IMESSENGER TRADEMARK APPLICATION (INTERESTING EMAIL COMMUNICATION - MANY TO BE SHARED)

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Recent email sent by me to the person who approached me about our iMessenger Trademark

This email is a response to the advertisement that we received from your firm. Please see email below.

Our organization had sent response to your email, which stated that our current trademark application getting registered is a long shot. In that email, we presented our side of things after your response to our first email. After that communication, we did not hear back from you. Now, we have been receiving emails again and again stating your organization's interest to work with us. 

We believe that we have a strong understanding of entire history of this trademark and would like to represent with our current legal counsel. If we need any further information or assistance, we will certainly contact you.

By the way, this was your response to our question on the chances of getting iMessenger registered and here was your response -

"

Hello,

Thank you for the email.

I have reviewed your case and I think that overcoming this refusal is probably a long shot.  I would recommend that you proceed with a different name and a new application.  If you would like assistance with a new application, our fee is $800 to prepare and file the application and an additional $350 to file a statement of use later on.  Office actions, although unlikely, run $250-$1000.

"

How would it be different now or do you stand your viewpoint on this trademark?

Sincerely,

Signing off,

Srikanth S. Kidambi PhD, MBA (General Management), MS (Electrical Engineering), MS (Biomedical Engineering), Dipl. CA & More

Note: These degrees are being shared not to brag, but more to showcase the hard work that went into it

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FOUNDER, CEO & PARTNER

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On Thu, Jan 30, 2020 at 7:02 AM Trademark Law Firm <####> wrote:

ATTORNEY ADVERTISEMENT

Your trademark has been issued an "Office Action" by the US Patent & Trademark Office. Without a proper response you will lose your application. This is the information I have for you: Your Trademark: Service Mark Serial Number: 88019343 Status: Non-Final Office Action Issued Status Date: 08/12/2019 If you are not already represented by a lawyer I can review your trademark application for free and help you get things back on track.  Let's figure this out

VAL-U-PRO CONSULTING GROUP, LLC - SRIKANTH KIDAMBI <srik.kid2012@gmail.com>	Sun, Apr 21, 2019, 4:08 AM
to

Ms ####:

I had received the following email with regard to a filed Trademark of ours. We need to respond
to the USPTO office action before October 24th and would like to get your thoughts on steps to
be taken to get this trademark registered.

Sincerely,

Srikanth.

to me, Trademark

Hello,

Thank you for the email.

I have reviewed your case and I think that overcoming this refusal is probably a long shot.
I would recommend that you proceed with a different name and a new application.  If you
would like assistance with a new application, our fee is $800 to prepare and file the application
and an additional $350 to file a statement of use later on.  Office actions, although unlikely,
run $250-$1000.

Thanks, (Lawyer's info removed for privacy)

VAL-U-PRO CONSULTING GROUP, LLC - SRIKANTH KIDAMBI <srik.kid2012@gmail.com>	Sun, Apr 21, 2019, 12:29 PM

Thank you for getting back to me. 

Before filing for another trademark,  I am keen to present our side to address
USPTO office action. 

I can share a brief summary of our prior experience,  while addressing this name issue
and would like to hear your response after reading through these facts. 

Summary:

We had our iMessenger app added to Google Play Store in the middle of 2017.
After a year or so,  we noticed our app removed by Google from the play store after
a third-party player,  (one of the companies mentioned in the USPTO office action)
claimed copyright concern with regard to this name. 

As a response to this action, we presented the facts such as,  the trademark, iMessenger
was an officially approved trademark owned by Palm in 1999 and was in play until 2012 or
so (exact dates need to be confirmed prior to submitting our response letter) prior to getting
cancelled, most probably after HP taking over Palm Pre. 

This fact implied that iMessenger was in use, while Instant AOL Messenger was active as
well. Moreover,  iMessage was approved while iMessenger was still an official trademark
approved by USPTO. 

Sharing this info, both to the claimant and platform provider,  might have played an important
role in our app getting reinstated by Google Play Store in 2018 (supporting documents can be provided) .
There were also other facts that were shared at that time, which we will be sharing again in our
response letter.  

For this reason, we believe that it is at least worth to present these facts to USPTO to hear
their response in this regard.  If iMessage could be approved while iMessenger was in service,
it makes us wonder how it would be different this time. 

In a way,  this experience resulted in us filing our trademark in 2018 after the reinstatement
of the app in the Google Play Store. 

With these facts presented, do you still believe that getting our trademark registered
being a long shot? 

Sincerely,  

February 02, 2020 Tags : application , communication , email , imessenger , incompetent , law , lawyer , trademark , uspto

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