Interesting Scenario

Posted by . updated on 11/11/2009
Applicant does not file any Section 8/9 declaration.  Registration then canceled about 6 months ago.  Applicant files anew and recieves an office action with respect to geographically descriptiveness.   Is there any way to hold the USPTO responsible for approving the mark previously and not approving it now, e.g. estoppel argument?  I have looked around and cannot find the answer.

Regards,
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Answers (1)
 
JSonnabend
My mother often starts a story by saying, "I have a funny story to tell you."  I often answer, "mom, you just tell us the story and we'll decide whether or not it's funny."  I suppose a similar retort would work for the "interesting scenario" Wink (just busting your chops).

I would search TTAB/Fed Cir precedent to see if you can find a similar fact patter, but that's going to be tough, I imagine. 

Regardless of the results (unless of course you hit the unlikely scenario of finding bad precedent), I would argue two things.  First, point out the earlier allowance and registration and argue that no substantive facts have changed, so the mark should be deemed not merely descriptive.

Second, I would argue in the alternative that the use has been continuous for at least 6 years, and so at the very least there is a 2(f) basis.

- Jeff
 

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Regards,