Options if you’ve received this USPTO rejection
(my favorite is at the bottom):
A. If you’re stuck with your mark “as is,” (can’t amend, can’t rebrand), then the key is to prove that no consumer could possibly be confused. You’ll need evidence. Online Reviews are best, reviews that repeatedly mention your brand name, your exact product, and your Word-MarkTM as a memorable aspect of the product/experience.
B. Carefully watch the Registrant’s mark for abandonment (they may not pay the reissue fee by the 6-year deadline), therein leaving you/your mark as the last man standing. Delay your ROA (response to USPTO Office Action) until your ‘squatter’ competition goes abandoned. Even ask the Examiner to Suspend the Action until your competition goes abandoned.
C. Consent Agreement – (not my fav option): write your competition a proposal to Agree to Coexist (this technique rarely works, so probably best to forget this option and abandon your current-failed application for now, stay under the radar, and wait until the Registrant disappears or strays (rather than give a Registrant notice of your existence (a gift of a slam-dunk ™ Infringement Lawsuit against you)).
D. Brainstorm to think of a novel word you can live with, and amend to add this word to your Word-Mark as a prefix or suffix (or mid-wedge-word) to add your word mark. Look through your marketing material for a useful (novel/fanciful) amendment_word (check your website, your product labeling, your packaging) and then add it to your mark+logo (via amendment or a refile) to distinguish yourself. Then after ‘5-year incontestability,’ decide whether to drop the ‘throwaway word.’
Hope this helps!
Patent Lawyer, Rich Bennett Salles (uspto reg.#72346)
Foundation Patents 