Here’s a example of a frequent error that pro se applicants make (those that file their own applications rather than filing through a correspondent-attorney or firm): Assuming that they can bank on their familial name to register a mark that may otherwise conflict one or more existing registrations. In this example, TESLA POWER for DC generators (in class 7) was filed in April 2015 by owner DARIUS TESLOVICH, only to be refused by the examiner citing registrations TESLA and TESLA. Notwithstanding whether Mr. Teslovich conducted even the most basic clearance search, it’s safe to assume that any IP attorney would have advised against filing this application, isn’t it? Similarly, what if the name in question was Applovitch or Applebaum, wanting to file an application for computers, mobile devices, or even baked goods? Wouldn’t the same obstacles to registration be presented to the applicant? Or, is it theoretically possible that in this case the applicant has a viable application (perhaps even co-exisitence)? If so, applicant clearly needs representation to advance his cause. Any takers? By the way, Towergate can provide pro se refusal data or similar notifications to interested firms that might wish to actively pursue such opportunities with and on behalf of pro se applicants.
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 […]
A nice shout out to Towergate for the trademark opposition data we provided in this tech article by Benny Evangelista about the CrowdX platform from Coveroo. …baseball files far more federal trademark protests than any other sport, according to Towergate Informatics, a company that tracks trademark-related data for the intellectual property industry. Towergate said MLB and its teams filed nearly 170 protests in 2013, while the NBA and NHL combined filed just 28. See the full article here.