[E-trademarks] PTO Petition for Cancellation vs, Federal Action to Order PTO to Cancel TM Regn

Mon Mar 4 19:01:24 EST 2024

Dan.

My two cents.

If you file a lawsuit for tm infringement or unfair competition, you have to satisfy the usual provisions regarding venue and personal jurisdiction.
The location of the USPTO (Alexandria, Virginia, not DC) is irrelevant.
The cancellation claim will still be barred by Section 14.
Moreover, it seems to me you will face a serious laches problem as to your two other claims.

JLW

[cid:image001.png at 01DA6E65.B575CF00]

John L. Welch
Counsel
Admitted to Practice: Massachusetts, New York, and Washington, DC
jwelch at WolfGreenfield.com<mailto:jwelch at WolfGreenfield.com>
Tel. 617.646.8285
[cid:image002.jpg at 01DA6E65.B575CF00]<http://thettablog.blogspot.com/>

Wolf, Greenfield & Sacks, P.C.
BOSTON | NEW YORK | WASHINGTON DC

wolfgreenfield.com<https://www.wolfgreenfield.com/>  [cid:image003.png at 01DA6E65.B575CF00] <https://www.linkedin.com/company/wolf-greenfield/>  [cid:image004.png at 01DA6E65.B575CF00] <https://twitter.com/wolfgreenfield>

Please consider the environment before printing this email.

This e-mail message and any attachments may contain confidential or privileged information. If you are not the intended recipient, please notify me immediately by replying to this message and destroy all copies of this message and any attachments. Thank you.

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Paul Supnik via E-trademarks
Sent: Monday, March 4, 2024 1:28 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Paul Supnik <paul at supnik.com>
Subject: Re: [E-trademarks] PTO Petition for Cancellation vs, Federal Action to Order PTO to Cancel TM Regn

Dan,

My understanding is that you cannot file an independent action to cancel in federal court since Section 37 is only available as a remedy in an action involving a registered mark.  So, you might have to also assert a claim of infringement.  Then, I do not know if you can avoid the effect of a declaration which might be filed after you file the lawsuit affecting a registered mark.

Regards,

Paul D. Supnik

[Paul D. Supnik 9454 Wilshire Blvd, Ste 550 Beverly Hills, CA 90212]<https://nam02.safelinks.protection.outlook.com/?url=https%3A%2F%2Fsupnik.com%2F&data=05%7C02%7CJohn.Welch%40wolfgreenfield.com%7C3b5a50d377804470457108dc3c7918cb%7Cb901eaf4094b4541a2d3aaf604290208%7C0%7C0%7C638451738008664450%7CUnknown%7CTWFpbGZsb3d8eyJWIjoiMC4wLjAwMDAiLCJQIjoiV2luMzIiLCJBTiI6Ik1haWwiLCJXVCI6Mn0%3D%7C0%7C%7C%7C&sdata=SoSEYat%2FZT3S09weacyY6rItg1DCb%2Fmadh%2BsYs%2B3McI%3D&reserved=0>

This message, including any attachments, may include privileged or confidential material.  Any distribution or use of this communication by anyone other than the intended recipient(s) is prohibited. If you are not the intended recipient, please notify the sender by replying to this message and then delete it from your system. Thank you.

________________________________
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> on behalf of Boots, Daniel L via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Sent: Monday, March 4, 2024 10:09 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Boots, Daniel L <daniel.boots at dentons.com<mailto:daniel.boots at dentons.com>>
Subject: [E-trademarks] PTO Petition for Cancellation vs, Federal Action to Order PTO to Cancel TM Regn

Carl -  would you please pose this query to the group:

Client wishes to pursue the cancellation of a federal registration for the mark XXXX (generic descriptor) GROUP that it feels is clearly confusing with its extensive family of long-existing XXXX marks for similar (generic descriptor) services. Opponent’s mark registered 5+ years ago but they are yet to file their Sec. 8/15 Declaration with the PTO. Section 14 of the Trademark Act (15 USC 1064) limits the grounds upon which we can raise in a petition to cancel filed with the TTAB if the petition is filed more than five years from the date of registration. This limitation of grounds does not appear to depend on the filing of a §15 affidavit. Are we then forced to file a cancellation action in federal court (akin to an “in rem” cybersquatting action)? And if so, must it be filed in DC or the home district of the opponent (preferably the former!)? Any thoughts would be greatly appreciated!

