by Structured Settlement Watchdog
The Structured Settlements Company meets descriptiveness objection as trademark attempt ends in failure
Two decades after one of its predecessor companies failed to trademark “The Structured Settlements Company*,” a renewed attempt by EPS Settlements Group met a similar fate. The filing was abandoned on August 10, 2009, according to the United States Patent and Trademark Office (USPTO) website.
On April 6, 2009 EPS filed a separate action to try to register EPS Settlements Group The Structured Settlements Company (Serial 77713386).
While the USPTO stated on June 30, 2009 that its search results found no conflicting marks, the office action raises similar concerns as the failed application, namely that the words “Settlements Group The Structured Settlements Company” are descriptive of its services (i.e. a group or company that provides structured settlements”.
What is a Descriptiveness Rejection?
A descriptiveness rejection is made in an office action on your trademark application when the USPTO trademark examiner believes that your trademark is merely descriptive of your goods and services. Merely descriptive marks may not be registered on the principal register
What is the Principal Register?
It is the primary list on which trademarks that meet certain federal filing standards are placed. To have a trademark placed on the principal register, the owner must pay a fee and file their application with the U.S. Patent and Trademark Office. The application must include where the applicant lives and what their citizenship is, “the date of the applicant’s first use of the mark, the date of the applicant’s first use of the mark in commerce, the goods in connection with which the mark is used, and a drawing of the mark.” 15 U.S.C. 1051(a)(2). Additionally, to be placed on the principal register, the applicant must show that they are the owner, that the mark is used in commerce, that no other person has a right to use such mark, or one closely resembling the mark in question, in commerce which might cause confusion, mistake, or deception between the marks 15 U.S.C. 1051(a)(3)
Source: Legal Information Institute, Cornell
Trademark of “The Structured Settlements Company” Would Cause Marketplace Confusion
- Mediators frequently introduce settlement consultants as being “…from the structured settlement company,” regardless of whether they are affiliated with EPS.
- Before a trademark can be registered, it must first be published for opposition.
- The author maintains the opinion that trademarking “the structured settlements company” in any form would disadvantage EPS competitors.
The USPTO has requested that a disclaimer be included which states a standard format “No claim is made to the exclusive right to use “SETTLEMENTS GROUP THE STRUCTURED SETTLEMENTS COMPANY” apart from the mark as shown”.
Read the June 30, 2009 office action Download EPS The Structured Settlements Company USPTO Latest Status Info
EPS Attempts to Trademark “The Structured Settlements Company” May 13, 2009
- Serial Number 736358929 Application date January 9, 1987. Abandoned May 1, 1989
- Serial Number 77609719 Appliucation date November 7, 2008 Abandoned August 10, 2009
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