Prosecuting Eco-Marks Part IV: Green Patent Blog Requests Reconsideration, Argues Acquired Distinctiveness

September 21st, 2008 by Eric Lane Leave a reply »


In response to a , I recently filed a Request for Reconsideration in an attempt to keep the dream alive for GPB.  After a final Office Action, a trademark applicant can appeal the decision or file a Request for Reconsideration raising a new issue.

My Request for Reconsideration raised the new issue 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.

Fortunately the trademark rules allow applicants to argue acquired distinctiveness in the alternative, so I did not have to concede that the GREEN PATENT BLOG mark is merely descriptive of the services provided.  Instead, I maintained my position that the mark is not merely descriptive and added the acquired distinctiveness argument.

Specifically, I argued that readers of Green Patent Blog have come to recognize the mark as an identifier of my blogging services.  I used both indirect evidence, such as other blog and media mentions listing me as the author of Green Patent Blog, and direct evidence consisting of e-mails from readers saying that they identify me as the source of the clean tech IP blogging services (a big thank you to all the readers who helped me in this regard!).

If the examining attorney buys my argument and supporting evidence on acquired distinctiveness, the GREEN PATENT BLOG mark will be published for opposition, and then registered if nobody opposes.  Otherwise, I’ll get another office action and have to take it from there.


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