We received an abandonment letter from the USPTO office claiming that our final office action response had nothing new, though we had invested sizable hours in researching every cited case in the office letter and presented a detailed response to each of the concerns raised by the examiner. When we reached out to the trademark office with regard to reviving the application through director petition after the receipt of the abandonment letter, trademark office's initial understanding pertaining to the reason for abandonment being non-response to the final office action, though we had submitted a detailed response presenting our side of things. The point being that the abandonment letter was even confusing for the trademark office that the letter gave the impression that we did not submit a timely response, which was not the case. We followed up by showing evidential documents confirming our submission of our response on time, which was later confirmed by the trademark office. When we requested for further clarification on where we could fit the abandonment letter in terms of petition categories in order to revive our application through director's petition, the trademark office suggested us to reach out to practicing attorneys in this regard. We also reached out to the examiner in this regard to get further clarification without any avail.
As per suggestion put forth by the trademark office, we connected with attorneys or legal processing firms, who approached us or whom we identified, and their initial analysis of the final letter was in line with what the trademark office thought that we did not respond on time, which suggests that this was a repeating pattern further implying the letter was confusing to a wider audience. Also, some other attorneys did not want to take on the behemoths involved, and also added that the stare decisis or prior decisions would not play as much a role, though stare decisis/prior decisions were repeatedly mentioned in the examiner's responses, and forms the crux of legal decisions.
However, we would also like to add that we did not just offer the argument of stare decisis alone to give us a fair consideration. We presented a thorough explanation from various angles capturing various aspects of trademark law to get a fair consideration for our mark. As we felt that the market should know in entirety, we are offering a detailed account of what are all the things that we presented during the course of repeated efforts from our end to get a fair consideration in this registration:
1a. First and foremost evidence presented was that the mark, IMESSENGER was the first of the approved trademarks in this product space, not once but twice, when the other mentioned marks were not even live. Moreover, this mark was also offered as a live product, while the mark was live.
1b. We also outlined in detail the basis for filing the trademark, where our application was removed all of a sudden from the Google Play Store for the reason that Apple had claimed our application causing likelihood of confusion, though there were no products of Apple in the Google Play Store then and even until now. For that matter, we even noticed several other applications later on with the same name as ours added to the Play store, which we cited and no action was taken to those, whereas ours was removed. This removal action led us to do a thorough research internally without any outside services, which resulted in the finding that IMESSENGER was a word mark that was approved by USPTO not once, but twice, and was the first one in the space compared to the other ones cited by the examiner. For that matter, this mark included a live product in the same classes as the marks that were approved later on, and cited by the USPTO examiner. This research on our part led us to file the trademark application as the earlier approved mark was cancelled in the year, 2014, and our mark was filed more than three years after that cancellation.
2. We clearly showed that the trade channel offered for the mentioned marks is neither existent nor on the same channel through supporting evidences such as, news media articles and from the mentioned marks' product website.
3a. We also stated that the examiner while citing examples of likelihood of confusion did not capture TMEP likelihood of confusion explanation in entirety. As per TMEP explanation, in order for a mark to be brought under likelihood of confusion, it is important that there is a possibility for the mark to cause actual confusion among the end-users/consumers for it to be categorized under the likelihood of confusion clause. We presented a real example where another product with the same name as ours caused confusion to one of the potential users of our app, which was never the case with those cited by the examiner.
3b. It is also important to understand the nature of customers/consumers involved to determine whether they will be misled by any such confusion, which is also an essential consideration pointed out in the TMEP requirements, while addressing the likelihood of confusion. In our case, being a smartphone application, the end-users tend to be an erudite group, who would also have the ability to make a clear judgement call based on information that we are expected to provide about our apps in the platforms where the products are offered. Further, it is easy to uninstall applications, if the product offered is not in line with the expectations of the user.
4. Moreover, we have had our product in the market place for more than three years (though the platform provider came up with some reason or the other to remove our application, while another IMESSENGER app offering almost identical features that was added more than a year later was kept intact all these times, and was not even updated since January of 2019) and there was not even one instance of a potential user getting confused between the two marks cited by the examiner, which has played a role in some prior decisions.
5. Also, most of the countries considered one of the mentioned marks as a descriptive mark as it sounded like electronic message, which resulted in negation of that mark. Though our application is tied to the US, we presented this fact for the reason that common law also plays a big role in legal decisions and the underlying definitions of trademark law are not much different across the globe.
6. We also presented the fact that there were marks such as IM (aligning with the argument made by the examiner, IM could imply for the descriptive word, Instant Message, and is also agreed upon in the marketplace), UMessenger (while another mark, United Messenger is already live, and U in computer terms could mean the descriptive word, User) approved around the same time, while we were going through these challenges to get our mark registered. The reason for sharing this point is for the reason that one of the arguments presented by the examiner was that messenger is also a descriptive word, and hence, our mark could be categorized as a descriptive mark. This point of view appears to contradict the approval of the mark, IMESSAGE, which was cited by the lawyer. For that reason, we presented the meaning of the word, MESSAGE, in the same light as the examiner had presented for the word, MESSENGER.
7. It is also confusing that our mark cited for likelihood of confusion is also considered as a descriptive mark. If it were to be a descriptive mark, then how could it cause a likelihood of confusion ?????
8. We had shared screenshots showing the presence of a live product as a specimen before in our responses, which was not approved, even though, it is an approved upon evidence mentioned in the USPTO website. Aligning with the suggestion put forth, we combined the image again with the url that offer product details, which we believe we had shared even before in our prior responses.
9. Though all the mentioned marks cited by the examiner was approved before for the classes that we had identified, our addendum to include another class was not accepted, which is not relevant anyways considering the overall mark was not given a due consideration from our perspective, and was not approved.
10. Examiner also cited the notion that "I" in generality means Internet at one place and Instant at another place, which contradicts the examiner's own statements. For which we cited the example of IEEE where "I" represents Institute for the reason that IEEE has been in business for more than 60 years. "I" could also imply "Information" as is the case with Information Technology, which is very much prevalent in this field.
11. While we are still working on addressing to revive and file this mark, we have gone ahead and unplugged this app from the US and Swiss regions in the Google Play Store, though Swiss mark was through acquired distinctiveness and was not approved upon earlier. Moreover, going by the argument put forth by the examiner that our mark is descriptive, our IMESSENGER should not cause any likelihood of confusion in the US markets. Even then, we decided to remove the app from the US store as we doubt justice would be served here and it would just add unnecessary distractions from our primary focus to build a genuine and thriving organization. We have also added a variant, WeMessenger, in the play store, which has been available on our own platform, AmazeBaba, for a while now.
12. Note: Unlike one of the companies cited by the examiner, we did not find a convoluted way to register our mark by going to Bahamas, whereas followed the normal recommended means believing still in rule of law when we first started the process.
All of our claims are supported by content presented in below references. Moreover, most of these points were shared in our office action responses with supporting documents, though the examiner claimed nothing new was mentioned in our response letter.