We won’t brag, but we’ll say, we have a damn good record with resolving office actions with USPTO. Ok. Maybe that’s bragging just a bit.
Every trademark client is different, but one rule applies to each of them: we will not handle a trademark registration without first taking care of the clearance.
The clearance process is what gives us the full picture of whether we will see any challenges with getting the trademark application successfully submitted.
Our client trusted us with handling a federal trademark registration for them. In this situation, there was a challenge. A big one. The trademark our client was attempting to register was already owned by another company. Exact same name. Exact same spelling.
Let’s be real.
If our client was DIYing their application + found out that someone already owned the exact mark they wanted to register, they would have likely said “forget it”. However, they understood that trademark registration wasn’t something they wanted to learn on the fly, and hired us. We were able to ring the alarm (insert Beyonce gif) ahead of time + develop a preliminary strategy for resolving the issue, in the event the registered mark was flagged by the Examining Attorney.
Because we were confident in our ability to resolve the issue, we advised our client to forge ahead. They did just that.
Let’s be real some more. This can be a really stressful time for clients. In addition to working with us, they are busy entering deals, seeking new strategic partners, and raising funds. All while trying to squeeze in time for self care.
Our role is to be Olivia Pope-like: lift the load from our client and handle it.
Fast forward six months. CGL receives an office action stating “… THERE IS A LIKELIHOOD OF CONFUSION WITH APPLICANT’S MARK AND A PRIOR REGISTERED MARK…” We were prepared, though, due in large part to the clearance process. We were able to clearly articulate why, even though the two marks had the exact same name, our client’s mark was not likely to be confused with registered mark.
We argued differences in appearance, connotation and commercial impression. If the last two terms sound like boring legal jargon, it’s because they are. To make it plain, connotation means what a trademark is intended to convey. Commercial impression is the lasting effect it has on the consumer (i.e. what the consumer remembers).
We may not wear white hats or be self proclaimed ‘gladiators in suits’, but we are damn good advocates for our clients.
It’s what we do. So, we handled it. We nailed our arguments + the client’s mark is now proceeding along to registration. And the client is focused on scaling their business, instead of losing sleep over whether they need to rebrand + rename their business.
::Queue the Stevie Wonder::
Do you have a trademark issue that you need handled? Or maybe you’re interested in starting the registration process? Let’s chat! Complete your intake here to get started.