Similar Trademark

[Gregcyber]

I filed for a trademark and had my application denied for there being a similar trademark.

The similar mark is not being used on any website, the domain name in the exactly spelling .com, .net, .org are all for sale or parked.

When I search for the other trademark, the only references to the trademark is news about launching the service, dated 2004

The trademark I applied for has 6 characters, the similar trademark is 5 characters spelled the same way except that I added 1 more charter.

I believe a large ISP owns the other mark.
Both marks are in the 35 category.
There are other irreverent marks as well, but dont really have any similarities in my mind...

In the present case, applicant’s mark ------ is similar to the registered mark ----- in sound and appearance. Applicant’s mark differs from the registered mark by the addition of a second D after the letter A. Both marks would likely be pronounced the same. Overall, the marks have the same commercial impression.

I have had 3 lawyers send me mail. These firms want to help me for money
I dont know if or how much hidden costs they will charge. I wonder whats a normal fee for this kind of help.
The starting quotes range from 195.00 to 349.00 US Funds.
Will there be additional cost after I send the the starting fee?
What would be the possible out come?

 

[Marketing Guru]

The only way to ensure that the price won't go up is to get a lawyer to agree to writing specific letters or filings for specific flat fee.

Be VERY wary of starting a lawyer's meter running. Once the hooks are in, you will get charged for every miniscule effort they make. I have dealt with lawyers that turn mountains into molehills, drag out the proceeding. One even ignored my project for 2 months, then charged me again just to 'review' the file, since he had forgotten so much in the meantime.

My advice: Always use a lawyer to draw up legal/business paperwork, and always get a flat fee quote in writing up front.

- MG

turn mountains into molehills

Make mountains out of molehills.

 

[Theo]

It doesn't matter if the mark is not being actively used, according to your perspective. What matters is, that the mark is now registered and it hasn't expired due to lack of renewal. So your application was denied based on the existence of a similar mark in the same category.

 

[jberryhill]

The effort involved in responding to an office action really depends on the particular facts involved.

It's sort of like asking "How much is a murder defense?"

Well, if you never knew the victim and were giving a solo concert in another country in front of a crowd of 100,000 fans at the time of the murder, then the defense is going to be pretty easy. If you were sleeping in the next room at the time five hours after saying, "oooh I could just kill him" to someone else, then a whole lot more evidence is going to be relevant.

I personally believe that self-promoting lawyers who chase after these things by searching for pro se applications with office actions, probably don't have enough work already for a reason.

As a tangential issue, this is an example of why I often say, despite what gets posted here on a regular basis, that filing a registration application, or filing one without pre-filing diligence is not always the best idea. You now have a piece of paper from the government in your hands that says your domain name is similar to someone else's trademark.

Now, maybe that prior mark is abandoned, maybe your mark and services are distinguishable for a number of reasons, but nobody can tell you as a blind proposition how much argument or evidence that's going to take.

Any attorney should be able to review the action and provide you with a reliable estimate.

 

[marcorandazza]

These firms want to help me for money

Wait... wait... you mean they don't just want to help you out of christian charity? The bastards!

I personally believe that self-promoting lawyers who chase after these things by searching for pro se applications with office actions, probably don't have enough work already for a reason.

Especially any lawyer who is offering to do anything for $195.00.

As a tangential issue, this is an example of why I often say, despite what gets posted here on a regular basis, that filing a registration application, or filing one without pre-filing diligence is not always the best idea. You now have a piece of paper from the government in your hands that says your domain name is similar to someone else's trademark.

More wisdom. But, lawyers are just trying to take their money, John! You don't really need a lawyer who knows what he's doing to file for a trademark registration! Anyone can do it!

 

[jberryhill]

Wait... wait... you mean they don't just want to help you out of christian charity? The bastards!

I'm sometimes surprised by the number of folks who seem to believe they are entitled to free assistance in their pursuit of a commercial enterprise.

There are few lawyers I know who are not approachable for a simple question or brief consultation. If I receive an unsolicited question which is not "simple", the conversation typically ends there. I need a single hotkey for sending a "this is not a simple question" email, I suppose.

More wisdom. But, lawyers are just trying to take their money, John! You don't really need a lawyer who knows what he's doing to file for a trademark registration! Anyone can do it!

Well I don't want to generalize too much. One may, or may not, need a lawyer who knows what he or she is doing. A self-filer on, say, a unique fanciful mark being used for no more or less than a canned TEAS PLUS description will likely do just fine.

 

[marcorandazza]

I'm sometimes surprised by the number of folks who seem to believe they are entitled to free assistance in their pursuit of a commercial enterprise.

