Saturday, May 23, 2015

Trademark King – Update 2

     Since the last blog post, Mr. Lehocky has responded to a number of first Office Actions.  Mr. Lehocky's responses demonstrate that he does not understand trademark law, or does not believe that he needs to follow it.

     In his HYUNDAIUSA.COM application (application serial no. 86465557), he described the "evidence" he submitted in response to the first Office Action as:

The evidence consists of a trademark company requesting an automobile domain name HYUNDIUSA.COM [sic] that is not trademarked. The domain name involves advertising, promoting, buying, selling, and leasing automobiles to anyone in the United States for a legal business activity. A professional company should be 1a because it is available for sale right now. Any legal advertising cannot be done until approval is done.

And, he revised his description of services as follows:

Brand development and evaluation services in the field of trademarks, trade names, and domain names.; Creating trademarks for others; Creating trademarks for others. Selling or leasing the automobile domain name HYUNDIUSA.COM [sic] to anyone in the United States for a legal business activity.

And yes, he spelled his mark incorrectly.

     In the second Office Action, the trademark examiner, Nelson B. Snyder III, provides a short course in prosecuting a trademark to Mr. Lehocky.

     First, the examiner discusses the differences between a use based application (section 1(a)) versus intent to use application (section 1(b)).  As a hint, the difference is whether the mark already has been "use[d] in commerce".  Later, the examiner points out that the application probably should be an intent-to-use application because there has been no use of the trademark.

     Second, the examiner discusses the differences between a trademark, service mark and a domain name.  A trademark and service mark identify the source of goods or services while a domain name is part of an internet protocol address and registering a domain name does not give you any trademark rights.

     Third, the examiner highlights an ownership issue. To be entitled to file a trademark application, the registrant either must have used the mark (section 1(a)), or be entitled to use the mark (section 1(b)).  In this case, Mr. Lehocky's statements show that he has not used the mark and that he may not be entitled to use the mark.

     Fourth, the examiner points out that an application's description of goods or services may be clarified or narrowed, but cannot be broadened.  In this case, Mr. Lehocky's amendment – selling or leasing the mark – would broaden the description of services beyond brand development services (i.e., International Class 35).

     Fifth, the examiner points out that specimens submitted must show the "applied-for mark in use in commerce with the services for each international class".  The submitted specimen was "merely a photocopy of the drawing or a picture or rendering of the applied-for mark".

     Sixth, the examiner suggests that Mr. Lehocky retain trademark counsel and provides some suggestions on how to locate such a counsel.

     As I originally mentioned, the legal bases for these trademark application was sorely lacking.  As aptly demonstrated by the trademark examiner, Mr. Lehocky has no chance of saving his applications, even if he retains trademark counsel.

- Henry Park

updated on February 6, 2016

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