#Samick piano company is still open registration
#Samick piano company is still open trial

(“Persis”), filed an opposition on October 19, 2004. Nonetheless, the Declaration was accepted at face value and apparently enough to convince the PTO to allow the mark to be registered on the Principal Register under Section 2(f) based on a claim of acquired distinctiveness.Īfter the mark was published for opposition, Richards, who had assigned his own application to his company Persis International, Inc. Of course, of the four SOHMER marks that had been registered with the PTO ( word mark, design mark, SOHMER & CO., and design mark), the SOHMER word mark was canceled on December 20, 2000, for failure to file a Section 8 Declaration of Use and the SOHMER design mark was cancelled on Decemfor failure to renew. Nevertheless, reviewing the Declaration at face value, Burgett declared that the SOHMER mark had been used continuously since February 1999. At the same time, it was apparently well known in the piano industry that the SOHMER factory in Pennsylvania had closed down in 1994. The PTO’s Assignments records (click here) reflect the chain of title for the SOHMER marks that were still registered at the time. While not clear from this Declaration, the basis for Burgett’s claim of ownership of the SOHMER name was the fact that Burgett’s predecessor-in-interest, Burgett Brothers Incorporated, had acquired the assets of Mason & Hamlin out of bankruptcy in 1996, including the trademark registrations owned by the bankrupt company at the time. Burgett’s President, Gary Burgett, filed a declaration with the PTO in February 4, 2004, that Burgett was the owner of the rights and goodwill to the mark SOHMER in connection with pianos that had been developed since 1872 by the Sohmer & Company (later Mason & Hamlin) and that the mark had become distinctive for pianos through “the substantially exclusive and continuous use of the mark in commerce by the Applicant and related companies for at least five years” preceding February 4, 2004. Then a funny thing happened in early 2004. The PTO denied the request for reconsideration on November 20, 2003, and ordered the case back to the Board.

#Samick piano company is still open trial

Burgett filed a request for reconsideration, which was considered after an ex parte appeal was filed to the Trademark Trial and Appeal Board and the Board remanded the case back to the PTO for consideration of the request for reconsideration. The PTO made its refusal to register based on Section 2(e)(4) final. Of course, there was still the little matter of the Section 2(e)(4) refusal. However, when Richards converted his application to one on the Supplemental Register, the effective filing date of the application changed to the date he filed his Amendment to Allege Use which was after the effective filing date of Burgett’s application, and thus it no longer could serve as a basis for a possible Section 2(d) refusal. The PTO also cited the existing of Richards’ earlier filed application as possible grounds for a Section 2(d) likelihood of confusion rejection and suspended prosecution. The PTO also initially refused Burgett’s application on the basis of Section 2(e)(4). However, for reasons discussed herein, the PTO did not move his application onto registration, but instead suspended prosecution of Richards’ application

#Samick piano company is still open registration

In order to get around this refusal, Richards filed an Amendment to Allege Use on August 19, 2002, and then amended his application to seek registration of the mark on the Supplemental Register (in order to get around the surname refusal).

The PTO initially refused Richards’ application on the basis of Section 2(e)(4) that the mark was primarily a surname. (“Burgett”) filed an intent-to-use trademark application to register the identical mark SOHMER in connection with pianos. Eight days later, on February 23, 2001, a company named Burgett, Inc.

Patent and Trademark Office (“PTO”) to register the mark SOHMER in connection with pianos.

On February 15, 2001, an Illinois man named Edward Richards filed an intent-to-use trademark application with the U.S. A long-running battle being waged between two companies over the trademark rights to the mark SOHMER in connection with the sale of pianos just got kicked up an additional notch.