Prosecuting Eco-Marks Part VI: PTO Issues Certificate of Registration for GREEN PATENT BLOG
Over the last eight months or so I’ve been blogging about the process of prosecuting an eco-mark application in the U.S. Patent & Trademark Office (PTO), using my own experience trying to get a federal registration for the GREEN PATENT BLOG mark.
I discussed the PTO’s first office action initially rejecting my application on descriptiveness grounds (see post here), my response to that rejection (see post here), the PTO’s final office action rejecting my application for the same reason (see post here), my request for reconsideration arguing acquired distinctiveness (see post here) and the notice of publication indicating that the PTO would accept my mark on acquired distinctiveness grounds (see post here).
The prosecution process took some time and legal argument because the PTO rejected GREEN PATENT BLOG as ”merely descriptive” of blogs that provide information on green technology (a trademark can’t be registered with the PTO if it is a generic term or descriptive of goods or services because that would restrict competitors from conveying information about their goods or services).
When my argument against descriptiveness didn’t fly, I made the alternative argument of acquired distinctiveness. Acquired distinctiveness is a trademark law concept which means that the mark, though it may not be inherently distinctive enough for trademark protection, has become sufficiently distinctive through use so that consumers have come to recognize it as a source identifier for the goods or services.
The PTO found my evidence of acquired distinctiveness persuasive (I submitted evidence such as other blog and media mentions and e-mails from readers stating that GREEN PATENT BLOG had come to identify my blogging services). Thanks again to all the readers who provided those e-mails.
Last month, the PTO issued a certificate of registration for the service mark GREEN PATENT BLOG (gpb_reg.pdf) for “on-line journals, namely, blogs featuring news, information and legal analysis relating to intellectual property law issues in the clean technology and renewable energy industries” in Class 41.
Now the exciting part: I can (and have) put the little “R” in a circle next to GREEN PATENT BLOG to indicate that it’s a federally registered mark.
February 3rd, 2009 at 05:32
Great news! Congrats!
February 6th, 2009 at 08:47
Thank you for the great running tutorial on registering a service mark. Icing on the cake that it ended in success.
February 27th, 2009 at 17:09
1.job well done! and what i see is ip lawyers are charging 300+ an hour for trademark and more for patent work.the lawyer will say,do lie,exaggerate
make statements with no supporting documentation whatever is necessary to get the patent or trademark on the register to justify their fee….and nobody gets one minute free for anything…….
2.i think you need to add a logo onto gpb combing the legal industry with
the green industry….you could have a pro designer supply you with a few mockups for couple of hunded bucks…..i also think this logo without any words what so ever should by synomous with the writer of this blog..and of course you can register a design element with words a second trademark for gpb… you will have 2 trademarks on the principal register….
3.after this is accomplished then you need to add an rss feed to gpb
4.and of course your final chore for this week will be to design and add on to the gpb and add other related issues i already have the answer and design and the domain name so you will have to come up with your own concept…as the greenexpert would state “GROW TO SCALE”