Posts Tagged ‘anatomy’

Anatomy of great branding: GREGORYS COFFEE

Posted by ipelton on: November 20th, 2015

When I am in New York, I frequently find myself in Gregorys Coffee. The brand is quirky and fun. The logo is odd — I assume it is Gregory’s hair and glasses, but I don’t know who Gregory is! The entire brand follow similar themes — the slogan is “SEE COFFEE DIFFERENTLY.”

I love the slogan, and the brand as a whole. Why?

  • The slogan it ties in to the logo (glasses, “see”)
  • The slogan communicates something about the brand — we are different!
  • The slogan (and the brand name) is short and simple
  • The slogan is unique
  • The slogan is memorable
  • The logo is memorable

As a bonus, their frequent customer club is called “Gregulars!” Brilliant.




One small bone to pick: Gregorys could benefit from some additional USPTO trademark registrations, including covering the name for their app, protecting GREGORYS alone (without COFFEE),  and protecting GREGULARS.

Anatomy of a trademark Ex Parte Appeal Brief

Posted by ipelton on: October 15th, 2015

A recent application for CLEAN ENERGY OPTION was refused as descriptive. On appeal, the matter was resolved with the examiner before a final decision by the Trademark Trial and Appeal Board (TTAB). All of this information and these materials are public record, of course.

The brief shows the formatting of an appeal brief. It also provides some examples of substantive arguments regarding descriptiveness, in particular double entendre.  Note that an Ex Parte Brief generally features far more formalities than an office action response.

Upon receiving a Final Refusal from the USPTO to a trademark application, the applicant may file an appeal to the Trademark Trial and Appeal Board. When such an appeal is made, each party (the applicant and the USPTO Examining Attorney) will submit briefs and potentially an oral argument to a panel of three administrative judges from the Board who will then rule regarding the registrability of the trademark.

What does an Appeal Brief consist of? Generally, it cannot present new evidence but must rely on the record already created. The Appeal Brief may present arguments regarding the registrability and the evidence, and may attempt to counter arguments made by the Examining Attorney in the Final Refusal. The Appeal Brief should also describe the evidence of record and the procedural history, along with an index of the cases and statutes cited.

Trademark Ex Parte Appeal Brief: Clean Energy Option

Because I like to practice what I preach, our firm owns more than 10 trademark registrations. An application to register Tuesday Trademark Tip. That application was refused registration on the Principal (or stronger) register, as the USPTO has asserted that the name is descriptive. I contested this ruling and appealed it to the administrative judges of the Trademark Trial and Appeal Board (TTAB). A hearing in the appeal was held recently.

A decision of the USPTO refusing an application for registration can be appealed to the TTAB once it is a “Final Office Action.’ The appeal is called an Ex Parte Appeal. The applicant and the USPTO examining attorney each submit briefs. A hearing is held if the Applicant requests one. And then the judges then make a ruling. The entire process can take about year from the time the appeal is started, especially if the applicant requests a hearing, which takes some time to schedule.

The decision – and the hearing if there is one – is by a three judge panel. During the appeal process, no new evidence can be entered into the record by the Applicant or the Examining Attorney. The USPTO filing fee for an Ex Parte appeal is $100.

The hearing allows the Applicant 20 minutes to argue and the Examining Attorney 10 minutes.  The Applicant may reserve some of its time for rebuttal.

The hearings are open to the public.  Parties – and even judges – may appear in person or via live video transmission.

I always advise that an appeal is an “uphill battle” but if there are strong arguments that the USPTO has ignored or evidence that has been misunderstood, it may be worthwhile to get the case in front of three new faces instead of the examining attorney who has already made up his or her mind.


Pictures outside of the USPTO last recently following my hearing on the Tuesday Trademark Tip application.

Anatomy of a Motion for Sanctions

Posted by ipelton on: March 12th, 2015

In an opposition or cancellation case at the Trademark Trial and Appeal Board (TTAB) it is sometime necessary to bring a Motion to Sanctions when a Motion to Compel has already been brought and the Board’s instructions are not complied with and a party continues to fail to meet its discovery obligations.

No two motions for sanctions will look the same, because the history and circumstances will always vary from case to case.

Below is a sample Motion for Sanctions at the TTAB from a real case (publicly available here). Sanctions can include dismissal of the entire case.

For more details about sanctions, see the TTAB Manual of Procedure (TBMP) Section 527.

Sample Motion for Sanctions (TTAB)

Anatomy of a Motion to Compel

Posted by ipelton on: March 10th, 2015

In an opposition or cancellation case at the Trademark Trial and Appeal Board (TTAB) it is sometime necessary to bring a Motion to Compel to deal with a party failing to meet its discovery obligations.

Below is a sample Motion to Compel at the TTAB from a real case (publicly available here).

For more details about motions to compel, see the TTAB Manual of Procedure (TBMP) Sections 400 (Discovery) and 523 (Motion to Compel Disclosure or Discovery).


Sample Motion to Compel – Trademark Trial and Appeal Board (TTAB)