When Pet Butler and Dog Butler Used Their Names

Main Story: Pet Butler Trademark Application Suspended

Pet Butler Franchising Services started selling franchises in 2004 without having a registered trademark. As it sold a franchise in Washington, Pet Butler found Dog Butler, an firm that also offered pet waste removal services in Washington and Oregon. Pet Butler then tried to register its trademark with the U.S. Trademark office. In determining whether Dog Butler is able to retain their registered trademark or forfeit it to Pet Butler, the examiner at the U.S. Patent and Trademark Office will look at who used the marks first and how. The following are claimed events that show when the "Butler" trademark was used.

• 1991 - Dog Butler, Inc. founded in Washington state. First Use of the Name.
• 1993 – 2002 Dog Butler implements and secures a national 1-800 phone number and creates a web site in order to attract business in other states and shortly thereafter secures an account out of Texas. The firm applies for trademark protection. Application deadline expires and is shelved
• 1998 - Pet Butler, Inc. founded and begins offering services to clean up pet waste
• 2000 - Dog Butler opens independently in Oregon
• 2002 - Dog Butler registers with U.S. Trademark Office and Published for Opposition
• 2002 - Dog Butler expands into AZ and reapplies for trademark protection with intentions of expanding further into other states. Interstate use of the trademark strengthens the federal claim to the trademark
• 2003 - Dog Butler successfully registers trademark
• 2004 - Pet Butler Franchising Services founded and begins selling franchises through various states.
• 2006 - Oregon Dog Butler acquires Washington Dog Butler

Timeline of Pet Butler's Application for Trademark Registration

• 30-Jul-2007 Suspension of Pet's Application
• 19-Jul-2007 Amendment and Mail Process Complete
• 13-Jul-2007 Response to Office Action
• 13-Jun-2007 Reconsideration Letter
• 31-May-2007 Amendment and Mail Process Complete
• 25-May-2007 Pet Appeals Final Refusal to Reconsider
• 27-Nov-2006 PTO Gives Final Refusal of Application
• 01-Nov-2006 Revoke by Appointed Attorney
• 13-Sep-2006 Response to Office Action
• 13-Mar-2006 Disapproval of original examiner's approval
• 02-Mar-2006 Examiners Amendment
• 14-Aug-2005 Pet Butler's Trademark Application