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Category Archives: USPTO

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Cited NFL trademarks: More than just staying off Super Bowl turf
January 25 2016 tev kofsky 2(d) Citation Watch, 2(d) refusals, charts, trademark, USPTO, USPTO examiner 0 comments Tags: trademark refusal, trademarks, USPTO examiner

As others have duly noted (Maurice Ross, David Oxenford) the NFL is zealous in its enforcement over what it deems unauthorized use or infringement of its Super Bowl trademarks. To give added context to this thread, which naturally surfaces at this time of year due to the hype associated with the event itself, we’ve listed all citations of the NFL’s marks over the past five years in the table below, to gain insight into what obstacles applicants face with respect to potential blocking marks owned by the league. To what extent are Super Bowl trademarks being blitzed?

What’s immediately striking is that only 12 citations (listed at the top of the table) refer specifically to Super Bowl trademarks. The vast majority of NFL marks cited have no specific relation to the big game. Given the press the NFL has received over the years regarding its offensive Super Bowl stance, at least from the trademark application perspective the hype does seem overblown. This is not to say that the league’s enforcement activities are unwarranted. Infringement and unauthorized use can be prevalent within the market, nonetheless. But in looking at this list of refused applications, one can’t help but be unimpressed by the foolishness exhibited by some of these applicants. What were they thinking?

Still, there are also some instances where at first glance it seems the examiner was a bit overzealous as well (how about Red Zone Soccer?) We haven’t tracked outcomes, so it’s premature to comment further, but just because these were initially refused doesn’t mean the game ended there.

It’s evident from this analysis (and generally from what we see weekly in our 2(d) Citation Watch) that USPTO examiners provide good defensive zone coverage for all mark owners, not just the NFL.  So while it may be true that the NFL is itself aggressive in enforcing trademarks rights within its gridiron, the USPTO is also no slouch when it comes to making sure applicants don’t impinge the trademark rights of others.

 

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Kudos! Good Call by the Examiner
August 05 2015 tev kofsky 2(d) Citation Watch, 2(d) refusals, trademark, USPTO, USPTO examiner 0 comments Tags: trademark refusal, Uber, USPTO examiner

 

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Here’s a new feature-post that we will be regularly posting. We’ll highlight refusals that the USPTO trademark examiner has made, illustrating why they did so.

Today’s episode: Who is David C. I.* and why should UBER TECHNOLOGIES thank him?

 

Registered mark UBERCAB (in classes in 9, 38, 39, 42) was cited to refuse the application HANGUBER (class 39). The goods of the proposed mark are described as “Providing taxi transport for people who are incapable of driving safely due to alcohol consumption by driving the intoxicated person and their vehicle to a destination”.

You can see where this is going. But you’ve got to give some creative points to the applicant for the nice play on words they’ve proposed, suggesting hangover in their name.

The examiner states “In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services.”

Further, “The respective goods and services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” In the current case the applicant and the registrant are offering goods and services in the same field of use.”

Seem rather academic? Perhaps the applicant itself was in a stuporous state when their application was filed. The examiner has invoked the “walk the line” test, and the result is clear. Nonetheless, any bets as to where this is headed? Is there a possible route around this obstacle for the applicant to navigate?

 

* examiner at USPTO Law Office 114

Towergate Software® aggregates all trademark refusal data each week, both for pending applications as well as the published marks in the TMOG. We pair this data with the actual marks the examiners have used to make those refusals, and publish the results in our popular 2(d) Citation Watch. In essence, any firm or trademark owner can effectively use this watch to monitor their entire portfolio, courtesy of the trademark examiner! Due to its scope, it’s probably the most cost-effective trademark watch available.

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Making the case to amend USPTO Section 8 deadlines?
September 06 2012 tev kofsky charts, trademark, USPTO, visualization 0 comments

As the PTO is soliciting public comment on the potential amendment to the first filing deadline for Affidavits or Declarations of Use under Section 8 (and Section 71), we’ve compiled some analytics on the actual number of renewals for all trademark registrations filed in 2005. We used this basis-year to indicate the general trend, as the 6-month grace period for Section 8 Declarations of Use would have recently expired on June 30, 2012.

The data was analysed separately for 3 categories, reflecting the basis of registration; 1a, Home Country, and Madrid. The percentage of registrations renewed is shown in the table and chart below.

Is it what you might have expected? Does it make or break the case to amend the Trademark Act to advance the filing deadline to between the third and fourth year from registration?

Here are a couple of alternative views to this data. The first one is a representation of all registrations in the year 2005, with the relative percentages of renewed marks vs. deadwood within the register as of June 30, 2012.

The second chart illustrates the composition of deadwood marks within the register by filing basis, from all 2005 registrations.

See our Services page for more info on Towergate’s unique data mining and watch services.

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