LOP Examples: Class 035 Update


IC 35 Letter of Protest update: 

My Dog Mom Letter of Protest was dismissed in part and denied in part: 

1) a “failure-to-function — widely used message” refusal was already issued, so my protest on that basis is moot (irrelevant); 

2) my “premature claim of use in commerce” objection is denied — a third-party challenge like this is “more appropriate for an inter partes proceeding where the evidence regarding such an allegation may be fully developed by both parties. Such issues require investigation and production of evidence that are beyond the scope of authority of an examining attorney during [initial examination].” 

Interestingly, the examining attorney also refused this one based on descriptiveness, as it describes the intended user. Very cool, since applicant’s website features goods that don’t use the term ornamentally — the evidence of descriptiveness came from other stores and products. 

I’ll include this info in my upcoming training — still setting up infrastructure on the website in between stormy weather here and other duties.

My attempts to raise a descriptiveness issue in other previously-filed LOPs have all been denied, so I’m extra thankful for the excellent insights by the examining attorney here: https://tsdr.uspto.gov/documentviewer?caseId=sn88287036&docId=OOA20190405144749#docIndex=0&page=1

A Biblical View of Wealth

No idea if he was a Christian, but this is a biblical view of wealth.

If command of the fruits of the earth is the normal and destined position for each man, why should one who has achieved such a position, and in so doing has shown large powers of one kind or another, not receive the recognition that he, insofar, has succeeded?

It is a man’s work to make a fortune and under normal circumstances a measure of ability.

William Ernest Hawking

This is just one of many gems from Dorothea Brand’s classic, Wake Up and Live!: A Formula for Success That Really Works!.

We live in a culture that vilifies profit and prosperity. Yet the fact that many are profiting despite all the challenges in our economy should fill us with hope, not cynicism. It all starts with changing our mindset about wealth.

Circumcision Benefits

In the 1989–1999 decade, multiple studies confirmed the beneficial effect of newborn circumcision in preventing infant UTIs19–21 and transmission of HIV.

Google Scholar Medical Abstract

This came from an abstract of a medical article. It also mentioned 145k serviceman who might have avoided hospitalization for penile infections had they been circumcised before being sent to the desert. Unfortunately, I failed to copy the link properly and can’t find the article now.

I did, however, find this post which seems to corroborate it:

Benefits of newborn circumcision: is Europe ignoring medical evidence? 

(PS This post is intended purely as a public service announcement for my friends who might be interested, and what you choose to do with it is your business, not mine.) 😘

Girlboss Update

GIRLBOSS’s attorney raises some interesting points to overcome USPTO’s initial “failure to function” refusal:

  • the owner, Sophia Amaruso, already owns several trademarks for the term; and
  • she coined the phrase (unlike “I’m kind of a big deal” which was already in widespread use before the movie).

Still, I saw GIRLBOSS all over the marketplace before I’d ever heard of the applicant, and doubt consumers seeing it on a shirt or wall poster think they are buying from her.

From a “freedom in the marketplace” standpoint, it seems like it should be available for those who just want to identify themselves as a “girlboss” whether or not they endorse her per se.

Besides, having it spread wider in the novelty marketplace can make her other businesses stronger through increasing brand name recognition (see Malcolm Gladwell’s The Tipping Point: How Little Things Can Make a Big Difference).

Makers can learn a lesson from this saga: beware of building a brand on an inspiring message alone. Suppose the mark was instead “Girlboss by Sophia Amaruso”? Buyers who want to be part of what she’s doing would gladly pay to do so. And others who simply identify with the feminist rally cry that “girlboss” embodies could still find a gazillion novelty products to express their enthusiasm for the message.

What do you think? (I don’t use it on any of my products, BTW. Just an interested bystander.) 

I’m curious how USPTO will rule on this.