Inside An Eco-mark Application: Saving GREEN PATENT LAW from the Depths of Descriptiveness

July 1st, 2015 by Eric Lane Leave a reply »

In a series of posts published several years ago (see, e.g., here and here), I documented all the gory details of my attempt to register the GREEN PATENT BLOG service mark.

Despite two rejections (see here and here) on the ground that the mark was merely descriptive of the blogging services, it was ultimately registered (thanks to many of my readers) (see here) based on an evidentiary showing of acquired distinctiveness.

Now that I run my own practice under the GREEN PATENT LAW service mark, it’s de ja vu all over again.

In June 2014, I filed an application with the U.S. Patent and Trademark Office (USPTO) to register the GREEN PATENT LAW mark for “legal services.”

As expected, the application was rejected for being merely descriptive (a mark that immediately conveys to consumers the nature of the goods or services is merely descriptive and can’t be registered because that would restrict competitors from conveying information about their goods or services).

To support the rejection, the Examining Attorney cited my web site, which says Green Patent Law is a “law firm” providing “patent” and trademark law services to businesses in various technology areas, including “green technologies.”

When facing a rejection for mere descriptiveness, there are two basic response strategies.  If there is room to argue that consumers would not immediately perceive some characteristic of the goods or services from the mark, but instead would need to think about it to link the mark and the goods/services, then the applicant can argue the mark is suggestive.

If there is no credible suggestiveness argument, the applicant has to show, through one or more avenues, that the mark has acquired distinctiveness, or secondary meaning.  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 first tactic, if the mark has been in use for at least five years, is to rely on a trademark law presumption of acquired distinctiveness.

A second possibility is the applicant can marshal evidence to demonstrate acquired distinctiveness.  This can take the form of direct evidence consisting of statements from consumers saying they identify the applicant as the source of the goods or services and/or indirect evidence such as advertising and media mentions linking the mark with the goods or services.

A third approach, available in limited circumstances, is to argue acquired distinctiveness in whole or in part based on a prior registered trademark already found to have acquired distinctiveness, essentially piggy-backing on the prior registration.  This was how I responded to the Office Action making the initial rejection for GREEN PATENT LAW.

In my response, I argued acquired distinctiveness in part based on the prior registration for GREEN PATENT BLOG.  In other words, my response contended that the GREEN PATENT portion of the GREEN PATENT LAW mark has secondary meaning because GREEN PATENT BLOG has secondary meaning, they share common words, and the services – legal services and legal blogging – are related.

That response was unsuccessful.  In a second Office Action, the Examining Attorney said the legal services and blogging services were not sufficiently similar and required additional evidence of acquired distinctiveness.

So I’m now left with gathering evidence of acquired distinctiveness.  Stay tuned.

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