タグ: 米国特許商標庁

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商標登録insideNews: Instagram Challenges Instagem Trademark – Tech

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Instagram filed an opposition to the registration of Market Organization Inc.’s INSTAGEM trademark on Friday before the Trademark Trial and Appeal Board (TTAB), claiming the INSTAGEM trademark will cause consumer confusion and damage Instagram.

情報源: Instagram Challenges Instagem Trademark – Tech

Word Mark INSTAGEM
Goods and Services IC 041. G & S: Video editing
Standard Characters Claimed
Serial Number 88767055
Filing Date January 21, 2020
Current Basis 1B
Original Filing Basis 1B
Published for Opposition June 23, 2020
Owner (APPLICANT) Market Organization Inc.
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE

Ser. no.88767055
Opposition by Instagram
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In re Application No. 88/767,055
Filed: January 21, 2020
Published: June 23, 2020, in the Official Gazette
For: INSTAGEM INSTAGRAM, LLC, Opposer,
vs.
Market Organization, Inc., Applicant.
Opposition No. _____________

NOTICE OF OPPOSITION UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, Virginia 22313-1451

Dear Sir or Madam:
1. Instagram, LLC (“Opposer” or “Instagram”) believes it will be damaged by the registration of the mark INSTAGEM (“Applicant’s Mark”) covered by Application Serial No.88/767,055 (the “Application”), which was filed on January 21, 2020, by Market Organization, Inc.(“Applicant”), and hereby opposes such registration. This Notice of Opposition has been timely filed.

As grounds for its Opposition, Opposer alleges as follows:
2. Instagram is a Delaware limited liability company with its headquarters and principal place of business at 1601 Willow Road, Menlo Park, California 94025.
3. Applicant is, upon information and belief, a New York corporation located at 6 E 45 Street, 20th Floor, New York, New York 10017.
4. Regarding the Application, as published in the Official Gazette dated June 23, 2020, Applicant seeks to register the mark INSTAGEM in International Class 41 for: “Video editing.”
5. Since the launch of its photo sharing and social networking service and software application in October 2010, Instagram has continuously used the trademark INSTAGRAM in interstate commerce in the United States in connection with its goods and services. Reflecting its trademark rights, Instagram owns U.S. registrations and applications for its INSTAGRAM mark,
including the following:
Trademark Reg. No. Reg. Date First Use Date
INSTAGRAM 4146057 5/22/2012 10/6/2010
INSTAGRAM 4756754 6/16/2015 11/1/2013
INSTAGRAM(stylized) 4795634 8/18/2015 5/13/2013
INSTAGRAM 4822600 9/29/2015 10/6/2010
INSTAGRAM 4827509 10/6/2015 10/6/2010
INSTAGRAM 4856047 11/17/2015 10/6/2010
INSTAGRAM 4863594 12/1/2015 10/6/2010
INSTAGRAM 4863595 12/1/2015 10/6/2010
INSTAGRAM(stylized) 5019151 8/9/2016 11/01/2013
INSTAGRAM 5566030 9/18/2018 11/5/2012
INSTAGRAM 5869731 9/24/2019 3/19/2019
These registrations and applications cover a variety of goods and services, including but not limited to the following:
 Providing use of online temporary non-downloadable software for enabling transmission of images and audiovisual and video content;
 Providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data;
 Downloadable and non-downloadable computer software for modifying the appearance and enabling transmission of images, audio-visual and video content;
 Computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information;
 Providing computer, electronic and online databases in the field of entertainment;
 Marketing, advertising and promotion services;
 Telecommunications services, namely electronic transmission of data, messages, graphics, images, videos and information;
 Computer services, namely providing an interactive website featuring technology that allows users to manage their online photograph and social networking accounts;
 Social introduction, networking and dating services; and
 Shopping and payment services.
All of Instagram’s marks featuring the term INSTAGRAM are referred to herein as the “INSTAGRAM Mark.” Attached as Exhibit A are certificates of registration and current TSDR records for U.S. registrations of the INSTAGRAM Mark.
6. The INSTAGRAM Mark is highly distinctive with regard to all of Instagram’s goods and services in connection with which the mark is used.
7. Instagram’s INSTAGRAM Mark has priority over Applicant’s Application, which was filed on January 21, 2020, on a 1(b) “intent to use” filing basis.
8. Applicant’s INSTAGEM Mark creates a similar commercial impression as the INSTAGRAM Mark does.
9. Applicant’s services claimed in its Application are nearly identical to the goods and services offered by Instagram in connection with its INSTAGRAM Mark.
10. Applicant’s Mark is deceptively similar to the INSTAGRAM Mark so as to cause confusion, or to cause mistake or to deceive the public as to the origin of Applicant’s services offeredunder Applicant’s Mark. Specifically, registration of Applicant’s Mark will lead the public to conclude, incorrectly, that Applicant is or has been affiliated or connected with Instagram, and/or that Applicant’s services provided under Applicant’s Mark are, or have been, authorized, sponsored, endorsed, or licensed by Instagram. Issuance of any registration to Applicant for the proposed mark will result in damage to Instagram and the public. Therefore, registration of Applicant’s Mark is prohibited by 15 U.S.C. §1052(d).
11. Moreover, through Instagram’s widespread use of the INSTAGRAM Mark, extensive and continuous media coverage, the high degree of consumer recognition of the INSTAGRAM Mark, Instagram’s enormous and loyal user base, its multiple trademark registrations and pending applications, and other factors, the INSTAGRAM Mark is strong, enjoys widespread recognition among consumers, and has become famous within the meaning of Section 43(a) of the United States Trademark Act, 15 U.S.C. § 1125(c).
12. Applicant’s Mark has caused or is likely to cause dilution of the distinctive quality of the INSTAGRAM Mark and/or harm the reputation of the INSTAGRAM Mark in violation of 15 U.S.C. § 1125(c), to the harm and damage of Instagram and the public.
13. The INSTAGRAM Mark was famous before Applicant filed the Application at issue and before Applicant began using Applicant’s Mark.
14. Therefore, registration of Applicant’s Mark should be refused under 15 U.S.C. §§ 1052 and 1063(a).
15. Registration of Applicant’s Mark would constitute prima facie evidence of the validity of such registration, Applicant’s ownership of Applicant’s Mark, and Applicant’s exclusive right to use the INSTAGEM mark pursuant to the provisions of 15 U.S.C. § 1057(b). Such registration would be a source of damage and injury to Instagram and the public, and would be contrary to the principles of registration set out in 15 U.S.C. §§ 1051 et seq.