Dan

Daniel L. Boots

Partner

[D] +1 317 968 5361<tel:+13179685361>

daniel.boots at dentons.com<mailto:daniel.boots at dentons.com>   |   Bio<https://nam02.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.dentons.com%2Fch.aspx%3Femail%3Ddaniel.boots%40dentons.com%26action%3Dbiolink&data=05%7C02%7CJohn.Welch%40wolfgreenfield.com%7C3b5a50d377804470457108dc3c7918cb%7Cb901eaf4094b4541a2d3aaf604290208%7C0%7C0%7C638451738008664450%7CUnknown%7CTWFpbGZsb3d8eyJWIjoiMC4wLjAwMDAiLCJQIjoiV2luMzIiLCJBTiI6Ik1haWwiLCJXVCI6Mn0%3D%7C0%7C%7C%7C&sdata=8M6UifQiTrjkcI9ZjLpAl3X8ZSrGVgsBwa%2ByNLQedY0%3D&reserved=0>   |   Website<https://nam02.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.dentons.com%2F&data=05%7C02%7CJohn.Welch%40wolfgreenfield.com%7C3b5a50d377804470457108dc3c7918cb%7Cb901eaf4094b4541a2d3aaf604290208%7C0%7C0%7C638451738008664450%7CUnknown%7CTWFpbGZsb3d8eyJWIjoiMC4wLjAwMDAiLCJQIjoiV2luMzIiLCJBTiI6Ik1haWwiLCJXVCI6Mn0%3D%7C0%7C%7C%7C&sdata=joRYPNxBdojVXwNIbEm%2FhN8YndLkXdy3a9aAqzLHluY%3D&reserved=0>

Dentons Bingham Greenebaum LLP | 2700 Market Tower, 10 West Market Street, Indianapolis, IN 46204

[Logo]

Our Legacy Firms<https://nam02.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.dentons.com%2Fen%2Fabout-dentons%2Four-combination-history&data=05%7C02%7CJohn.Welch%40wolfgreenfield.com%7C3b5a50d377804470457108dc3c7918cb%7Cb901eaf4094b4541a2d3aaf604290208%7C0%7C0%7C638451738008664450%7CUnknown%7CTWFpbGZsb3d8eyJWIjoiMC4wLjAwMDAiLCJQIjoiV2luMzIiLCJBTiI6Ik1haWwiLCJXVCI6Mn0%3D%7C0%7C%7C%7C&sdata=cvdRNfE0D0A8BPp8CsNTTFpWnFkNQ9S4ptrVIqIPrrw%3D&reserved=0>   |   Client Experience (CX)<https://nam02.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.dentons.com%2Fen%2Fclient-experience&data=05%7C02%7CJohn.Welch%40wolfgreenfield.com%7C3b5a50d377804470457108dc3c7918cb%7Cb901eaf4094b4541a2d3aaf604290208%7C0%7C0%7C638451738008664450%7CUnknown%7CTWFpbGZsb3d8eyJWIjoiMC4wLjAwMDAiLCJQIjoiV2luMzIiLCJBTiI6Ik1haWwiLCJXVCI6Mn0%3D%7C0%7C%7C%7C&sdata=7BAjaQbklmXz%2Fu0uh3sCN7G2E6xTmZMD9fJA41XfUBU%3D&reserved=0>

Dentons is a global legal practice providing client services worldwide through its member firms and affiliates. This email may be confidential and protected by legal privilege. If you are not the intended recipient, disclosure, copying, distribution and use are prohibited; please notify us immediately and delete this copy from your system. Please see dentons.com for Legal Notices.

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> On Behalf Of Ken Boone via E-trademarks
Sent: Monday, March 4, 2024 11:54 AM
To: E-Trademarks at oppedahl-lists.com<mailto:E-Trademarks at oppedahl-lists.com>
Cc: Ken Boone <boondogles at hotmail.com<mailto:boondogles at hotmail.com>>
Subject: [E-trademarks] A "the mark consists" Search Curiosity

[WARNING: EXTERNAL SENDER]

________________________________

The search WD: "the mark consists" AND LD:true AND FD:[* TO 20221231] retrieves a single pending trademark with the drawing

[Image for 97681714, select for more details]

Curiously, this 17 November 2022 application (approaching 16 months old) has yet to be assigned to an examining attorney.  Why?  Just guessing, but maybe Pre-Exam set this application aside for review by an attorney as a likely informal application (as the drawing does not resemble any portion of the specimen provided by my quick review).  There is only a single entry in the prosecution history, namely NEW APPLICATION ENTERED dated 4 days following the filing date.  (More typically, a second NEW APPLICATION OFFICE SUPPLIED DATA ENTERED prosecution history entry is added when Pre-Exam has performed their processing.)  This is NOT a pro se application, though I only see 8 total trademarks by that attorney of record.  (The good news is that this is the only "the mark consists" wordmark hit over 14 month old.)

