Prosecuting Eco-Marks Part III: PTO Maintains Descriptiveness Rejection
I recently received a second office action (secondofficeaction.pdf) from the U.S. Patent & Trademark Office (PTO) regarding my application to register the GREEN PATENT BLOG eco-mark. The trademark examiner rejected the application again on the same ground - that the mark is “merely descriptive” of the services offered. The examiner re-stated his position that “GREEN” describes clean tech subjects, “PATENT” is a type of intellectual property, and “BLOG” is a generic term.
I had asserted that the mark is not merely descriptive because “GREEN” has many meanings, but the examiner rejected that argument, stating that the descriptiveness inquiry focuses on the relevant services. That is, the fact that “GREEN” may have different meanings in other contexts does not control here because the term immediately describes Green Patent Blog’s (GPB) services of providing information on clean technology and renewable energy.
The office action included attached evidence purporting to show “green patents” used in a descriptive manner, including some GPB pages, and the examiner seemed to relish quoting my own words against me (maybe I should sign him up for free e-mail alerts!).
Incidentally, I knew that referencing “green patents” in my posts could provide ammunition to the examiner, but decided that the importance of generating Google hits for that term outweighed the downside of compromising my trademark prosecution.
The office action was made “final,” which means I can now appeal to the Trademark Trial and Appeal Board. Alternatively, I could file another response with the examiner. I’m mulling my options now and will of course report on the next step in due course.
July 29th, 2008 at 11:03
Let’s see. You’re options are (1) give up; or (2) request reconsideration by the Examining Attorney, and lose; and/or (3) file an appeal and lose; and/or (4) change the name of your blog to something that might be registrable.
July 30th, 2008 at 11:44
Had you limited the description to “On-line journals, namely, blogs featuring news, information, and legal analysis relating to intellectual property law issues” do you feel your arguments in response to the first action may have been convincing? As then, GREEN isn’t tied to clean technology and renewable energy, but could be considered to be relating to plants or slang for money or finance.
July 30th, 2008 at 15:58
The previous comments sound fairly negative, but when I thing of a green patent blog, I think of this blog, and when I search green patent blog on Yahoo!, this post comes up first. If any of their previous commentators are IP attorneys, do you not think that “green patent blog” is indicative of this particular blog rather than other blogs and, therefore, should be granted trademark registration?
July 30th, 2008 at 17:07
Yes, Anon, I do think I’d be in a much better position if I had listed the services as you suggest or if I had listed them as just “relating to legal issues” instead of “intellectual property law issues”, because then the PATENT component would be less of a problem.
July 31st, 2008 at 12:30
Franco Serafini - I believe your point seems to concede that it is descriptive, but has already received secondary meaning and if GREEN PATENT BLOG were descriptive it could potentially be placed on the supplemental register, where it must sit for the specified time.
As far as another argument, why not try arguing that PATENT is suggestive in a manner similar to how Nipper argued that INVENT is suggestive of the content of THE INVENT BLOG?