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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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What were they (Applicants) thinking?

August 19 2015 tev kofsky 2(d) Citation Watch, 2(d) refusals, Branding, opposition, pro se applicant 0 comments Tags: tesla

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.

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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

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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Which Firms Filed the Most Oppositions in 2011?

January 02 2012 tev kofsky 2(d) Citation Watch, 2(d) refusals, charts, opposition, trademark, ttab 0 comments

As many have come to expect, here is our annual compilation of firms that filed the most oppositions in 2011*.

Click on the [+] to expand details for each firm to show all plaintiffs and case links. Aside from the top 3 firms, the differences between most firms are quite close. There are actually 41 firms that filed at least 20 oppositions last year. Also noteworthy is that the top 5 firms represent more than 10% of all oppositions filed.

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Note: The list shown here includes just the top 16 ranked firms. Our complete list of the 41 top ranked firms by oppositions filed (including links to each individual TTAB case) is available. Request your copy.

* Based upon correspondent at filing
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2(d) Watch among top 10 trademark tools

September 07 2011 tev kofsky 2(d) Citation Watch, 2(d) refusals, trademark 0 comments

We’re happy to announce that the latest World Trademark Review magazine (Oct/Nov ’11) includes an article on “10 of the best online trademark tools“, in which our own 2(d) Citation Watch has been listed. Although technically not an online tool (although it is delivered via email and will eventually be downloadable as well) it further proves that the uniqueness and value of this service is what counts. Copies of the article are available upon request.

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TM filing observations regarding the new vernacular

January 11 2011 2(d) Citation Watch, 2(d) refusals, trademark, ttab 0 comments

Here’s a notable observation we’ve come across while parsing through PTO data used each week to generate our popular 2(d) Citation Watch: Applicant’s frequent use of another’s registered trademark within the identification and classification of goods. Notable examples of this (mal)practice are just about any product by APPLE Inc. (iPhone, iPad,etc.,) and apparently those of HOODIES USA.

Using the example of APPLE, we’ve seen the following notations by the examiner countless times.

The wording “IPHONE” in the identification of goods is a registered mark not owned by applicant. See enclosed registration. In its own application, an applicant may use its own registered mark in an identification of goods or services, but may not use a registered mark owned by another party. A registered mark indicates origin in one party and cannot be used to define goods or services that originate in a party other than the registrant. TMEP §1402.09; see Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958). Therefore, applicant must amend the identification of goods by deleting the wording “IPHONE” and substituting the common commercial or generic name for the goods.

In general, isn’t this a basic tenet of TM-101? Is there sufficient awareness by applicants and their counsel of this restriction within the description of goods?

And here are some stats to back it up. There were approximately 85 applications with the terms IPHONE in the description of Goods, increasing each year since 2007 with the majority appearing in 2010. A similar pattern is now emerging for IPAD. Lastly, there are zero REGISTERED marks with any of those terms in the description of Goods, which shows that the USPTO is consistent in applying the criteria – at least for APPLE Inc.!

Can we conclude that this situation has led to much wastage of time, effort and money by all parties involved, due to the necessity to file, refile, respond to office actions and correct existing applications…not to mention taxing the examiners’ workload and leading to further traffic snarls and backlog along the TM prosecution highway? Is this another measure of APPLE’s success in the marketplace, that it has created this new vernacular that itself is used by others, yet detrimentally so by impacting the timely registrations of these third party trademarks? Do you think they planned it that way?

Lets hope that in 2011 applicants learn this lesson….

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