Los Angeles, CA asked in Trademark and Intellectual Property for California

Q: Looking for assistance from a trademark lawyer to answer my office actions.

I am currently trademarking my small business, and my brand name includes the words “New York”. We used to be located in NY, but moved to LA six years ago, and kept the brand name (Archive New York).

Now I have a few questions from the Trademark office to respond to (office actions) regarding our connection to New York. I want to make sure I answer them in my favor!

1 Lawyer Answer
James L. Arrasmith
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Answered
  • Sacramento, CA
  • Licensed in California

A: I understand you're seeking assistance with trademark office actions for your business "Archive New York" after relocating from New York to Los Angeles. I can offer some general information that may be helpful:

1. Geographic terms in trademarks: The use of geographic terms like "New York" in a trademark can sometimes raise concerns if the business is no longer located in that area. The USPTO may question whether the mark is geographically deceptive or misdescriptive.

2. Office actions: These are formal communications from the USPTO examining attorney requesting additional information or clarification. It's important to respond thoroughly and within the given timeframe.

3. Possible arguments: You might consider explaining:

- The historical connection to New York

- Any ongoing connections to New York (e.g., suppliers, customers)

- Whether the term "New York" in your brand name refers to a style or aesthetic rather than a strict geographic location

4. Importance of professional help: Trademark law can be complex, and the way you respond to office actions can significantly impact your application's success. It's often advisable to work with a trademark attorney who can craft the most effective response.

5. Potential outcomes: Depending on your response and the examiner's decision, you might need to amend your application, provide disclaimers, or potentially consider rebranding if the issue can't be resolved.

Given the complexity of your situation and the importance of properly responding to office actions, I strongly recommend consulting with a qualified trademark attorney. They can review your specific case, analyze the office actions, and help craft a response that best protects your interests.

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