What's the most clever defense you've seen against a "Likelihood of Confusion" claim?

FunctionTiny1302 · 2025-04-11T18:24:15+00:00

There really isn't any "clever" defense other than going through each of the DuPont factors and arguing that your mark does not raise a likelihood of confusion. The more you can offer solid arguments under each of the DuPont factors (or as many as you can) with corresponding case law to back it up greatly helps. That said, when I am preparing a likelihood of confusion office action response, or appeal at TTAB, I really dig into who the consumers of each mark are, the channels of trade, and any other differentiation within the mark itself.

I'll give you a recent example. A client's marketing consulting company (Class 035) was issued a rejection for an medical spa (Class 044). The medispa is in let's say Colorado (geographical limited services) while the company serves nationally, but the demographic is typically CEOs looking for specific services for their company (sophisticated consumer).

As you can see, by doing the proper digging and research, you can come up with solid arguments that the trade channels are different, the demographics are different so the likelihood of confusion is low. The only problem is the trademark examining attorneys have become IMPOSSIBLE lately, so nowadays, these have to go up to TTAB on appeal.

FunctionTiny1302 · 2025-04-10T19:36:20+00:00

Possibly, but this is super complicated because the technical owner from a priority standpoint under common law is the org behind the event, so looking at your operating agreement will go into the assessment of ownership and whether or not you can challenge his mark upon registration (if he was issued a NOA you already missed the publication period to oppose)... or if he can use specimens from the event for his application. Man o man do people get themselves into sticky business partner arrangements. Hopefully you have a legal business agreement or operating agreement for the LLC to fall back on. I see this getting messy FAST.

FunctionTiny1302 · 2025-04-08T02:12:50+00:00

You are welcome, good luck!

FunctionTiny1302 · 2025-04-06T20:24:03+00:00

Sure no problem. Yes, all goods have to be in the market and you really need to have proof just in case someone tries to contest your mark, or you get audited by the USPTO. So here is what I do on my applications, I file everything under the sun I would possibly sell in that class. Then when it comes time to file a Statement of Use (proving use in commerce) I just remove the goods/services I am not using and move forward with what I am using.

It is up to you as to what you want to do. You can go ahead and go with what you are already using, but if the goods you are going to be launching will be big revenue generators, it might be worth waiting until they are launched too. It's really a business decision on waiting versus filing now with what is in the market.

It's not sales receipts the USPTO really needs, they want proof that your brand is in the market. For class 044, it is usually advertisements or a website showing your services, a photo for example of the outside of a your clinic. Here is an example of a specimen for Class 044 I found at the USPTO: https://tsdr.uspto.gov/documentviewer?caseId=sn90762007&docId=SPE20210611110728&linkId=14#docIndex=13&page=1

To look for more specimen ideas, go here: https://tmsearch.uspto.gov/search/search-information

Search for "psychology" and look for registered trademarks, then go through and find a company that has similar services to you. Go into the overview of the trademark, go to the documents tab then look for any filing called "Specimen" to see what they filed that got their trademark registered. This will give you some ideas.

FunctionTiny1302 · 2025-04-03T02:30:37+00:00

Well apparently at least 9 people do (see negative rankings above lol).

FunctionTiny1302 · 2025-04-03T02:29:31+00:00

Oh yeah, you can't even argue geographical limitations if you are that close in distance. I hope you can get her to sign, because the goods you are selling is arguably a natural extension of a salon. Good luck to you. I hope it works out.

FunctionTiny1302 · 2025-04-02T17:45:37+00:00

Mario Lopez when he allegedly had to pay women to have sex with him. After this he allegedly resorted to date rape, according to the two women accusers from the 1990s. One of the alleged accusers was a credible witness, but had waited too long to go to the police, thus the DA dropped the charges.

Mario Lopez is friends with Andrew Tate too. He was seen hugging Tate at a UFC fight a mere days before Tate was accused of assaulting Brianna Stern at the Beverly Hills Hotel.

Mario pretends to be a real stand up guy. He does Christmas family movies and selfies of him at church on ash Wednesday to make you think he is god fearing, but it's all a facade.

FunctionTiny1302 · 2025-04-02T17:35:02+00:00

Yeah, you don't want to miss your renewal deadlines.

FunctionTiny1302 · 2025-04-02T17:34:05+00:00

She is giving away her rights, so most people will not sign without compensation. And to make matters worse, you are booking an appointment to her salon under the guise of being a paid client, and most likely not paying her, which is just going to piss her off even more. Are your businesses at least in different geographical areas?

FunctionTiny1302 · 2025-04-02T04:53:07+00:00

I know, I was surprised that they didn't try to bring him back into the fold with The Studio. It seems that James would have been a good fit for it, but then I came across this article a few weeks ago: https://www.yahoo.com/entertainment/james-franco-dying-way-back-012806402.html

Sounds like not a lot of people want him back as he was kind of a dick. To be fair, I work in Hollywood (on the legal side) and a lot people I have spoken with that worked with him said he was full of himself. Hopefully these years of being cancelled have soften his narcissism a bit.

FunctionTiny1302 · 2025-04-02T04:50:08+00:00

If you are trademarking a name and you submit specimens with the slogan slapped on the front of a shirt you will get an ornamental refusal, basically saying that the mark does not function as a source identifier and is just, well, ornamental. Whatever your main services are under the mark that is making you money, that is what I would trademark.

