Trademark Protection After Two Refusals for Optics Company

Trademark Protection After Two Previous Refusals

  • Applicant: Optics Company
  • Business: Optic component and lens designing and manufacturing
  • Nationality: China
  • Applying for: Trademark
  • Product: Optical Lens
  • Challenges:
    • Had two previous trademark refusals by USPTO for the same trademark

BACKGROUND

 

This optics company sought to file for a trademark with the United States Patent and Trademark Office (USPTO) for the new optical lens it had designed. The legal challenge was that the company wanted assistance with this trademark protection after two refusals for the same trademark had already been received. The company felt it imperative that its trademark be approved to ensure continued productivity and growth of the company.

While this optics company was still based in China, they tried filing for a trademark with the USPTO but were denied twice. Without this approval, the company would not be protected from others who may attempt to steal the trademark. Desperately needing help, the company came to the Tsang & Associates legal team wondering what we could do to assist them. We believed strongly in their case and helped them to refile their trademark application on July 14, 2015. The trademark was approved on February 16, 2016.

 

KEYS TO SUCCESS FOR THIS TRADEMARK PROTECTION AFTER TWO REFUSALS

 

When this optics company first came to Tsang & Associates for help, we learned that they had previously hired a Chinese trademark agent to assist them in filing for a trademark with the USPTO. However, they received notice of an office action to deny and reject the trademark application. Even though they were previously denied, we believed strongly that we could overcome the reasons for denial given by the USPTO.

The trademark refusal from the initial filing came from the basis of, as stated in the denial letter, Trademark Act Section 2(d) which “bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant”. USPTO gave reasons for denial of “similarity of marks, similarity, and nature of the goods, and similarity of the trade channels of the goods”.

USPTO claimed that the “applicant’s mark and design is similar to the registered marks in sound, appearance, and connotation. All of the marks include the wording ‘XXXX’. Although the marks include different stylization and/or design elements, for a composite mark containing both words and a design, the word portion may be more likely to be impressed upon a purchaser’s memory and to be used when requesting the goods and/or services”. Thus, USPTO believed that the marks had the same commercial impression.

In addition, according to precedence, the respective goods need only be “related in some manner and/or if the circumstances surrounding their marketing be such that they could give rise to the mistaken belief that the goods emanate from the same source” to be considered related. Thus this optics company’s identification of the goods was deemed to encompass an existing registrant’s goods and was refused.

Despite these two previous trademark refusals and objections from USPTO, we believed that we could overcome them and help our client gain approval and trademark protection for their optical lenses.

In the filing that our corporate counsel team assisted with, we took heed of the previous USPTO reasons for refusal. To avoid another trademark refusal, we were able to help the company narrow its trademark so that it wouldn’t be commercially deceiving.

In addition, we made sure that our trademark filing was more focused than before, ensuring that there would not be grounds for any contention regarding the similarity of marks or the relatedness of goods. We took extra care in caution, fully examining the existing trademarks and making sure that this optics company’s product and mark would not be mistaken for any other. After gathering all the facts and details, we helped to form our client’s trademark application and filed it on July 14, 2015.

 

OUTCOME OF THIS TRADEMARK PROTECTION CASE

 

Our client’s trademark application was approved by USPTO on February 16, 2016, about 7 months after the initial filing. Our client finally had trademark protection after two refusals working with another trademark attorney. Our team’s due diligence and guidance on the trademark filing to ensure the previous refusal reasons were addressed and rectified was the key to success.

If you have a trademark question or are looking for legal services for your business, we would love to help. You can learn more about our corporate counsel services or contact us to discuss your case.

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