New & Notable TTAB Oppositions and Cancellation Filings: The Week of February 2nd

By Josh Gerben, Esq.

This week’s new and noteworthy Trademark Trial & Appeal Board oppositions and cancellations were highlighted by Staples’s (the office store chain) claim that an application for ‘STAPLE’ (for a brand of vaporizers and e-cigarettes) would cause a likelihood of confusion and dilution of its STAPLES mark. There were also several proceedings involving design marks that could test the scope of protection for some stylized marks.

STAPLES (the office store) Files a Notice of Opposition Against STAPLE for E-Cigarettes

Office supply giant Staples filed a notice of opposition against an e-cigarette and vaporizer company’s STAPLE mark for “smokeless cigar vaporizer pipes; smokeless cigarette vaporizer pipe.” In its opposition, Staples listed dozens of federal and common law trademarks owned by Staples and claimed that the applicant’s use of STAPLE on smokeless pipes was: (1) likely to cause confusion; (2) will cause dilution by blurring; and (3) will cause dilution by tarnishment. While the likelihood of consumers actually being confused here seems remote, the main question brought up by this proceeding is whether or not the STAPLES mark is “famous” (in trademark terms)?  If the STAPLES mark is considered “famous”, then it would be afforded a much broader level of protection than a non-famous trademark (perhaps enough to get this claim to stick).  Not to mention, perhaps STAPLES is going more on the offensive if it does indeed complete its merger with Office Max.   January 4, 2015 – Link to Proceeding

BLUE CROSS Opposes “Shield” Mark for Banking Services

Blue Cross Blue Shield filed an opposition against a Southern African bank’s STANDARD WEALTH design mark. BlueCross BlueShield owns several trademarks featuring a shield for, among other services, underwriting for healthcare financing.  January 2, 2015 – Link to Proceedings

3M Files Opposition Against Michelin Over the Letter “M”

3M opposed Michelin’s three applications for a stylized “M” design mark for various automobile accessories and cleaning solutions. The designs are different patterns of dozens of tiny M’s. 3M owns the 3M mark for household, electronic and automobile cleaning solutions. January 2, 2015 – Link to Proceedings

Does the MLS still own rights in defunct Miami Fusion FC team mark?

The MLS filed an opposition against a company attempting to trademark MIAMI FUSION FC-formative marks. The MLS Miami Fusion team was shut down due to lack of financing several years ago, following a season in which the team won the MLS Cup. It will be interesting if the MLS can avoid a claim that it abandoned the mark. January 2, 2015 –  Link to Proceeding

Boy Scouts Seek Cancellation of Scout Mark on Supplemental Register

The Boy Scouts filed a cancellation of the mark FAMILY SCOUTS, which is on the supplemental register. It is rare to see a trademark owner file a cancellation for a mark on the supplemental register, instead of just waiting until the registrant tried to assert a 2(f) claim. January 2, 2015 – Link to Proceeding

Owners of Stylized Designs File Oppositions Against Competitors

Sexy v. Sexy Beast

Owner of the SEXY design mark for wine filed an opposition against defendant’s SEXY BEAST standard word mark for wine. The use of stylized text and color will severely limit the scope of the Opposer’s mark. January 4, 2015 – Link to Proceeding

Combat v. Combat Fuel

Similarly, the owner of stylized mark COMBAT for nutritional supplements filed a notice of oppositions against COMBAT FUEL. January 4, 2015 – Link to Proceeding

The Estate of Johnny Cash Files Opposition Against JOHNNY ROCK AND ROLL Mark

The Estate of the Man in Black, Johnny Cash filed a trademark opposition against the mark JOHNNY ROCK AND ROLL for apparel. January 4, 2015 – Link to Proceeding

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.