We’re back for another edition of Trademarks Published for Opposition. As always, a few important background tidbits/definitions:
- TEAS Plus – $225 per class of goods and/or services
- TEAS Reduced Fee (RF) – $275 per class of goods and/or services
- Published for Opposition (Official Gazette)
- 30-day period where a third party may oppose the mark because, among other reasons, it causes consumer confusion. If a third party does oppose it, then the case will be heard in front of the Trademark Trial and Appeal Board (TTAB).
- Section 1(a) Filing Basis, Use in Commerce (§1(a))
- Prior to filing the application, the owner of the mark began using it in association with the designated class(es) on the application; Classes 1 through 34 make up products or goods, and Classes 35 through 45 make up services.
- Here, upon filing, the original application must include a specimen, which “is a sample of how you actually use your mark with the goods and/or services identified in your application.”
- Section 1(b) Filing Basis, Intent to Use (§1(b))
- The owner of the mark has not used the mark whatsoever in association with the designated class(es), but he or she plans to use it in the future. Contrary to §1(a), a specimen is not required.
- What’s next?
- §1(a) — If a third party does not oppose the mark, the United States Patent and Trademark Office (USPTO) will register the mark approximately three months after publication.
- §1(b) — If a third party does not oppose the mark, the owner of the mark will receive a Notice of Allowance (NOA) approximately two months after the 30-day oppositional period.
- In response to the NOA, the owner must either file a Statement of Use (SOU), which must include a specimen, or request an Extension of Time to File SOU, both of which must be filed within six months after receiving the NOA.
- Subsequently, the USPTO will review the SOU and, assuming the USPTO approves it, will then register the mark approximately two months later.
- Owner: Andre Williams (@)
- Filed §1(b) for all three marks on May 28, 2015
- IC 09: Goggles for scuba diving, swimming, skiing and snowboarding; Protective sports helmet accessories that attach to the helmets, namely, mouth guards, ear pads, throat protectors, chin straps, face masks, jaw pads and eye shields
- IC 25: Mitts and gloves for the practice of sports, namely, snowboard mittens and gloves, riding gloves, ski gloves, and wet suit gloves
- IC 28: Toys and Sporting goods
- Notes: Williams plays for the New York Giants. … One of his other marks (similar to the second one above) was featured in our first post related to marks Published for Opposition.
“THIS IS WHY WE PLAY”
- Owner: NBA Properties
- Filed §1(b) on July 13, 2015
- IC 41: Entertainment and Educational Services
- Notes: NBA Properties is located in New York, New York. … “This is Why We Play” is a video ad campaign. … In November 2015, the USPTO sent a Suspension Letter because a likelihood of confusion existed with the mark, “Why We Play.”… Subsequently, the application for that mark was abandoned in February 2016.
- Owner: DME Holdings, LLC
- Filed §1(a) on April 18, 2016
- IC 41: Physical fitness training services; Sport camps; Sports training services in basketball
- Notes: First Use in Commerce was October 13, 2014. … Located in Daytona Beach, Florida, DME Academy is a post-graduation basketball academy that will open its doors in September.
“MAKE IT EASY”
- Owner: EQ 20/20, LLC
- Filed §1(b) on December 29, 2015
- IC 09: Electronic and Scientific apparatus (i.e. Electronic sports training simulators to simulate an array of distractions for the game of basketball)
- Notes: The company is located in Conroe, Texas.
- Owner: Wausau Tile, Inc.
- Filed §1(a) on January 16, 2015
- IC 28: Toys and Sporting goods (i.e. Concrete playground equipment, namely, climbing figures and basketball standards)
- Notes: Yep, you guessed it — the company’s headquarters are located in Wausau, Wisconsin.
“PITCH HIT & RUN”
- Owner: MLB Properties
- Filed §1(a) on October 14, 2015
- IC 41: Entertainment and Educational services
- Notes: First Use in Commerce was April 30, 1993. … MLB Properties is located in New York, New York. … The campaign “provides youngsters across the country an opportunity to participate in an exciting baseball/softball skills competition.”
- Owner: Routine Baseball, LLC (@)
- Filed §1(a) on August 14, 2015
- IC 25: Clothing
- Notes: Founded in 2011, the company is located in Antigo, Wisconsin.
- Owner: Pinnacle Sports Equipment
- Filed §1(b) on July 18, 2014.
- IC 28: Sporting goods (i.e. Baseball bats made in whole or in substantial part from bamboo or bamboo fiber; softball bats made in whole or in substantial part from bamboo or bamboo fiber)
- Notes: The company is based in Staten Island, New York.