My first question:  Is this an informal application?  Alternatively, could the filer submit a preliminary amendment with Princess Egypt Closet (or some other phrase occurring in the specimen provided) as the word mark for a standard character drawing?  If the latter, wouldn't the filing date have to be amended to the date the amended drawing was received at the USPTO?  (No reply expected.)

My usual follow-up question:  How many other new applications filed prior to 1 January 2023 (i.e., now over 14 months old) have yet to be assigned to an examining attorney for examination?

Are aware of a search on the new trademark search system that answers that question?

The two solutions that I have mentioned before: (1) add the prosecution histories to trademark search and (2) add the TSDR status to trademark search whenever a trademark is updated on trademark search, versus the current SA - Status field that is NOT displayed and whose exact content is unknown. (In this case, it would be nice to search the status new application awaiting assignment to an examining attorney for a particular filing date range to find other older applications yet to be assigned to an examining attorney for examination.)

As it happens, I have a candidate SA - Status field search that appears to retrieve all live applications with the new application awaiting assignment to an examining attorney status.  Today, that search retrieves 381,616 pending trademarks.  Restricting those hits to applications filed prior to 1 January 2023, that search retrieves 13,908 new applications over 14 months old that have not been assigned to a USPTO examining attorney for examination.  Sorry, but I'm still reviewing those 13,908 applications to verify that each has the new application awaiting assignment to an examining attorney status on TSDR, but here are the 15 oldest applications retrieved by my search.

#

SN

FD

WM

Comment

1

90202945

09/23/20

FAT ALBERT

Attorney Name: Mary R. Bonzagni

2

90230047

10/01/20

CHUCKLECIDE

Correspondent e-mail: Legal at theblitzdesign.com<mailto:Legal at theblitzdesign.com>

3

90230467

10/01/20

AFFAIRE BIKINIS

Correspondent e-mail: Legal at theblitzdesign.com<mailto:Legal at theblitzdesign.com>

4

90230590

10/01/20

IGNITE

Correspondent e-mail: Legal at theblitzdesign.com<mailto:Legal at theblitzdesign.com>

5

90230860

10/01/20

I.ANDROID.LIVE FREQUENCY BASED MUSIC

Correspondent e-mail: Legal at theblitzdesign.com<mailto:Legal at theblitzdesign.com>

6

90231937

10/02/20

TMC TERRA METALS CORP.

Correspondent e-mail: Legal at theblitzdesign.com<mailto:Legal at theblitzdesign.com>

7

90235170

10/05/20

M MYCHMAR

Correspondent e-mail: Legal at theblitzdesign.com<mailto:Legal at theblitzdesign.com>

8

90235341

10/05/20

L..O. QUEINT DEFINED FASHION

Correspondent e-mail: Legal at theblitzdesign.com<mailto:Legal at theblitzdesign.com>

9

90235429

10/05/20

MINDFUL LUNATIC

Correspondent e-mail: Legal at theblitzdesign.com<mailto:Legal at theblitzdesign.com>

10

90235569

10/05/20

BOOKGASM

Correspondent e-mail: Legal at theblitzdesign.com<mailto:Legal at theblitzdesign.com>

11

90237546

10/06/20

SPA BEAUTY

Correspondent e-mail: Legal at theblitzdesign.com<mailto:Legal at theblitzdesign.com>

12

90238108

10/06/20

SPA BEAUTY NYC

Correspondent e-mail: Legal at theblitzdesign.com<mailto:Legal at theblitzdesign.com>

13

90238486

10/06/20

NEW YORK PODIATRY GROUP

Correspondent e-mail: tyler.ross at designproficient.com<mailto:tyler.ross at designproficient.com>

14

90239836

10/07/20

HEAVENLY VOICE GLOBAL MINISTRIES.

