Is “The Vitamin Shoppe” too generic of a name for the parent company to obtain trademark registration? After a year-long battle within the Trademark Trial and Appeal Board (TTAB) system, the answer is a resounding yes. Without a disclaimer for the entire mark, the TTAB was unwilling to reverse the U.S. Patent and Trademark Office’s (USPTO) refusal of the applications for registration.
We have been asked by many clients whether we can assist them with registering trademarks connected to the sale of cannabis and cannabis-related goods and services. In the past, we needed to be very creative to push applications through to registration. Now, the U.S. Patent and Trademark Office (USPTO) may be making things a bit simpler for us and our clients.
Chicago Cubs Baseball Club, LLC has filed a notice of opposition with the Trademark Trial and Appeal Board (TTAB). The Cubs believe that its club will be damaged if the U.S. Patent and Trademark Office (USPTO) chooses to register the marks “FLY THE W” and “1908 IS ENOUGH.” The Cubs are very well known for their World Series drought of over 100 years, winning the World Series in 1908 and then not winning the World Series again until 2016. The Chicago Cubs are famous for a tradition that started in the 1930s of flying a white flag with the letter “W” over its ballpark, Wrigley Field, on days that the team wins. The press often refers to the flag as “the W.”
Registering protectable marks with the USPTO can be a complex process and is not always as simple as just filing an application. Heitner Legal can file your trademark application, and then guide you when the process is more complicated than that. Heitner Legal has a great deal of experience with this sort of transactional trademark work, as well as in trademark litigation.
Chicago Cubs Baseball Club, LLC opposes registration of these marks based on priority and likelihood of confusion. The Cubs claim that the organization has promoted and advertised the sale of an extremely wide variety of goods and services in connection with W marks. The Cubs own five different registrations for these “W” marks and claim exclusive right to use these registered marks.
The Applicant for “FLY THE W” and “1908 IS ENOUGH” is the owner of Where Were You When…?, a sports and lifestyle apparel company. The Cubs believe these two marks are confusingly similar to its own W Marks and that a strong likelihood of consumer confusion is present. The strongest argument for the applicant is perhaps the fact that many of its products have to do with historic sports moments.
If the USPTO does not find the notice of opposition persuasive, it may choose to register “FLY THE W” and “1908 IS ENOUGH.” On the other hand, if the the USPTO chooses to refuse registration based on the Cubs opposition, Where Were You When…? will be faced with responding to that office action.
Last month, it was reported that prominent children’s store, Toys R Us, would be going after the trademark application filed by up-and-coming hair salon and boutique, Hair Are Us. On March 17, 2014, the popular hair extension business based out of Atlanta, Georgia –with additional locations in Miami, Florida and Los Angeles, California – filed for the trademark seen at the top of this article.
Due to the fact the contemplated trademark encompasses “Hair Are Us” and includes the phrase “Are Us” – words included as a substantial part of registered trademarks vigorously protected by Toys R Us’ parent company, Geoffrey LLC, such as “Babies R Us,” “Stickers R Us,” and even simply “R Us” – Toys R Us elected to oppose the application based on the grounds that the mark dilutes its family of marks and sounds confusingly similar thereto, thereby likely confusing consumers into believing that Hair Are Us is connected with other stores owned and operated by Geoffrey LLC.
Generally speaking, an opposition is a legal proceeding governed by the United States Patent and Trademark Office (USPTO) and allows a third party or an owner of a trademark to try and prevent registration of a pending application for a mark. This proceeding is triggered after the applied-for mark has been published in the Trademark Official Gazette (TMOG). Thereafter, the opposing party must file its opposition, or a request to extend its time to file an opposition, within thirty days of the date of publication. A trademark application may be opposed on absolute – i.e. the applied-for trademark is merely descriptive or generic – or relative grounds, such as the case here. The most common defenses to an opposition proceeding is that the mark was used prior to the opposing party’s trademark and/or that no likelihood of confusion exists between the marks, thus they should be permitted to co-habitat in the marketplace.
Roughly less than five percent of trademark applications are opposed each year. However, the fact that this is a low percentage should not deter start-up companies and other entities looking to establish their respective brands from conducting a thorough and extensive search of the USPTO before deciding on what their mark should be. Specifically, companies should seek guidance through the form of an advisory opinion detailing whether or not its proposed mark is available based on other applied-for and registered marks found within the USPTO, and the likelihood of registration of the mark in the event that it is.
A trademark not only serves as a company’s source identifier, but also as an outright statement to the purchasing public that what they are purchasing comes directly from or is endorsed by that company. As such, not only must trademarks be vigorously protected, but they also must be readily available at the outset so as to avoid the chances of a third party swooping in to enforce its rights and going after the company for unknowing infringement.
Trademark infringement lawsuits are costly and may extend for lengthy periods of time. Therefore, it is frugal to spend money now in order to save money later; as a result, advisory opinions should be one of, if not, the first expenses a start-up company makes.
No one likes a bully, and that includes “trademark bullies.” One definition of “bullying” is, to treat in an overbearing or intimidating manner (synonym = intimidate). So how exactly does one intimidate others with trademarks? Through aggressive litigation tactics by those with power against those with limited resources. The U.S. Patent and Trademark Office (USPTO) provides the following definition:
“A trademark ‘bully’ could be described as a trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.”
The USPTO is concerned about this type of bullying. Read more “Trademark Bullies Beware”