- Owner: Nostalgic Partners, LLC
- Filed §1(a) on February 16, 2016
- IC 41: Entertainment services
- Notes: First Use in Commerce was June 1999. … Nostalgic Partners own the Staten Island Yankees (one of the NY Yankees class-A affiliates). … Scooter the “Holy Cow” is the Staten Island team mascot. … Notable alumni that are still active MLB players include but are not limited to: John Axford (Oakland Athletics), Phil Hughes & Eduardo Nunez (Minnesota Twins), Ian Kennedy & Chien-Ming Wang (Kansas City Royals), Francisco Cervelli (Pittsburgh Pirates), Robinson Cano (Seattle Mariners), Melky Cabrera (Chicago White Sox), and Brett Gardner & Dellin Betances (Yankees).
- Owner: Arkansas Travelers Baseball Club, Inc (@)
- Filed §1(a) on February 3, 2016
- IC 25: Clothing
- Notes: First Use in Commerce was October 2012. … The team is the Double-AA affiliate for the Los Angeles Angels of Anaheim. … Former Milwaukee Brewers shortstop Jean Segura was a member of the Travelers in 2012.
- Owner: Lakeshore Baseball Holdings LLC (@)
- Filed §1(a) on February 2, 2016
- IC 41: Entertainment services
- Notes: First Use in Commerce was November 2011. … Located in Mequon, Wisconsin, the Chinooks, comprised of college players, is a member of the Northwoods League.
- Owner: Duke University
- Filed §1(a) on January 29, 2016
- IC 25: Clothing
- IC 41: Entertainment services (i.e. Organizing and conducting college sport competitions and athletic events)
- Notes: First Use in Commerce for IC 25 was December 31, 1969. … First Use in Commerce for IC 41 was September 16, 1967.
- Owner: The State University of New Jersey (Rutgers)
- Filed §1(b) on August 19, 2015
- IC 41: Entertainment services (i.e. Organizing and sponsoring amateur football sporting events)
- Notes: The mark includes a disclaimer, which states: “No claim is made to the exclusive right to use “JERSEY” apart from the mark as shown.”
“CURTAIN OF DISTRACTION”
- Owner: Arizona State University
- Filed §1(a) on February 11, 2016
- IC 25: Clothing
- IC 41: Entertainment services (i.e. Organizing and conducting athletic competitions and games in the field of basketball; Providing collegiate athletic and sporting events)
- Notes: First Use in Commerce for IC 25 was November 30, 2014. … First Use in Commerce for IC 41 was December 31, 2013. … During the 2015-16 basketball season, Olympian Michael Phelps made a lasting impression as a member of ASU’s student section. … The gif is, unfortunately, not part of the mark.
“THE TRUE MEASURE OF THE GAME”
- Owner: SkyHawke Technologies, LLC
- Filed §1(b) on February 8, 2016
- IC 09: Electronic and Scientific Appartus (i.e. Electronic satellite tracking and information system comprising hardware and software used to determine distances on golf courses; Software for determining distances on golf courses and for displaying golf shot approach and distance information for the purpose of improving shot accuracy)
- Notes: The company is located in Ridgeland, Mississippi.
- Owner: Transamerica Corporation
- Filed §1(a) on June 9, 2015
- IC 41: Entertainment services (i.e. Organization and presentation of sports tournaments as an event sponsor)
- Notes: First Use in Commerce was September 12, 2011. … The company’s headquarters are located in Cedar Rapids, Iowa. … Some of the company’s sponsorships include the Rock ‘n’ Roll Marathon Series and the Colorado Rapids (MLS).
- Owner: OwnThePlay, Inc. (@)
- Filed §1(a) on December 18, 2015.
- IC 41: Entertainment services (i.e. Fantasy sports leagues)
- Notes: First Use in Commerce was June 29, 2015. … The company’s headquarters are located in Birmingham, Michigan.
- Owner: Fast Model Technologies (@)
- Filed §1(a) on February 17, 2016
- IC 09: Computer software for teaching, coaching, practicing, scouting and playing sports
- IC 41: Educational services (i.e. Coaching and instruction services in the field of sports)
- IC 42: Technological services (i.e. Providing a website that enables users to subscribe to coaching, mentoring, and/or educational services and to enable users to author and publish instructional content for others)
- Notes: First Use in Commerce for all classes was September 29, 2015. … The company’s headquarters are located in Chicago, Illinois.