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Ask Alex Reese Your Own Question
Alex Reese
Alex Reese, Lawyer
Category: Intellectual Property Law
Satisfied Customers: 3424
Experience:  Experienced in intellectual property law
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I have a question about Trademark application submission? Got

This answer was rated:

I have a question about Trademark application submission? Got a rejection of something and want to see if someone can help. Chat preferred

Alex Reese :

hello, let me see if I can help

Customer:

Got a response that says:


SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE

Customer:

Is there a trick to getting your trademark registered as Principal instead of Supplemental

Customer:

Registration is refused because the applied-for mark merely describes the function of applicant’s services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

Customer:

Applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register.

Customer:

?

Customer:

You there

Alex Reese :

yes im back sorry

Customer:

No problem

Alex Reese :

so the PTO believes your mark is too descriptive of the goods/services it is used in connection with

Customer:

Yes

Customer:

will post more wording

Customer:

In this case, both the individual components and the composite result are descriptive of applicant’s services and do not create a unique, incongruous, or nondescriptive meaning in relation to the services. Specifically, the applicant’s mark, WEDDINGADVISOR, describes a function of the applicant’s services, advising users about wedding service providers.


 


Therefore, applicant’s mark is merely descriptive. Accordingly, registration is refused under Section 2(e)(1).


 


Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

Customer:

We are a site that provides ratings and reviews of wedding service providers

Customer:

I didnt know if there is a trick or legal wording to get it accepted as a Principal

Alex Reese :

In order to overcome a merely descriptive mark, the applicant must show that the mark has acquired distinctiveness. The following are three approaches to demonstrate acquired distinctiveness: 1) claiming ownership of one or more prior registrations on the Principal Register of the same mark for goods or services that are the same or related to those in the application; 2) submitting a verified statement that the mark has become distinctive due to substantially exclusive use for five years; and 3) producing actual evidence of acquired distinctiveness. These methods may be used in combination with one another.

Customer:

I have read that but how is acuired distinctiveness is defined?

Customer:

Does that mean someone has heard of us?

Customer:

That could mean several things in my mind

Customer:

And also would a supplemental registration prevent someone else from registering my trademark?

Alex Reese :

Generally, both direct and circumstantial evidence may be used to prove acquired distinctiveness... including continuous and substantially exclusive use of the mark in commerce for five years, the amount of your sales and number of customers you have, survey evidence, amount of advertising, direct consumer testimony, and an established place in the market etc. There is no requirement of a specific amount of evidence to show acquired distinctiveness, but it's a sliding scale where the more descriptive a mark is, the more evidence will be required to overcome the descriptive aspect of the mark.

Customer:

So I could operate a couple of years and gain a number of followers, users and I could make that argument?

Alex Reese :

That's right.

Customer:

And also would a supplemental registration prevent someone else from registering my trademark?


Alex Reese :

Well nobody else will be able to register it either for the same reason, as long as you are the first one to apply for it you will have initial priority

Customer:

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).


Customer:

Does that mean I am in the initial and no one else could aquire it

Customer:

?

Customer:

That was one of the first lines in this letter that I got

Alex Reese :

yes

Alex Reese :

that means they searched the database and there were no conflicts

Customer:

Could I use social media followers as evidence of market presence?

Alex Reese :

yes

Customer:

Great. Thank you for your help sir. I really appreciate it

Alex Reese and other Intellectual Property Law Specialists are ready to help you

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