Rejected Trademark Approval Possibilities?

[arber47]

Our business applied for business name trademark with the USPTO. Recently we received a rejection notice for 2 reasons. As a background our business name is made up of two words. The reasons for the rejection are basically comes down to 2 points:

1. The second word is a descriptive wording and cannot be trademarked or exclusive right be granted. We are okay with that ruling because our business is basically relying on our first word. We were given an option to dis-claim the second, which we will comply.

2. The primary reason our name was rejected is because the first word of our business was registered by another 2 word company in the same business classification. Their second word and our primary-first word is the same. The other company’s first word is a ‘noun’ that has no reference in our business. The other company I might add, is doing the trade business under a separate name, but they do have the name is question registered and approved by the USPTO

We have several options to proceed and requesting anyone who has experienced this kind of thing provide some guidance and insight. Your contribution is greatly appreciated.
Here is what we are thinking about in terms of options.

We can capitulate. Our market penetration is not matured yet, so we can simply just change our name to another and be done with it. The problem is we are kind of bias… it took us close to 8 months to secure the name, domain name and so on. We kind of grew to loving the name and it has a catchy logo that works. Our preference for now is really to stay on course and see if we have options to explore in working with USPTO to approve our trademark.
Here are our questions:

What is the best way to move forward?

Do we have a chance with winning the rebuttal with USPTO? Or are we wasting our energy/time/money with rebuttaling the rejection.

Even if the USPTO approves it, there is an advertising period right? There is a chance it may get shut down there, right?

Are there examples where 2 companies co-exist in the same industry with the same word name in their 2+word names?

Should I obtain a trademark legal counsel for assistance in this case? The company filed the initial filing with USPTO ourselves. Do we stand a better chance?

Again, thank you for your input and experience.

[teithi71]

i'm sorry i don't know