Correspondent e-mail: Legal at theblitzdesign.com<mailto:Legal at theblitzdesign.com>

15

90239912

10/07/20

ENTREPRENEUR CONNECTIONS NETWORK

Correspondent e-mail: tyler.ross at designproficient.com<mailto:tyler.ross at designproficient.com>

Hmmm ... perhaps I should generate a more random sample of those 13,908 new applications over 14 months old that have not been assigned to a USPTO examining attorney for examination.  Stay tuned.

Happy trademarking,

Ken Boone

PS - Below, I alerted the USPTO of another 2022 application with the new application awaiting assignment to an examining attorney status on TSDR that also lacks the second NEW APPLICATION OFFICE SUPPLIED DATA ENTERED prosecution history entry.  I intentionally did a copy/paste of status information from TSDR - that the formatting did go sideways, emphasizing the need for a full record display option in the new Trademark Search System.  Alas, nothing has happened with this JUST BE FEARLESS APPAREL application since I alerted the USPTO of the incomplete processing by Pre-Exam.  So it goes.

PPS - Just for fun, try the following search:  GS:"I am not selling anything - just want ownership of the phrase"

1 results for GS:"I am not selling anything - just want ownership of the phrase"

________________________________

From: Ken Boone <boondogles at hotmail.com<mailto:boondogles at hotmail.com>>

Sent: Wednesday, October 25, 2023 3:45 PM
To: TMFeedback <tmfeedback at uspto.gov<mailto:tmfeedback at uspto.gov>>
Subject: 97631882 - JUST BE FEARLESS APPAREL - Filed 13 Oct 2022 - No Valid Mark Drawing Code - Awaiting Examinating Attorney

Dear USPTO,

The subject application is over a year old and still has not been assigned to an examining attorney, perhaps because it still does not have a valid mark drawing code.  It looks like this application has been sitting idle in New Application Processing since 31 October 2022 (the status date).  It is my theory that without a valid mark drawing code, automated processing will NOT assign this application to an examining attorney.  Perhaps someone at the USPTO can shove this application forward by providing a valid mark drawing code (and a few design search codes) to help this application progress to examination?

Generated on:

This page was generated by TSDR on 2023-10-25 16:33:16 EDT

Mark:

JUST BE FEARLESS APPAREL

[Trademark image]

US Serial Number:

97631882

Application Filing Date:

Oct. 13, 2022

Filed as TEAS Plus:

Yes

Currently TEAS Plus:

Yes

Register:

Principal

Mark Type:

Trademark

TM5 Common Status Descriptor:

[TM5 Common Status image]

LIVE/APPLICATION/Awaiting Examination

The trademark application has been accepted by the Office (has met the minimum filing requirements) and has not yet been assigned to an examiner.

Status:

New application awaiting assignment to an examining attorney. See current trademark processing wait times <https://www.uspto.gov/dashboard/trademarks/application-timeline.html> for more information.

Status Date:

Oct. 31, 2022

Mark Information

Mark Literal Elements:

JUST BE FEARLESS APPAREL

Standard Character Claim:

No

Mark Drawing Type:

-

Description of Mark:

The mark consists of just be fearless apparel color all black letters.

Color(s) Claimed:

Color is not claimed as a feature of the mark.

Goods and Services

Basis Information (Case Level)

Current Owner(s) Information

Attorney/Correspondence Information

Prosecution History

TM Staff and Location Information

TM Staff Information - None

File Location

Current Location:

NEW APPLICATION PROCESSING

Date in Location:

Oct. 31, 2022

Assignment Abstract Of Title Information - Click to Load

Proceedings - Click to Load

Hope this helps,

Ken Boone

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240305/d6188b6e/attachment.htm>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 1575 bytes
Desc: image001.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240305/d6188b6e/attachment.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image002.jpg
Type: image/jpeg
Size: 23449 bytes
Desc: image002.jpg
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240305/d6188b6e/attachment.jpg>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image003.png
Type: image/png
Size: 590 bytes
Desc: image003.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240305/d6188b6e/attachment-0001.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image004.png
Type: image/png
Size: 735 bytes
Desc: image004.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240305/d6188b6e/attachment-0002.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image005.png
Type: image/png
Size: 108429 bytes
Desc: image005.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240305/d6188b6e/attachment-0003.png>