WHEREFORE, Instagram prays that this Opposition be sustained, and that registration to Applicant for the mark covered by Application Serial No. 88/767,055, be refused. Please direct all notices, pleadings and process regarding this matter to the below.

Respectfully submitted,
KILPATRICK TOWNSEND & STOCKTON LLP
Dated: July 10, 2020

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商標登録insideNews: Mickelson files trademark for ‘Hit Bombs’ | theScore.com

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Phil Mickelson is looking to cash in on his strategy off the tee by filing a trademark for “Hit Bombs” with the intent of launching a clothing line, according to lawyer Josh Gerben. at @TheMasters hitting BOMBS 💣 and attacking pins. LFG!!! #Lefty pic.twitter.com/yTt0yVJ5tQ— Phil Mickelson (@PhilMickelson) April 13, 2019 Mickelson has spread the word of “hitting bombs” in a number of social media posts since.

情報源: Mickelson files trademark for ‘Hit Bombs’ | theScore.com

Talkin’ Bombs || Phil Mickelson and World Long Drive Champion Kyle Berkshire、4:30
https://youtu.be/QZjWf_ahqpw

商標登録insideNews: Phil Mickelson’s company applies for coffee trademark | espn.com

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商標登録insideNews: Trademark Audits: What Registrants Should Expect – Lexology

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In 2017, the USPTO initiated an aggressive auditing program of U.S. trademark registrations at the time of maintenance filings. The goal of the program is to ensure the accuracy and integrity of the U.S. register by removing or narrowing registrations that include claims beyond the scope of the registrant’s actual use of its mark in U.S. commerce. The Office is on pace to audit 5000 registrations in 2020 so registrants who have not been tagged as yet should be prepared for an audit in the future.

