Several companies, brands, and the like earned federal trademark registration this week. When they began the trademark process, their filing basis was either based on Use in Commerce (§1(a)) or Intent to Use (§1(b)). As to the former, they must include a specimen, which is essentially a sample of how the mark is used in association with the goods/services associated with the mark, in their original application.
As to the latter, they are also required to submit a specimen but is done when they file a Statement of Use. A Statement of Use, which is filed at some point after the mark is published for opposition, stands as direct evidence that the company/brand has began using the mark in commerce. All in all, a more in-depth discussion on §1(a) and §1(b) can be found here.
Moving forward, each registrant is required to filed a Section 8 Declaration between year five and six after the registration date. Next, the registration must file a Section 8 & 9 Renewal between year nine and ten after the registration date, as well as between year nine and ten thereafter. If this is not done, then the United States Patent and Trademark Office (USPTO) will deem the mark as abandoned, which means that federal registration rights are lost.
READ TO THE FINAL FOUR
- Owner: The National Collegiate Athletic Association (@)
- Filed §1(a) on December 1, 2015
- IC 41: Entertainment and Educational services (i.e. In the nature of competitions in the field of literacy; Providing recognition and incentives through awards and publicity to promote reading)
- Notes: First Use in Commerce was November 1, 2014. … The NCAA’s headquarters are located in Indianapolis, Indiana. … Read to the Final Four is a literacy competition.
- Owner: USA Basketball (@)
- Filed §1(b) on October 24, 2014
- IC 18: Leather goods (i.e. Athletic bags, shoe bags for travel, overnight bags, umbrellas, backpacks)
- IC 28: Toys and Sporting goods
- Notes: First Use in Commerce for both ICs was August 11, 2015. … USA Basketball’s headquarters are located in Colorado Springs, Colorado. … The Men’s National Team kicks off Olympic play on Saturday, August 6 against China. … The full schedule can be found here.
- Owner: Kids in the Game LLC (@)
- Filed §1(a) on March 9, 2016
- IC 41: Educational services (i.e. Basketball camps; Summer camps; Arranging and conducting youth sports programs in the field of basketball youth clinics, camps, leagues, travel teams, coaching clinics, recruiting services, basketball parties and basketball lessons)
- Notes: First Use in Commerce was February 28, 2015. … Kids in the Game is located in New York, New York.
- Owner: Edelman Marketing, LLC
- Filed §1(a) on October 14, 2015
- IC 25: Clothing
- IC 41: Entertainment and Educational services (i.e. Providing a website featuring non-downloadable videos, pictures, and blogs in the fields of sports, cooking, technology, business, and humor)
- Notes: First Use in Commerce for both classes was September 17, 2013. … Julian Edelman (@) plays wide receiver for the New England Patriots. … Edelman Marketing is located in Foxboro, Massachusetts.
- Owner: Gridiron Now, LLC (@)
- Filed §1(b) on September 4, 2015
- IC 41: Providing a website featuring information relating to the sport of college football
- Notes: First Use in Commerce was September 4, 2015. … Gridiron Now is located in Jacksonville, Florida.
- Owner: Futbol Club Cincinnati, LLC (@)
- Filed §1(b) on April 17, 2015
- IC 16: Printed matter and Paper goods (i.e. Posters; decals; printed media guides relating to a professional soccer team; souvenir soccer programs; yearbooks in the field of soccer; printed event admission tickets; photo prints; magazines featuring information in the field of soccer)
- IC 41: Entertainment services (i.e. Soccer exhibitions rendered live in a stadium, and through the media of television and radio and via the internet; provision of entertainment in the nature of non-downloadable pre-recorded film clips from soccer games via mobile communication devices)
- Notes: First Use in Commerce for both ICs was August 15, 2015. … The team competes in the United Soccer League (USL); 2016 marked the team’s inaugural season.
PAR 3 CHALLENGE
- Owner: Bkeene Business And Industry
- Filed §1(a) on January 25, 2016
- IC 42: Scientific and Technological services (i.e. Providing a website featuring non-downloadable software for allowing a golfer to play a Hole-In-One contest at a physical golf course to win cash and prizes for good performance)
- Notes: First Use in Commerce was June 19, 2016. … Even though the company’s basis for filing was §1(a), the USPTO sent an Office Action letter on May 10, 2016, stating that registration was denied because, among other reasons the specimen included in the original application did not “show the applied-for mark in use in commerce in connection with any of the goods and/or services specified. … Specifically, the specimen shows a screenshot of a cell phone, indicating this is downloaded software in Class 9 rather than website featuring nondownloadable software.”
- The USPTO sent another Office Action letter on June 17, 2016, stating that registration was refused again because the mark was merely descriptive. … Thus, while most of the marks listed in this post + other marks as a whole are registered with the Principal Register, this particular mark is registered with the Supplemental Register, which does not yield as much protection as the former. … The company is located in Milton, Georgia.
- Owner: Demetrious “Mighty Mouse” Johnson (@)
- Filed §1(a) on December 18, 2015
- IC 25: Clothing
- IC 41: Entertainment services (i.e. In the nature of live visual and audio performances by a professional mixed martial arts fighter)
- Notes: First Use in Commerce for IC 25 was December 13, 2015. … First Use in Commerce for IC 41 was December 11, 2015. … Johnson is the current UFC Flyweight Champion but was unable to defend his title at UFC 201 against Wilson Reis because of an undisclosed injury.
SUCCESS IS A TEAM EFFORT
- Owner: USA Gymnastics (@)
- Filed §1(a) on December 21, 2015
- IC 35: Advertising and Business services (i.e. Promoting public awareness and interest in the sport of gymnastics)
- Notes: First Use in Commerce was December 1, 2015. … USA Gymnastics, a non-profit corporation, is headquartered in Indianapolis, Indiana. … This is not a good look for USA Gymnastics, as the Indianapolis Star reported that the organization “failed to alert authorities to many allegations of sexual abuse by coaches — relying on a policy that enabled predators to abuse gymnasts long after USA Gymnastics had received warnings.”
GAME DAY JUST GOT MORE FASHIONABLE
- Owner: Lauren Farrell
- Filed §1(b) on August 17, 2015
- IC 18: Leather goods (i.e. Wallets, namely, leather wallets worn on the wrist; wallets; handbags)
- Notes: First Use in Commerce was November 3, 2015. … Farrell is the founder and CEO of Lauren Farrell NY. … The company’s “goal is to bring our fans beautiful, quality products that encourage them to support their team and show their loyalty without sacrificing their own personal style.”