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Accepting a 2(f) Registration

By Stephen W. Feingold

We have all been there. The Examiner has rejected your client's application to register a mark under ' 2(e). Assuming that it will take approximately five hours of lawyer time (including research to find the most-compelling cases to counter the Examiner's argument) and two hours of paralegal time, this exercise is going to cost the client at least $3,000. Then when you consider the time you will spend explaining the issue and the pros and cons, well, the cost is more likely closer to $5,000. Of course, you cannot even promise the client it is going to win, though if you do lose you know that your chances on appeal to the TTAB on this issue are slim.

These factors naturally push an attorney to consider offering to accept a 2(f) amendment. If the mark has been in use for a while, you may even be able to get this done via a telephone amendment. Who would not want to save the client more than $3,000 in fees, not to mention the embarrassment of predicting you will be able to overcome the examiner's argument only to have to explain later that all litigation is risky and the other time-honored consolations muttered by the losing attorney for years. And, realistically, the truth is that most registered trademarks are never enforced, so there is a good chance that the whole question of whether the 2(f) notation has any meaning will never come up, at least not until you are long gone.

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