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.
How often is a Google mark cited by the examiner? Turns out… pretty frequently. About a citation each and every week! Here’s a peek at all of Google’s marks (at least the ones identified within USPTO records as from the company) that USPTO examiners have cited over the past 5 years (267 times, actually). Following the format in our popular 2(d) Citation Watch, we display the refused marks (green) to right of the cited marks (red). If one looks at instances when a mark incorporating the actual term “Google” was refused, you’ll find 71 different refusals. What might be the rationale for these futile attempts? Does anyone truthfully believe they can successfully register a trademark making use of this term? If you’d like to know how often the marks in your portfolio are cited, why a mark was cited, and who was refused as a result, you may want to subscribe to our 2(d) Citation Watch; the most cost-effective trademark watch available. Ask us for a complimentary report.
