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Dealing with a Trade Mark objection


The Challenge:

Placemake.io, an AI company offering a range of solutions for development and investment firms, was growing rapidly and they wanted to ensure their brand was protected in-line with their emergence into new markets. We helped generate a brand protection strategy which included filing trade marks in the EU and US to ensure maximum protection and efficiency from both a time and cost perspective. The EU trade mark was secured first and then we filed a US mark based on the EU specification, with the objective of obtaining the US one without the additional hurdle of proving use in the US.

We worked closely with Placemake.io to file an extensive, carefully crafted services specification and responded to follow up clarifications from the examiner.  Then the United States Patent and Trade Mark Office (USPTO) scuppered the process by objecting to the filing, claiming that Placemake.io was descriptive of ‘placemaking’ (specific to urban planning) and would therefore not approve the trade mark.

The Solution:

To overcome the USPTO’s objection we prepared a comprehensive legal response which included definitions of placemaking (which is a neologism i.e. a newly coined word) and included details about differences in how the Placemake.io mark would be marketed, while helping maintain confidentiality for Placemake.io regarding specific use cases.  We clarified that the product itself could be used to help urban planning but that ultimately AI technologies can be broadly applied, and urban planning just happens to be one potential application and that it was ultimately an AI tool. 

The Result:

We effectively protected Placemake.io’s brand by successfully completing registrations of their US and EU trade marks.  Our arguments to the USPTO convinced the examiner that the mark was not too descriptive, and it was subsequently registered on the principal register, which gives it stronger rights against infringers in the US. With a solid brand protection strategy in place, Placemake.io has confidently expanded in the US and EU, going from strength to strength and is now trusted by a growing group of industry leaders, from FTSE 100 institutions to global investment managers.

“LegalEdge were brilliant from start to finish in helping us to develop a proper brand strategy and implementing it.  They then were instrumental in overcoming the objection to our US trade mark registration. Savva’s expert guidance and help was undoubtedly the reason behind us successfully getting our trade marks registered. He provided both strategic and practical, straightforward advice with a fixed fee that minimised hassle and stress.”

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