Intellectual Property Law
Intellectual Property Law Questions? Ask a Lawyer
hello, let me see if I can help
Got a response that says:
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Is there a trick to getting your trademark registered as Principal instead of Supplemental
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.
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.
yes im back sorry
so the PTO believes your mark is too descriptive of the goods/services it is used in connection with
will post more wording
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.
We are a site that provides ratings and reviews of wedding service providers
I didnt know if there is a trick or legal wording to get it accepted as a Principal
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.
I have read that but how is acuired distinctiveness is defined?
Does that mean someone has heard of us?
That could mean several things in my mind
And also would a supplemental registration prevent someone else from registering my trademark?
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.
So I could operate a couple of years and gain a number of followers, users and I could make that argument?
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
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).
Does that mean I am in the initial and no one else could aquire it
That was one of the first lines in this letter that I got
that means they searched the database and there were no conflicts
Could I use social media followers as evidence of market presence?
Great. Thank you for your help sir. I really appreciate it