情報源: Trademark Audits: What Registrants Should Expect – Lexology

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商標登録insideNews: USPTO announces COVID-19 Prioritized Examination Program for certain trademark and service mark applications | USPTO

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The United States Patent and Trademark Office (USPTO) today announced a new COVID-19 prioritized examination program for certain trademark and service mark applications.Under this new program, the USPTO will accept petitions to advance the initial examination of applications for marks used to identify qualifying COVID-19 medical products and services. Additionally, the USPTO will waive the fee for such petitions.

情報源: USPTO announces COVID-19 Prioritized Examination Program for certain trademark and service mark applications | USPTO

USPTOで優先的に審査される出願は、COVID-19の予防および/または治療に使用される米国食品医薬品局（FDA）の承認の対象となる製品、或いはCOVID-19の予防および/または治療のための医学的または医学的調査の役務を対象とする必要があります。

商標実務情報・北米, 🏰 商標実務情報・外国, 🇺🇸商標実務情報・米国

米国連邦商標法における団体商標と証明標章

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米国連邦商標法における団体商標と証明標章 米国連邦商標法では、通常の商標の他に、団体商標(Collective Trademark)と証明標章(Certification mark)があります。日本の商標制度にも団体商標 …

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商標登録insideNews: USPTO grants further relief for certain trademark-related fees and deadlines | USPTO

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[商標手続の救済]

Under the CARES Act authority and its existing authority in Trademark and TTAB matters, the USPTO will direct relief to those who need it on a case-by-case basis, as described in the official notice.

情報源: USPTO grants further relief for certain trademark-related fees and deadlines | USPTO

[特許手続の救済]

As stakeholders continue to navigate the effects of the pandemic in various ways, and as more and more of them are resuming operations, the USPTO will again extend certain deadlines.

情報源: USPTO grants further relief for certain patent-related fees and deadlines | USPTO

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商標登録insideNews: U.S. Patent and Trademark Office bolsters protection of common food names | Farm Forum | aberdeennews.com

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ARLINGTON, Va. – The Consortium for Common Food Names (CCFN), U.S. Dairy Export Council (USDEC), National Milk Producers Federation (NMPF), North American Meat Institute (NAMI), National Association of State Departments

情報源: U.S. Patent and Trademark Office bolsters protection of common food names | Farm Forum | aberdeennews.com

Examination Guide 2-20
Marks Including Geographic Wording that Does Not Indicate Geographic Origin of Cheeses and Processed Meats

Examination Guide 2-20, May 2020
Marks Including Geographic Wording that Does Not Indicate Geographic Origin of Cheeses and Processed Meats
May 2020
(USPTO-T-8)

This examination guide sets out the procedures for examining applications for cheeses and processed meats in which the mark includes geographic wording (hereinafter “geosignificant wording”) that does not indicate geographic origin, but otherwise may be a generic designation for such goods. See Trademark Manual of Examining Procedure (TMEP) § 1210.02(b)(iii). The contents of this document do not have the force and effect of law and are not meant to bind the public in any way. This document is intended to provide clarity regarding existing requirements under the law or agency policies. This guidance supersedes any previous United States Patent and Trademark Office guidance on this topic to the extent there are any conflicts.

