It’s a wonderful life, collaborating with brand owners and marketing teams to advance their goals.

Our work for brand owners also involves a collaboration of sorts with the U.S. Trademark Office.

We work with the USPTO to obtain registrations for our clients and this triggers USPTO obligations.

As such, when examining applications, the USPTO must search its records for conflicting marks.

It also must refuse applications for marks that are confusingly similar to prior registered marks.

Mistakes happen, but sadly, if the USPTO misses a proper refusal, the brand owner holds the bag.

So, when the USPTO doesn’t do its job well, the brand owner is put in a position to spend money.

Several weeks ago, I expressed near certainty that the USPTO would refuse registration of Kevin O’Leary’s (of Shark Tank fame) application to federally register his nicknameMr. Wonderful — given another’s well-established, federally-registered trademark rights in WONDERFUL for nuts:

Surisingly, the USPTO has issued no refusal, and the Mr. Wonderful mark -for nuts- has been approved for publication. If you’re at a loss how that can be, here is the USPTO’s search summary.

As it reveals, the “session duration” lasted 218 seconds; not a single “wonderful” mark was “viewed” during examination, yet hundreds of “mr” trademark records were, maybe even him?

The “mr” portion of the search was narrowed to focus on the nuts class of goods (IC 29), but strangely this wasn’t done for the “wonderful” portion, leading to zero “wonderful” viewed records.

Let’s just call this oversight for what it is, not exactly a wonderful trademark examination by the USPTO — literally and figuratively. The Mr. Wonderful approval — for nuts –looks like clear error.

Were we in Wonderful’s camp, we’d be thinking about a Letter of Protest to have the USPTO issue the likelihood of confusion refusal, because it costs peanuts compared to a full-blown opposition.

Trademark types, would you get crackin’ on a Letter of Protest, were you holding Wonderful’s bag?

Marketing types, how nuts would you be spending a lot more than peanuts, if the USPTO doesn’t acknowledge clear error and issue the refusal, to help make a Notice of Opposition unnecessary.

To the extent you’re in Mr. Wonderful’s camp, how would you approach a registration refusal, knowing that 15 of the 16 live “wonderful” marks at the USPTO for nuts are Wonderful’s marks?

If you’re a video game fan like me, you’re probably familiar with Blizzard Entertainment and their assortment of popular games, such as Starcraft, Diablo, and World of Warcraft. One of Blizzard’s newest games is Overwatch, a multi-player, first-person shooter game. One aspect of this game is the Overwatch League, a series of tournaments and live events involving Overwatch players around the world, eventually culminating in the Overwatch League World Championships.

Blizzard recently applied to register an Overwatch League design mark, shown below, for various goods and services, including entertainment services in the nature of organizing and conducting eSports and video game contests and video game tournaments.

Major League Baseball Properties, Inc. (I’ll abbreviate as “MLB”) decided to file a request for an extension of time to oppose Blizzard’s application, presumably based on their various Major League Baseball design marks, such as the one below.

Significant press coverage has followed this development, which is somewhat unusual, as this is merely an extension request, i.e., it simply buys MLB more time to consider whether to file a Notice of Opposition and/or to reach out to the applicant to attempt to resolve a dispute informally. Filing extensions of time to oppose are relatively routine in the trademark field. Often times, in borderline cases where a party might not necessarily follow through with an opposition proceeding, simply filing an extension of time to oppose slows down the prosecution of an application and provides extended leverage during informal negotiations between parties.

So this extension of time might not lead to any formal dispute. One might question how likely it is that MLB would really follow through with an opposition here based on the differences in the marks. Both marks have a two-tone background (though in different colors), split diagonally by a white silhouette of a figure. However, the figures are quite different, one being a baseball player about to hit a ball, the other being a figure leaping forward with some type of gun, apparently about to shoot someone (the species of the Overwatch figure is also unclear–Overwatch has a variety human and non-human characters, such as a genetically engineered gorilla).

On a quick search, I’ve come across several design marks with two-tone, diagonal color splits, and white figures in the middle, some of which are in related sporting or entertainment fields. As one obvious example, see the NBA’s well-known logo:

As another example in the video-game field, see the MLG (Major League Gaming) design mark:

I wonder whether the Overwatch League design will end up being of any significant concern to MLB. Perhaps the extension of time to oppose simply provides some leverage over informal talks between the parties towards modifying the Overwatch League design? What do you think?

The weather is finally getting warmer up here in Minnesota and it’s a great time to watch baseball, as I’ve been doing frequently of late. It’s been fun watching my home team, the Twins, enjoy a strong start to the season (anything above .500 is huge after our record-breaking disappointment last year), with our younger players making big improvements.

You may think that with the baseball season now in full swing, the MLB might be too busy to aggressively enforce all of its trademarks. You would be wrong. Major League Baseball Properties and the Office of the Commissioner of Baseball (“Opposers”) filed a notice of opposition last week before the Trademark Trial and Appeal Board against the registration of the word mark FOR BASEBALL USE ONLY (Application Serial No. 87153257).

