KAnalysis Consultant (P) Ltd., an Intellectual Property Boutique has filed a Letter of Protest (LOP) with the United States Patent and Trademark Office (“USPTO”) on behalf of all members of the Intellectual Property (IP) community against Bert the Spider LLC’s (“BS LLC”) attempt to trademark the term “IP Illustration”.
We were deeply concerned, after realizing about the brazen attempt to monopolize an extremely generic term that has been used throughout the world by one and all, since millennia. This blatant mischief came to our notice last week, after issuance of an office action against the application by the USPTO. We believe there are some serious inadequacies and omissions in the Office Action, as it did not even raise genericism as a conceivable problem with the application.
We became even more anxious after a thorough analysis of the Office Action, as a real threat of BS LLC’s chances of easily overcoming the objections loomed large. It was even more shocking, as USPTO themselves operate in the domain of IP, and should have straightforwardly rejected the attempt as frivolous and being used extensively in relation to a domain of work.
The details of the BS LLC’s application can be accessed using the following hyperlink and taking a look at the items marked in red in the screenshot of the TSDR page provided below makes the situation grimmer.
http://tsdr.uspto.gov/#caseNumber=86762671&caseType=SERIAL_NO&searchType=statusSearch
Anyone working in the IP domain can have a hearty laugh after reading the disclaimer “NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE ‘ILLUSTRATION’ APART FROM THE MARK AS SHOWN“, implying that either they have a claim over the work of everybody employed in the area of ‘IP Illustrations’, or they are claiming their monopoly over the word ‘IP’.
In the LOP (Serial No. 86762671) filed today by KAnalysis, we have presented only ten of the thousands of examples available, identifying the type of work associated with IP Illustration, making it an eligible candidate to be referred as generic. A term is generic and cannot be trademarked when it identifies the products and services itself instead of the source of those goods or services. We have also presented other facts that ascertain the use of word IP as an acronym for Intellectual Property.
A letter of protest is one of most underused procedure that allows third parties to bring to the attention of the USPTO evidence bearing on the registrability of a mark. Trademark Manual of Examining Procedure (TMEP) §1715.01 clearly states that a letter of protest will only be accepted if it presents an issue that can be dealt with by an examining attorney in the course of the ex parte examination of a trademark application.
The LOP procedure applies only to pending applications and is intended to aid in examination without causing undue delay and without compromising the integrity and objectivity of the ex parte examination process. Therefore, LOP can be an extremely useful tool in situations where anyone notices a Trademark Application in its infant stage and has knowledge of a strong evidence demonstrating objection to allowance of the trademark application.
We strongly believe that the USPTO will review the evidences submitted by KAnalysis, and arrive at the same conclusion, as echoed by numerous practitioners in the IP Domain, and in particular providing IP Illustration services.
As a general practice, it usually takes about a month for the USPTO to act on a LOP and we urge all stake holders to raise their concerns on this malicious attempt of securing a trademark for the word IP Illustration.
In case you would like to know more about LOP practices, or have a look at the complete Letter of Protest, please drop an email at business@kanalysis.com
About KAnalysis
KAnalysis provides extensive support, offering TM Watch, Opposition, Evidence Gathering services to companies willing to actively protect their business interests in a prompt, timely and cost-effective manner.
KAnalysis Consultants is an Intellectual Property boutique firm with offices in Italy, UK, and operations based in India. Since 2007, our specialized IP counseling has been assisting our Global Clients in Protection, Enforcement, Commercialization, and Research related to Patents, Trademarks, Designs, Copyrights, Geographic Indications and Domain Names. For more please visit www.KAnalysis.com
