Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88015923

DATE:                                09/21/2018

NAME:                               jdixon1

NOTE:         

Discussed file with
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From: Dixon, Jennifer
Sent: Friday, September 21, 2018 12:00 PM
To: 'MRLBMS - Administrative' <admin@ililewa.com>
Subject: RE: Trademark App Ser No 88015923 HOLLINGWORTH & DUNN

 

Nothing with respect to having the federal registration would stop you from adding to the registered mark.  However, for purposes of showing use of the mark in commerce to move this application from an intent to use application to a use-based registration, you would need to show use of the mark in commerce in the same form as the drawing in the application.  In other words, additional wording or designs may be considered to change the commercial impression of the overall mark such that it doesn’t show use of the allowed mark in commerce. 

 

This determination would be fact-based, and I cannot make advisory opinions on possible uses that have not been submitted to the USPTO.  Additionally, we are not allowed to give legal advice, and so I cannot comment on whether using the mark in the way you mention below would dilute the mark.  You may want to consult a trademark attorney to discuss that and other legal issues.  We cannot recommend specific attorneys, but there is a list of attorneys on our website at www.uspto.gov.

 

I am sorry I cannot help you more than that.

 

Please take care,

 

Jennifer H. Dixon
Trademark Attorney, Law Office 110
Phone:  571-272-9359
jennifer.dixon@uspto.gov (informal inquiries only)

PLEASE NOTE: All informal e-mail communications relevant to a trademark application will be placed in the official application record.

 

From: MRLBMS - Administrative [mailto:admin@ililewa.com]
Sent: Friday, September 21, 2018 11:54 AM
To: Dixon, Jennifer <Jennifer.Dixon@USPTO.GOV>
Subject: Re: Trademark App Ser No 88015923 HOLLINGWORTH & DUNN

 

Jennifer,

 

Good morning.

 

A question for you please.  The elongated rectangular shape you referenced is a design element.  It is intended to be a shape in which artistic design will be introduced from time to time, during a promotion.  Can we use this space in this manner without diluted the mark?

 

Thank you in advance for your consideration of this question.

 

Mary