The individual applicant, Joshua Morell filed the application last year, and it published for opposition in January, without any office actions issued. The application identifies numerous clothing goods in International Class 25,  including for example, hats, shirts, rainproof jackets, and sweat shirts.

The Opposers assert a likelihood of confusion under Trademark Act Section 2(d). The bases for this opposition are loaded with a barrage of baseball-related registrations owned by Opposers (or their related/affiliated companies), as listed below. You’ll see it is quite a long list, but it’s worth a glance through to consider the Opposers’ strategy and their chance of success. I won’t drone on with all the identified goods and services, but many include, for example, clothing, entertainment services, and promotion services.

  • Word Mark Registrations
    • MAJOR LEAGUE BASEBALL (Reg. Nos. 1528807, 1620020, 3326191, 3862153)
    • MAJOR LEAGUE BASEBALL ALL-STAR FANFEST (Reg. No. 1719587)
    • MAJOR LEAGUE BASEBALL PRODUCTIONS (Reg. No. 1745625)
    • THIS WEEK IN BASEBALL (Reg. Nos. 2743153, 2769617)
    • OFFICIAL BANK OF BASEBALL (Reg. No. 3565847)
    • THE BASEBALL CHANNEL (Reg. No. 3592912)
    • THIS IS BEYOND BASEBALL (Reg. No. 3746838)
    • ALL OF BASEBALL (Reg. Nos. 3779854, 3849163)
    • BASEBALL EVERYWHERE (Reg. No. 3845051)
    • R.B.I. BASEBALL (Reg. Nos. 3864816, 4687412, 4687414, 4750683, 4971324)
  • Design Mark Registrations
    • MAJOR LEAGUE BASEBALL & Design (Reg. Nos. 955967, 1055317, 1055318, 1055319, 1057260, 1057264, 1617698, 1625617)
    • R.B.I. BASEBALL MLB.COM & Design (Reg. Nos. 4758577, 4758578, 4758579, 4758580)
    • BASEBALL & Design (Reg. No. 1220334)
    • BASEBALL FEVER CATCH IT! & Design (Reg. No. 1230519)
    • MAJOR LEAGUE BASEBALL HOME VIDEO & Design (Reg. No. 1741015)
    • OFFICIAL GAME OF SUMMER BASEBALL & Design (Reg. No. 2791550)
    • NATIONAL LEAGUE OF PROFESSIONAL BASEBALL CLUBS SINCE 1876 & Design (Reg. Nos. 3644993, 3648872)
    • BASEBALL IQ MLB NETWORK & Design (Reg. No. 4294588)
    • LAS GRANDES LIGAS DE BEISBOL (Translation: “Major League Baseball”) (Reg. Nos. 2976531, 2976538)
    • SABOR A BEISBOL (Translation: “Flavor of Baseball”) (Reg. No. 3700391)
    • Design-Only (Reg. No. 2573503)
  • Opposers also cited two pending applications:
    • ONE BASEBALL (Serial. No. 86783219)
    • WE ARE BASEBALL (Serial No. 87095504)

In my view, some of the registrations cited by the Opposers are a bit off-base regarding a likelihood of confusion, particularly some of the design registrations. Quantity is not always better than quality. Even for the word mark registrations, the fact that those registered marks contain the descriptive or generic word “BASEBALL” (which, by the way, is disclaimed in many of the asserted registrations), is not necessarily sufficient for a likelihood of confusion based on the applicant’s arguably dissimilar mark FOR BASEBALL USE ONLY.

The strategy here seemed to be to assert any registrations owned by Opposers that contain the word “baseball.” Opposers even go so far as asserting in the Notice of Opposition that the public has come to recognize and refer to Opposers and their related entities “by the short-hand nickname ‘Baseball’.” That’s quite an interesting contention. Do you agree?

The applicant Joshua Morell has stated that “I am by no means damaging [the MLB] brand and none of the marks are even close to being identical to any of the MLB marks.” Morell has also explained that he is building a family of “Use Only” brands for athletes in different sports–he has also applied to register the marks MARATHON USE ONLY and RUNNING USE ONLY, among others.

Who do you think will prevail in this opposition proceeding? Stay tuned for updates.

What do you think, is Overstock.com selling bling with the Fordless blue oval logo?

Enamel Turquoise with Blue Ovals Bangle Bracelet

As you may recall from my post back in September, Ford Motor Company is attempting to register the below shown non-verbal logo as a trademark for a variety of goods in Int’l Class 12:

Mark Image

And, as you may recall from Dan’s I See Blue Ovals post back in August, there are far more than a handful of blue oval logos out there besides this one:

 

The pending Fordless blue oval intent-to-use trademark application recently was examined by the U.S. Patent and Trademark Office (PTO), and on October 23, 2009, the PTO found no substantive bases for refusal, but instead it issued an initial refusal noting only a couple of purely procedural or technical deficiencies, concerning the wording in the lengthy description of goods and the need for Ford to submit a claim of ownership to some related registrations (here, here, and here).

Continue Reading More On The Fordless Blue Oval