Prosecuting Eco-Marks Part VI: PTO Issues Certificate of Registration for GREEN PATENT BLOG

February 1st, 2009 by Eric Lane Leave a reply »

Over the last eight months or so I’ve been blogging about the process of prosecuting an eco-mark application in the U.S. Patent & Trademark Office (PTO), using my own experience trying to get a federal registration for the GREEN PATENT BLOG mark.

I discussed the PTO’s first office action initially rejecting my application on descriptiveness grounds (see post here), my response to that rejection (see post here), the PTO’s final office action rejecting my application for the same reason (see post here), my request for reconsideration arguing acquired distinctiveness (see post here) and the notice of publication indicating that the PTO would accept my mark on acquired distinctiveness grounds (see post here).

The prosecution process took some time and legal argument because the PTO rejected GREEN PATENT BLOG as ”merely descriptive” of blogs that provide information on green technology (a trademark can’t be registered with the PTO if it is a generic term or descriptive of goods or services because that would restrict competitors from conveying information about their goods or services). 

When my argument against descriptiveness didn’t fly, I made the alternative argument of acquired distinctiveness.  Acquired distinctiveness is a trademark law concept which means that the mark, though it may not be inherently distinctive enough for trademark protection, has become sufficiently distinctive through use so that consumers have come to recognize it as a source identifier for the goods or services.

The PTO found my evidence of acquired distinctiveness persuasive (I submitted evidence such as other blog and media mentions and e-mails from readers stating that GREEN PATENT BLOG had come to identify my blogging services).  Thanks again to all the readers who provided those e-mails.

Last month, the PTO issued a certificate of registration for the service mark GREEN PATENT BLOG (gpb_reg.pdf) for “on-line journals, namely, blogs featuring news, information and legal analysis relating to intellectual property law issues in the clean technology and renewable energy industries” in Class 41.

Now the exciting part:  I can (and have) put the little “R” in a circle next to GREEN PATENT BLOG to indicate that it’s a federally registered mark.

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