The strategy of filing minimal art to get a trademark for your company

Shhhh! Is this a trademark?
This is a good example where MINIMAL ART
was used to qualify for a trademark
registration, so that the coveted Federal
registration symbol ® could be used in
future marketing to establish credibility,
ownership and standing.
The USPTO ruled the name THE TRIPLE
BOTTOM LINE PODCAST had to be
disclaimed “because it is merely descriptive
of an ingredient, quality, characteristic
function, feature, purpose, or use of applicant’s services”.
As is done, the USPTO Examining Attorney Kemi Odusami offered his rational
“The attached evidence from Harvard Business School Online, Investopedia
and Wikipedia demonstrates that “THE TRIPLE BOTTOM LINE” otherwise noted a
TBL or 3BL is a business concept with three parts: Profit, People and the Planet.
This business concept posits that companies and business should commit to
focusing on social and environmental concerns as they do on profits.”.
Applicant accepted disclaimer – NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT
TO USE “THE TRIPLE BOTTOM LINE PODCAST” APART FROM THE MARK AS
SHOWN.
So therefore, the reality is, THIS mark is ONLY about the “art”, this is what was
achieved: “The mark consists of a rectangular tri-colored background comprising
upper red and blue portions and a lower green portion with a circular white
foreground with the literal elements arranged in vertical relation to one another
from top to bottom as follows TRIPLE in red coloration, BOTTOM in blue
coloration and LINE in green coloration within the circular white foreground.
The trademark attorney knew exactly what he was doing. He filed application
with the name and “logo design art” together. He hoped, but was not surprised
the examining attorney would require a disclaimer of the name – but not the
minimal logo. So, therefore his client could gain a registered trademark – OF THE
ART.
Could the USPTO Office Action be argued? Not sure, here, now. But, as we
preach, comprehensive research would and should have been done beforehand
to make sure no one else had the name in commerce and IF it could be argued
in case of refusal by the USPTO Examining Attorney. In this case, it’s hard to tell
because maybe it could have been argued, but the client chose not to.
We would NOT have recommended the minimal logo design “art”, because
there is nothing to research. Circles, squares, triangles as used here. are
universal. Having done over 400 logo design searches, I promise you it would be
a waste of time and $ to research this logo. That is why we like to see clients
logos before we are hired. We see lots of supposed art that isn’t art. Save that $!
CONCLUSION
So, was it worth about $2000-$3000 for a trademark attorney to do this work for
the owner, Design Positive, LLC? Was it worth the $250 USPTO filing fee?
The answer is, for this nationally used podcast, is probably YES!
The marketing advantage is worth it. The deking of wannabe competitors to stay
away from the name THE TRIPLE BOTTOM LINE PODCAST is worth it. The truth is
anyone can use the disclaimed name. Shhhh!
Contact Us – Call – Anytime Zoom – Email
TradeMark Express
https://www.tmexpress.com/
Urgent Trademark
https://urgenttrademark.com/
650-948-0530
Los Altos, California Office Staff
202-496-1600
Washington, DC Office Staff
Email: staff@tmexpress.com
Open 7am to 4pm EST, Mon. – Fri.
Since 1992

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