Your client decides to go with the name FancyStar for her new line of jewelry. You finally hear back from the USPTO after filing the trademark application, but the examining attorney isn’t so excited about the mark. In the Office action, the examining attorney states that the term ‘Fancy’ in the trademark could possibly lead to a likelihood of confusion with other established jewelry marks. How do you respond to this office action?
In this second installment on trademark prosecution, Michael Feigin provides a lively and practical discussion on how to respond to Office actions from the USPTO. Michael will discuss the likelihood of confusion standard and also covers the refusal of surnames, significance in the industry in which the goods are manufactured/provided, the description of goods/services, descriptive trademarks, the benefits of the primary & supplemental register, the trademark description, identification of services, missing deadlines, translation issues, false connection, and how to proceed if the specimen is deemed unacceptable. This is a highly practical course and Michael uses a number of interesting case examples from his own practice.
A graduate of Rutgers University Jersey and Seton Hall Law School, Mr. Feigin is a licensed Attorney in New Jersey, New York and at the United States Patent and Trademark Office. As an Intellectual Property attorney, he focuses his practice on drafting patents and prosecuting trademarks for clients.