SUCCESSFUL TRADEMARK CASE

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

Optics Company sought to file for a trademark with the United States Patent and Trademark Office (USPTO) for its new optical lens it had designed. The company felt it imperative that their trademark be approved as to ensure continued productivity and growth of the company. While Optics Company was still based in China, they tried filing for a trademark with the USPTO but was denied twice. Without this approval, the company would not be protected from others who may attempt to steal the trademark. Desperately needing help, Optics Company came to Tsang and Associates wondering what we could to assist them. We believed strongly in their case and helped them refile their application on July 14, 2015. The trademark was approved February 16, 2016.

Keys to Success

When Optics Company first came to Tsang and Associates for help, we learned that they 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 denial 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 ark 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 “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”. And 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 Optics Company’s identification of the goods was deemed to encompass the existing registrant’s goods and thus was denied.

Despite these objections from USPTO, we believed that we could overcome these reasons and help our client gain approval of the trademark for the optical lenses. In the filing that we assisted Optics Company to perform, we took heed of the USPTO reasons for denial. As such, we were able to help the company narrow their 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 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

Our client’s trademark application was approved by USPTO on February 16, 2016 about 7 months after the initial filing.

*Name has been changed to protect client identity.