[E-trademarks] Two issues

Sun Apr 21 15:11:27 EDT 2024

 That's a good point.  But here, the specimens do not include the URL so I can't copy and paste to confirm that they are even there.  So I may have been conflating the two issues. 
Regardless, this situation stinks. 

    On Sunday, April 21, 2024 at 02:04:41 PM EDT, Jarvis, Joshua <jjarvis at foleyhoag.com> wrote:  

Nancy – while I don’t disagree that the specimens are suspicious, unlisted videos on YouTubeare publicly available to those with a direct link – they’re just not listed.  For example, I back a number of Patreon creators who put backer “bonus” videos up without listing them to the general YT population.

Best,

Josh

Joshua S. Jarvis |  Partner

FOLEY HOAG LLP

Seaport West | 155 Seaport Boulevard | Boston, Massachusetts 02210-2600
617 832 3018 direct | 603 682 6822 mobile | 617 832 7000 fax 

jjarvis at foleyhoag.com |  www.foleyhoag.com

Follow Me on Twitter® | Connect with Me on LinkedIn® | Follow Our Trademark and Copyright Blog

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com>On Behalf Of Janet Satterthwaite via E-trademarks
Sent: Saturday, April 20, 2024 7:32 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>; Kevin Grierson <kgrierson at cm.law>; Robert Rosenthal <rrosenthal at phd-ip.com>
Cc: Janet Satterthwaite <jsatterthwaite at potomaclaw.com>
Subject: Re: [E-trademarks] Two issues

note that it has a weird time window—I think the registrations have to more than three years old but less than ten?

Janet F. Satterthwaite|Partner/ Chair, Trademark Practice|Potomac Law Group, PLLC

1717 Pennsylvania Avenue, NW, Suite 1025 

Washington, D.C. 20006

202-486-1578

jsatterthwaite at potomaclaw.com|www.potomaclaw.com

https://www.potomaclaw.com/professionals-janet-f-satterthwaite

This e-mail and any attachments may contain information that is private, confidential, and/or privileged. If you are not the intended recipient, please notify us immediately and destroy all copies of this message and any attachments

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Nancy Prager via E-trademarks <e-trademarks at oppedahl-lists.com>
Sent: Saturday, April 20, 2024 6:44 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>; Kevin Grierson <kgrierson at cm.law>; Robert Rosenthal <rrosenthal at phd-ip.com>
Cc: Nancy Prager <nancyprager at yahoo.com>
Subject: Re: [E-trademarks] Two issues 

WARNING:External email, do not click on links or open attachments unless you recognize the sender’s full email address and expect the attachments.

Thank you both Kevin and Robert for directing me to the new expungement option.  

Requesting an expungement or reexamination proceeding | USPTO 

| 
| 
| 
|  |  |

 |

 |
| 
|  | 
Requesting an expungement or reexamination proceeding

Learn how you can request an expungement or reexamination proceeding to challenge any good or service in a regis...
  |

 |

 |

However, it's $400 to file per class.  I wish it were free!    

There should be a hotline where we can report these kinds of trademark registration fraud.  UGH! 

Best,

Nancy 

On Friday, April 19, 2024 at 02:18:54 PM EDT, Kevin Grierson <kgrierson at cm.law> wrote:

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
  |

 |
| 

  |

 |
| 
| 
|  |  |
| 

  | 
  757-726-7799
  |
| 

  | 
  866-521-5663
  |
| 

  | 
  kgrierson at cm.law
  |

 |

 |
|  |

 |

 |

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 

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240421/101ada11/attachment.htm>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image004.png
Type: image/png
Size: 394 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240421/101ada11/attachment.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 3100 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240421/101ada11/attachment-0001.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image002.png
Type: image/png
Size: 285 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240421/101ada11/attachment-0002.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image003.png
Type: image/png
Size: 452 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240421/101ada11/attachment-0003.png>