While lynx may not be generally known for having a ferocious bite, they do have sharp teeth and I’m sure they can inflict serious pain when they do decide to attack.
In the same way, while breadth can be a good thing when it comes to how a brand owner recites its services in a registration application, there are and must be limits, and when the obvious ones are ignored, especially given the clear and preexisting landscape of third party registrations, the USPTO might be inclined to, let’s just say, at least show its teeth.
For example, you might wonder, what might happen when someone files a multi-class, intent-to-use federal trademark and service mark application, claiming a bona-fide intent-to-use the applied-for mark in connection with an exceedingly broad description of goods and services covering nine different classes, including over-breadth examples like “education and entertainment services” in Int’l Class 41?
Let’s just say, you might get a close up view of the USPTO’s choppers, in the form of a 115-page Office Action, complete with 30 prior registrations cited as the bases for likelihood of confusion refusals, along with 11 more potential likelihood of confusion refusals if those prior-filed pending applications mature to registration.
We know this to be true because earlier this month the USPTO refused registration of the LYNX TECHNOLOGY trademark and service mark application with this warning:
DUE TO APPLICANT’S EXTREMELY BROAD ID FOR IT’S GOODS AND SERVICES, NUMEROUS 2(d) CITATIONS ARE REQUIRED.
Some of the prior entertainment service mark registrations cited as the bases for likelihood of confusion refusals involving Int’l Class 41 included:
- MINNESOTA LYNX for rendering live basketball games and basketball exhibitions;
- AUGUSTA LYNX for providing professional hockey exhibitions;
- OTTAWA LYNX for entertainment services in the nature of baseball exhibitions;
- LINXX ACADEMY for martial arts instruction; and
- RUFUS LYNX for entertainment services in the nature of personal appearances by a costumed mascot at basketball games and exhibitions.
Goodness, there are more federally-registered LYNX marks for entertainment-type services than there are living species of the Lynx genus, but when there is no limit to the claimed “entertainment services,” you still get a brush with the USPTO’s teeth.
The fact that the MINNESOTA LYNX professional women’s basketball team name and mark can peacefully coexist with RUFUS LYNX, the mascot for the men’s CHARLOTTE BOBCATS professional basketball team, doesn’t open the gate to other LYNX marks without any limitations.
Word to the wise, spending a little extra time on the front end, carefully crafting an application with reasonable scope, can save lots of time on the back end, especially after the USPTO has had to work overtime examining an over-broad application, and growling all the while doing so.
By the way, and on a more positive note, hearty congrats to our own Minnesota Lynx for winning their bid to play in the finals for the WNBA national championship.
Maybe Rufus will be invited to help cheer our Lynx on to victory!