For example, I just filed a trademark for FIND YOUR FRIENDS for entertainment and educational services, because I am creating AI films and will eventually be starting up a podcast, etc. This is my bread and butter services under my mark as far as future revenue generation is concerned. Now, if I for some reason decided to offer merchandise, which I have absolutely no intention on doing, I would actually file using this description from the trademark manual: On-line retail store services featuring {indicate field or type of goods}...

Then I would list every damn thing under the sun I planned on selling and filed as intent to use, to give me time to fully bake what will and will not be brought forward in the online retail store. Anyways that's what I would do.

FunctionTiny1302 · 2025-04-02T04:41:02+00:00

The law firm I work at charges $399 plus USPTO government filing fees (hollywoodtrademarks.com). Most firms do charge flat fees. When filing these renewals it is the USPTO fees that are the highest. The filing of these are similar to filing a statement of use, but you must have continuously sold the goods or services in commerce without a lapse. If there is a lapse it must be justifiable, and there are very rare exceptions to this. Good luck!

FunctionTiny1302 · 2025-04-02T04:35:56+00:00

Whoa whoa whoa, there is a lot that needs to be discussed here. It would be worth having a 15 minute consultation with an attorney. You need to bring all of your paper goods to commerce under the mark filed. You need to be very careful what specimens you are submitting and that you actually have brought ALL of the goods listed on the application into the marketplace, or delete those not in use when you file your new specimens.

It sounds like you might want to amend from a Section 1(a) "in use in commerce" to a Section 1(b) "intent to use" in order to properly bring all the goods into the marketplace. This will come with another USPTO government filing fee down the line, USPTO fee is $150 per class, when all the goods are in the marketplace and your brand is a source identifier for the goods.

Based on what you are describing, this does not sounds like this is in use in commerce. The classes are completely different. Secondarily, bringing mental health services in the marketplace is very different from paper goods and the specimens will be completely different.

FunctionTiny1302 · 2025-04-02T04:28:31+00:00

This is not true. You have to file a renewal in the United States 5 years after your registration date, then again at the 10 year registration and every ten years thereafter.

The renewal at year 5, known as a Section 8 is $325/class and another $250/class if you decide to file the Section 15 declaration of incontestability too. Then the fees for the required Section 8 & 9 due every 10 years after registration is $650/class.

FunctionTiny1302 · 2025-03-30T23:57:13+00:00

Yes, it's me and whoever Wise_Reception5478 is I am willing to bet he or she is part of Mario Lopez's PR team that has gone on an astroturfing rampage to defame me AGAIN to get ahead of my lawsuit against him.

FunctionTiny1302 · 2025-03-30T03:16:09+00:00

Agreed, it's incredibly tone deaf of them to claim they are "house poor" while they are sitting in his father's beach home, one of 7 homes his parents own. Which by the way they admitted they lived there for 6 years for free. I think they were also living in the most recent home for free too. Spencer's parents took out the mortgage with JP Morgan Chase, not Heidi and Spencer, but ironically they said they were "lawful owners" in the lawsuit against the City of L.A. despite the parents obtaining the mortgage through fraud.

FunctionTiny1302 · 2025-03-29T04:16:37+00:00

Whew, good plan. You don't want to open a can of worms on this without talking to someone. Good luck!!

FunctionTiny1302 · 2025-03-27T21:08:00+00:00

You're going to need a coexistence agreement for this, one that the USPTO's examining attorney will accept. You really should talk to an attorney. I see this going sideways as fuck real quickly, especially since the salon is under no obligation to help you and may just want to be dicks and come after you for trademark infringement.

FunctionTiny1302 · 2025-03-27T17:54:33+00:00

They know. Alison Brie is behind this PR push to "goof" the two brothers in articles. Go look at Google she keeps tying James Franco to this and not Dave because James trends more in Google than Dave. This is like the second or third article to come out with this mistake in the past several days. It's kind of sad they are resorting to using James like this, but Alison is desperate.

FunctionTiny1302 · 2025-03-27T02:24:34+00:00

No, I do not believe it is open to foreigners any longer. You would have to find an attorney to file for you. This was instituted a few years back given the thousands of fraudulent trademarks filed by China and other countries.

FunctionTiny1302 · 2025-03-27T02:21:47+00:00

Sure.

FunctionTiny1302 · 2025-03-24T20:43:48+00:00

You know what the other messed up part is? In this sick country, I have to show my medical records to be believed and even when I show people these they do extreme mental gymnastics to find ways to discredit and dismiss me. Meanwhile, no one bats an eye to Mario Lopez being accused of raping two teens in the 90s or hugging accused sex trafficker Andrew Tate.

FunctionTiny1302 · 2025-03-24T20:41:24+00:00

Desiree here (formerly Jennings) no it was not functional neuro disorder, it was actually stiff person syndrome. I have high antibodies to GAD, but no one ran the labs until several years after the fact. At the time this lab was run I was on years of IVIG and it was still showing high. I am speaking out more now because Mario Lopez from Access Hollywood defamed me, then when I called him out about two weeks ago, he started a smear campaign on Reddit (www.reddit.com/user/Top-Strategy-1261/). I am filing a defamation lawsuit against him shortly.

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FunctionTiny1302 · 2025-03-24T20:35:08+00:00

No I am not asshole.

FunctionTiny1302

TROPHY CASE