Ditto... naturally, I take more than my fair share of pro bono First Amendment cases, but I too want to laugh when someone with whom I don't already have a relationship wants pro bono business advice.

Funny story... A woman called me a few weeks ago. She home schools her kids because she doesn't want them exposed to "secular humanism." But, she decided to send them to school for a week so that they could "preach the gospel" to their classmates.

The teachers told the kids that if they wanted to do that, it had to be at recess or after school, but not in class.

The woman asked me if we could sue the state of Flori-duh for that.

 

[Gregcyber]

I did not post my legal problem on this site looking for free legal assistants. I do expect to pay a fee for service.
I dont know if this was a insult to me or your having a bad day

I posted to see what I should expect if I went with one of these companies / firms.
I'm in need and wondered if I took the "bait" how much more would I expect to pay. :uhoh:

If you wanted to give free advice.
You can post a How to do it your self guide :cheesy: Yes, I would attempt to do It my self.

Thanks for your time.

Update: The the firm that sent the low cost estimate of $195 has a website with bad links that do not work. lol

http://llapc.com/

 

[actnow]

Update: The the firm that sent the low cost estimate of $195 has a website with bad links that do not work. lol

http://llapc.com/

llapc .com
This is a "first" for me.
A law firm that doesn't want anyone to know anything about them.

Their website doesn't give out any substance about themselves.
Apparently, they are a small law firm. But, they specialize in diverse categories of law - bankruptcy, trademark and immigration.

I'm surprised they don't disclose the state they are located.

What is the most disturbing point about the law firm, the domain is exactly 1 yr old.
And, the whole time it has been in privacy.

Don't walk, run away from this law firm.


Whereas, in contrast John Berryhill is one of the best in our industry.
And, does not hide behind a vague website.
I believe John attends just about every conference for our industry.

As for knowing a lot about John. I know a little bit more than I care to disclose.
I saw the picture of John stopping along the road in Oz without the dot.

 

[marcorandazza]

I dont know if this was a insult to me or your having a bad day

Gregcyber, I'm very sorry if you took it personally. I was just commiserating with a fellow attorney about issues in the profession in general which, yes, your post reminded me of. Perhaps thoughtlessly, I didn't really even consider how you would take it. My bad.

With regard to llapc.com...

Yeah, a firm that does Bankruptcy, Immigration, and Trademarks? Thats like some complete losers I know in this area who do "Personal injury and entertainment law." In other words, they do personal injury, but wish that they could do entertainment law (because they don't realize what a pain in the ass entertainment law really is).

I dont think it is all that disturbing that LLAPC's domain is only a year old, nor that it is a private registration. What I do find disturbing is that they disclose NOTHING about themselves. No names, no states of licensure, no nothing. I wonder if there are even real lawyers behind that website, or if it is just someone "playing lawyer."

 

[Gerry]

pm sent

 

[Gregcyber]

pm sent

Replied to PM.

 

[jberryhill]

I did not post my legal problem on this site looking for free legal assistants. I do expect to pay a fee for service.
I dont know if this was a insult to me or your having a bad day

It was certainly not meant as an insult, and I can't recall what sort of day it was. The bottom line is that, absent a look at your specific application, what might be needed or how long it would take are open questions. However, a good lawyer should be able to provide you with an estimate.

I'm trying to figure out the message of the scrolling images at the llapc.com site - "Immigrate to the US, go bankrupt, and then go back to Europe to see the works of Van Gogh, Monet, Boticelli and Michelangelo."

 

[Theo]

"...and then go back to Europe to see the works of Van Gogh, Monet, Boticelli and Michelangelo."

Sounds like a solid plan in today's economy

 

[Gregcyber]

I will file for a extension on this issues.

I do not have the proper funds or knowledge at this time.

Doc Com's reviewed and said "Oh boy, that's going to be a hard one."

 

[Gerry]

It was certainly not meant as an insult, and I can't recall what sort of day it was.

LMAO!!! A John Berryhill disclaminer.

 

[jberryhill]

Doc Com's reviewed and said "Oh boy, that's going to be a hard one."

Made even harder by the fact that in the event of any legal action relating to it, your communication with a non-attorney is not subject to attorney-client privilege.

 

[Gerry]

Made even harder by the fact that in the event of any legal action relating to it, your communication with a non-attorney is not subject to attorney-client privilege.

True.

The issue is it did not pass the smells like, look like, feels like test with reveiwing TM attorney.

But the biggest issue was he did not realize that this was a respondent form that he could respond to the action.

The clock is ticking being that he had 6 months to respond and nearly 4 months have past.