August 12, 2014

Recently the U.S. Patent and Trademark Office (“USPTO”) accepted The Trademark Company’s argument in support of registration of Kevin Penko’s trademark application for ASK THE EXPERTS (U.S. Ser. No. 85856511) approving the trademark for registration on the Principal Register for the USPTO.

By way of history, Mr. Penko applied to register the trademark with the USPTO on February 21, 2013 for use in connection with a host of advertising services.  On June 12, 2013 the USPTO requested that Mr. Penko, through The Trademark Company, provide additional information about the proposed services with which the trademark would be used.  Mr. Penko complied with the request.  On July 9, 2013, the USPTO then denied Mr. Penko’s application and his claim of acquired distinctiveness holding that the trademark, as applied for, was too descriptive to be entitled to registration under Section 2(f), the statute that allows for the registration of descriptive trademarks that have acquired distinctiveness among the relevant consuming public.

The Trademark Company then argued successfully over a series of office action responses that Mr. Penko’s application should be entitled to registration.  As stated above, the USPTO ultimately accepted The Trademark Company’s arguments in support of registration of the ASK THE EXPERTS application.  The trademark is now pending registration before the USPTO.

If you have any questions about this matter or any other application pending before the USPTO Contact Us.  If you would like to learn more about our Office Action Response Packages and Appeals Click Here.

Required Ethics Disclaimer: As always, case results depend upon a variety of factors unique to each case.  As such, this case result does not guarantee or predict a similar result in any future case.