I. BACKGROUND
Two federal agencies maintain lists of particular cheeses or processed meats for which the producers of such goods must satisfy certain requirements or standards in order to label or market them with the listed common name of the product. Thus, these names cannot be single-source indicators, and inclusion on such lists is strong evidence that the otherwise geo-significant wording is generic for the goods. The U.S. Food and Drug Administration (FDA), responsible for protecting the public health by ensuring the safety of the nation’s food supply, establishes mandatory requirements, known as “standards of identity,” for marketing cheese products under specific common names. These standards of identity relate solely to the production methods and ingredients necessary to label a product with the common name given to that standard. For example, part 133 of title 21, chapter 1, subchapter B (Food for Human Consumption) includes standards of identity for the following types of cheeses: CHEDDAR, EDAM, ROMANO, and PROVOLONE. The U.S. Department of Agriculture (USDA), also responsible for ensuring food safety, establishes standards of identity for labeling of processed meat products under specific common names. For example, USDA regulations part 319 include standards of identity for the following types of processed meat: FRANKFURTER, WIENER, BOLOGNA, and BRAUNSCHWEIGER. In addition to these two federal agencies, an international body, Codex Alimentarius (hereinafter “Codex”), operates within the U.N. Food and Agriculture Organization and the World Health Organization to establish international food standards for, among other things, cheese. Codex standards of identity for cheese include: BRIE, CAMEMBERT, EDAM, GOUDA, and HAVARTI. Because standards of identity relate solely to production methods and ingredients, there is no requirement that the product come from a specific place, even though many of these terms identify a cheese or processed meat that once came only from the place referred to in
the name (e.g., CHEDDAR originated in Cheddar, England; BRIE originated in Brie, France; and BOLOGNA originated in Bologna, Italy). Therefore, such geo-significant terms differ from certification and collective marks of regional origin, which are registrable under Trademark Act § 4, 15. U.S.C. § 1054. Certification and collective marks of regional origin refer to the place the products come from and the quality standards they meet. Standards
of identity are food-labeling requirements intended to prevent consumers from being misled as to what product they are buying.

II. PROCEDURE FOR EXAMINING APPLICATIONS FOR CHEESES AND PROCESSED MEATS
In addition to searching for evidence using traditional sources, when a mark includes geosignificant wording relating to a particular cheese or processed meat, the examining attorney must also conduct research to determine if the wording is a standard of identity for the goods specified in the application, using sources of evidence that are appropriate for the particular goods specified in the application (e.g., the FDA, USDA, and Codex databases). The examining attorney may submit a request to the Trademark Law Library to undertake such research or may personally conduct the research. In either case, the examining attorney must add a Note to the File indicating “standards of identity search” or “Law Library standards of identity search.” Evidence that the particular term is a standard of identity must be included with the Office action. If available, the examining attorney should include additional evidence that shows how the proposed mark would be perceived in the marketplace. Note that if the name of a product appears only on the Codex list, further evidence, such as a dictionary definition or internet evidence of the product’s availability to U.S. consumers, must be included. When warranted by the evidence, the examining attorney must refuse registration or require a disclaimer under § 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), in accordance with current practice as outlined in the TMEP. TMEP §§ 1209.02, 1209.02(a), 1213.03(a). Because inclusion on the FDA or USDA list is strong evidence that the term is generic for the particular cheese or processed meat, when the marks include or consist of such terms, the examining attorney should also advise the applicant that the relevant wording appears to be the generic term for the goods, in accordance with current practice as outlined in TMEP § 1209.02(a) (“If there is strong evidence that the proposed mark is generic, a statement that the subject matter appears to be a generic name for the goods or services should be included in conjunction with the refusal on the ground that the matter is merely descriptive.”). When there is evidence that the accuracy of a product’s compliance with standards of identity is material to purchasing decisions—in other words, the consumer bought the product thinking it was the particular cheese or processed meat named in the mark—a mark including or consisting of such terms used on non-compliant cheeses or processed meats would be deceptive under § 2(a) of the Trademark Act, 15 U.S.C. § 1052(a). Therefore, the examining attorney must require that the applicant amend the identification of goods to include the term. See TMEP §§ 1203.02(a), (d), (e)(i)-(ii), (f)(i). If the name of a standard of identity comprises, in whole or in part, a mark for services that relate to cheese or processed meat, the assigned examining attorney must consult the Office of the Deputy Commissioner for Trademark Examination Policy before taking any action on the application.

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商標登録insideNews: USPTO extends certain patent and trademark deadlines to June 1 | USPTO

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The United States Patent and Trademark Office (USPTO) today announced further extensions to the time allowed to file certain patent and trademark-related documents and to pay certain required fees. These actions are an exercise of temporary authority provided to the USPTO by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) signed by President Trump on March 27.

情報源: USPTO extends certain patent and trademark deadlines to June 1 | USPTO