. Those refusals are based on the subjective determination of the trademark examiner that the two marks are likely to confuse consumers as to source of goods or services. You say there is close similarity of the marks, nearly identical logos and same or similar services. That sounds like you would be better off making another trademark and logo and this time getting a clearance search done before you apply. However, we will not second-guess your attorney as that would be unethical here on Avvo if we know you are represented. These are questions you need to ask your attorney, or if you need a second opinion then you will have to hire an attorney so you establish and attorney-client relationship. .
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.
Based on the limited information provided no attorney will be able to answer whether you should respond to the Office Action or start over with a new mark. However, section 2(d) refusals are difficult to overcome. And if the marks only differ by a letter and you are in the same industry and your logos are similar, than it sounds unlikely you could overcome the Office Action. In addition, the other company could sue you for trademark infringement. Your attorney should have done a comprehensive search for similar marks before filing your mark and that analysis should have disclosed this mark. Without reviewing your Office Action I can not advise you, but from what you wrote it sounds like you will need to pick a new mark. Make sure the attorney you use does a comprehensive search on your next mark! Good luck.