I woke up this morning to some fantastic news and I gotta share.
A few months ago, I was contacted by a start-up business that already had existing legal counsel who was looking for new legal representation. He said that this firm had already started his trademark application but would be very interested in working with a law firm owned and operated by a Black person.
We set up a consultation and I took a look at his pending trademark application. It had been rejected by the USPTO.
It was not a minor rejection. It was a major (substantive) rejection. The start-up business was pretty surprised to hear it from me that his application had been rejected. Oh boy.
I won't disclose who the prior legal counsel was, but it was a mid-sized firm here in my city. The kind with 30+ lawyers, numerous secretaries and paralegals, and zero black faces on their website when you click "Professionals". The kind that touts their expertise in trademark and copyright matters because it sounds sexy for marketing.
I took on his case. Entered my appearance with the USPTO as new counsel...and got to work.
Now, here's where it gets good. Whenever someone submits a jacked-up application to the USPTO, a trademark attorney cannot just wipe the application clean and re-submit it with the right responses. WE ARE BOUND BY THE MISTAKES. [This is a good place for me to say please allow an experienced TM attorney to prepare your filing. It's cheaper to let us prepare your best application from the start vs. you DYI-ing and then having to paying DOUBLE for creative legal arguments to get around the mistakes you made).
Okay, so back to the story. This client's application was rejected because the prior law firm did not properly identify the client's PRIMARY goods/services and then submitted evidence that was an ORNAMENTAL use of their trademark.
An ornamental use is when you slap a symbol on a t-shirt or the front of a ball cap. The federal trademark act - The Lahnam Act - is very clear that slapping a logo on a hat will NEVER EVER be proof of trademark rights. *sigh* And the trademark examiner cited SO MUCH CASE LAW supporting this rejection.
I don't wanna get into too much detail - but I drafted a pretty darn good legal argument to demonstrate that while the law does support a rejection for ornamental use of a logo, my client's brand is distinguishable FROM ALL OF THE BRANDS IN THE CASES cited by the examiner and by demonstrating that because my client's brand was unique in this regard, the examiner should overturn the rejection.
I got notice today that my arguments were accepted and my client's trademark registration certificate will be issued soon.
Dear brands, innovators, creatives, influencers - trademark law is the foundation of building a brand. Come rock with me. www.choosetma.com