Prosecuting Eco-Marks Part II: GPB Responds to “Merely Descriptive” Rejection

July 7th, 2008 by Eric Lane Leave a reply »

 

A couple of weeks ago, I responded to a first Office Action issued by the U.S. Patent & Trademark Office (PTO) in connection with the trademark application for GREEN PATENT BLOG (see my previous post about the Office Action).  As discussed previously, the trademark examiner rejected the application on the ground that the mark GREEN PATENT BLOG is “merely descriptive” of blogs that provide information on clean tech patents.

Under federal trademark case law a term is merely descriptive if it immediately conveys a significant characteristic of the goods or services for which the mark is being used.  On the other hand, if the consumer has to exercise “mature thought” or follow “a multi-stage reasoning process” to determine the product or service of the mark, then the mark is not merely descriptive. 

My argument in the response (gpbresponse.pdf) hinged on this immediacy requirement and focused primarily on the “green” component of the mark.  Specifically, GPB asserted that the mark does not immediately communicate the subject matter of the services because the term “green” has many meanings in addition to the environmental and clean tech definition, such as relating to plants or as a slang for money or finance.  

Moreover, some of those additional definitions comprise subject matter that, like clean tech, is the stuff of patents.  For example, plant patents are quite prevalent (think Monsanto, genetically-modified crops, etc.).  Financial services patents are common as well.

GPB also argued that determining the services provided under a mark containing “green” together with “patent” requires a reasoning process because most people do not associate “green” characteristics (whether clean tech, money, plants or something else) with intellectual property law.

So advocate turned blogger turned blogger/advocate gave it his best shot.  In another few months, we’ll see how GPB did.

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