[E-trademarks] Two issues

[Kevin Grierson]

Sounds like a good candidate for one of the new proceedings under the TMA.  The reexamination proceeding in particular is geared towards marks that were not in use on or before a particular relevant date (such as the date of filing of the application or the date of the SOU).

Kevin Grierson​​​​
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Nancy Prager via E-trademarks
Sent: Friday, April 19, 2024 1:40 PM
To: E-TM-Mail-Server <e-trademarks at oppedahl-lists.com>
Cc: Nancy Prager <nancyprager at yahoo.com>
Subject: [E-trademarks] Two issues

EXTERNAL EMAIL
I was doing a knock out search this morning for a client.  I was shocked to see that the USPTO accepted two specimens which have significant issues:

1)  In the screenshots for YouTube videos that purport to support that there are multiple episodes of a show the videos are clearly marked as unlisted.  Unlisted videos are not technically publicly available on the platform.  Each of the videos had between 1 and 4 views.  Not hundreds, thousands or millions.  Single digits. How was that not clearly fake?  this was processed in 2020

2)  Another specimen is clearly a picture where the mark has been transposed on a generic journal.  Like a notebook you buy at the store.  I am shocked it was accepted.  this was processed in 2022.

In both instances I cannot find any evidence of actual use on the internet, or on YouTube years after the videos were purportedly uploaded.

Both marks are within the initial 5 year window.  Is my client's only option to cancel the marks?   Is there another option so that my client doesn't have to incur costs?  Also, couldn't the registrant start using the marks now once notified of the cancellation effort?

thanks in advance!  Hope to meet some of you at the INTA reception.

Best,

Nancy
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