Discussion:
What is the name of your state?What is the name of your state? New York/New Jersey
I applied for a trademark of my company - Baby Isis Inc. (an internet based company) in March 2005. I just received an email from the USP&TO and I was told my mark was rejected. It seems there are five other applications pending before me and they are trying to trademark the name "Isis".
I have spend a lot of money already. Changing the name at this point is almost out of the question. What I want to know is: Is there other ways around this?
Any information would be greatly appreciated!
Thank you,
Aimee
Answer:
What is the name of your state?What is the name of your state? New York/New Jersey
I applied for a trademark of my company - Baby Isis Inc. (an internet based company) in March 2005. I just received an email from the USP&TO and I was told my mark was rejected. It seems there are five other applications pending before me and they are trying to trademark the name "Isis".
I have spend a lot of money already. Changing the name at this point is almost out of the question. What I want to know is: Is there other ways around this?
Any information would be greatly appreciated!
Thank you,
Aimee
Is this an initial rejection or a final rejection?
Answer:
This is the initial rejection.
Aimee
Answer:
Well, since this is an initial rejection, you can attempt to traverse the rejection. Are you working with an attorney, or filing yourself? If you are working with an attorney, he or she can draft the traversal arguments. If you are doing this yourself, you need to educate yourself on how to prosecute trademark applications. Read here: , and here: and here: to start. You can also Google "trademark prosecution," and head down to your local public library or bookstore to look up information on prosecuting trademark applications. You have 6 months to respond, so hopefully you will have time to educate yourself. You also might want to consider talking with an attorney with trademark experience.
However, there is also the possibility that the USPTO won't grant you a registration on your name because of the other, earlier-filed applications. That happens. You can continue without the federal registration, but your use of the name may be limited in some ways once the other registrations are granted. Again, it may be time to talk with a trademark attorney to figure out what options you might have.
Answer:
Thank you for the reply. I really appreciate all the info.
I did speak to a trademark attorney and he thinks I should change the name altogether. I read the email carefully over the weekend and I think I'm going to do some homework and appeal it.
What I want to know is that let say I don't get the approval, can I still use the name or do I have to change it?
Thanks again!
Answer:
What I want to know is that let say I don't get the approval, can I still use the name or do I have to change it? Maybe -- it will depend on all of the relevant facts of your situation. The general rule is that a "senior" user of a mark can continue to use a mark even after a "junior" user obtains a federal registration -- however, there are a lot of exceptions to this general rule. The main exception is geographic -- if you are using you mark in a particular, limited geographic area, then a later user who obtains a federal registration cannot keep you from using the mark -- at least in your geographic area. However, the registered mark owner CAN keep you from using the mark outside of your geographic area, and can keep you from "expanding" the use of the name beyond the limits of the use when the registration was first granted.
However, since you have an internet-based company, it's possible that the registered mark holder could severly limit your use of the name on the internet, because you don't have this "geographic" area of use which would protect you if you were an established bick-and-mortar enterprise.
If a trademark attorney, who has presumabely seen and reviewed all of the facts of your case, is suggesting that you simply change the name, then it is quite possible that that is the best course of action. You can still attempt to prevail on the registration, but changing your name is something you might want to at least keep in the hopper as a potential consideration.
BTW, on a first office action, you are not "appealing," you are simply responding to the office action, and are attempting to "traverse" the rejections. "Apeeals" only occur after a final office action. That's just the nomenclature the office uses...