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montysimmons, Patent Prosecutor
Category: Intellectual Property Law
Satisfied Customers: 238
Experience:  Electrical Engineer, South Carolina Attorney, Member of US Patent Bar
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Good afternoonCan you field a question of a specific trademark

Customer Question

Alex, You must have just come on-line. I tried directing this to you first maybe 10-15 minutes ago but it said you were off-line. Great! Can you field a question of a specific trademark nature? By that I mean, I need to double-check the accuracy/appropriateness of my response to a office action to make sure I don’t inadvertently screw it up by wording it wrong. I would give you the Ser.# XXXXX that you could look at the examiner's action letter which requires my simple clarification. I hope this is simply one of those 'proper wording' scenarios. But I do want to check with an expert that it is not a kind of 'trick question'. Many thanks, XXXXX XXXXX

Submitted: 1 year ago.
Category: Intellectual Property Law
Expert:  Fran-mod replied 1 year ago.
I have notified Alex that your question is waiting for him. He will see my message when he checks his email.
Customer: replied 1 year ago.

Thank you for your conscientious service. I'm impressed. These days it is getting more and more a thing of the past.

Expert:  Fran-mod replied 1 year ago.
Thanks for the kind words. They are much appreciated.
Expert:  Wendy-Mod replied 1 year ago.
Hello again,

We are still working with our Legal professionals to find you the best possible match. I wanted to touch base to see if you still needed a professional’s assistance.

Please let me know if you would like to continue to wait or if you would like to cancel your question at this time. We sincerely XXXXX XXXXX the extended wait time.

Thank you,
Customer: replied 1 year ago.

If Alex does not appear to be available right now, if you would, you might also try to notify Law Professor with whom I have worked in the past and in whom I have equal confidence. Many thanks for the excellent service. Bruce

Expert:  Wendy-Mod replied 1 year ago.
Thank you! We have contacted both of them so hopefully one of them will be with you shortly. Please let me know if I can do anything else to help you while you wait.

Customer: replied 1 year ago.

Thanks. I'll be here. :D

Expert:  Wendy-Mod replied 1 year ago.
You're welcome!
Expert:  montysimmons replied 1 year ago.

If Alex is not available and if you are in a hurry or have a time sensitive response due, I can look at your issue.

Customer: replied 1 year ago.

'Sounds good Monty. I appreciate it. Here is the access info:




My simple question is: What exact wording would you recommend I use in my response to move to the next step with the examiner. please?


Thanks again,




Expert:  replied 1 year ago.

The Mark you requested is "BIO Shirt"


In your first office action you disclaimed any exclusive right to the term "Shirt".


Understandable and correct.


But you failed to address the issue of what "BIO" means. The Examiner wants to know if "BIO" has any significance in the trade/industry for the goods/services you wish to use the mark with.


Your goods/service: 025 T-shirts, Sports Shirts;


So the Examiner issued a second office action again asking what "BIO" means (if anything).


Basically what the Examiner wants to know if the letters ‘BIO’ is an acronym or abbreviation for some term or phrase.


If you answer "BIO" is arbitrary and has no meaning, best chance for allowance.


If, for example, you answer "BIO" is an abbreviation for "BIO-HAZARD", then the Examiner will likely contend your mark is merely descriptive and refuse registration.


I do not know what "BIO" means so I cannot be very specific with my answer.


Further, be careful on this forum telling me what "BIO" means as this forum is a public forum and anyone can see your responses. Probably best not to tell me what it means unless you do not care if others see your comments.




montysimmons, Patent Prosecutor
Satisfied Customers: 238
Experience: Electrical Engineer, South Carolina Attorney, Member of US Patent Bar
montysimmons and other Intellectual Property Law Specialists are ready to help you
Customer: replied 1 year ago.



A brilliant job. Thanks so much. The truth is the former so my response will be...


"The letters ‘BIO’ is not an acronym or an abbreviation for any term or phrase."


My hope is that it is not a 'trick question' meaning no matter how I answer, he will come back with an objection. In all the years I have been trademarking

using the prefix BIO, this has never come up. The luck of the draw can be an issue at times, yes?


As I have said to Alex and Law Prof, both of whom, like yourself, have helped me a great deal in the past, I wish a deal $ had already gone through so that I could leave you the tip you deserve. I can't wait for the future to be able to do that. Actually, right now, I am closer than ever to fruition (thanks God).


Thanks again, sincerely,





Expert:  montysimmons replied 1 year ago.

You are welcome.

As you know, you have many trademarks that begin with "BIO" and one could contend that "BIO" means the same in all of the marks. Thus, if you have defined "BIO" before in a different application might want to consider such issue when responding to your current Office Action.

Customer: replied 1 year ago.

Thanks SO much, Monty. 'A life saver in the event of what you have written re previous applications. The good news is that I have never defined it (and never been asked to define it) previously in any application process.

Bless you.



Expert:  montysimmons replied 1 year ago.

You are very welcome. Come back any time.

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