Anyway, on August 3, 2009, Sony Ericsson (one of Nokia’s fiercest competitors), filed two applications for the marks X3 and X4 (Serial Nos. 77795219 and 77795228 respectively).  These applications were filed on an intent-to-use basis and are both for cell phones and related accessories.  I also note that Sony is already the owner of a 2009 federal registration for the mark X1 (Reg. No. 3620481), as well as various other registrations for marks consisting of a single letter and three numbers, including J210, W900, K310, Z530, and many others.  Again, the marketing minds at Sony weren’t exactly working overtime when they came up with these bland and lifeless trademarks.

Well, apparently, Nokia wasn’t too thrilled with Sony attempting to register X1 and X2, as evidenced by its June 21, 2010 filing of a notice of opposition against both applications (which was later amended by Nokia on June 30 to correct some minor errors).  Unlike many oppositions, Nokia’s claims are not based on a likelihood of confusion, descriptiveness, dilution, or deceptiveness.  Nope, Nokia’s claims are based on its belief that Sony’s X3 and X4 marks “lack sufficient distinctiveness to function as a trademark” and, therefore, are barred from registration on the Principal Register.  So, Nokia is basically alleging that Sony’s marks are so pathetically unoriginal and unimaginative that they legally cannot function to identify and distinguish between Sony’s cell phones and those of its many competitors.  Wow, that’s quite the kick in the groin for Sony’s marketing gurus.

So, let me get this straight.  In Nokia’s mind, it is perfectly OK for it to register marks for mobile phones and accessories consisting of a letter followed by two numbers, and Nokia doesn’t seem to have any objection to Sony registering marks for mobile phones and accessories consisting of a letter followed by three numbers, but it simply will not stand for Sony attempting to register marks consisting of a letter followed by one number because they “lack sufficient distinctiveness.”  Seriously, I couldn’t make this stuff up if I tried.  I mean, it’s completely laughable that Nokia actually believes that its N76 and N83 marks are somehow more inherently distinctive and more deserving of registration than Sony’s X3 and X4 marks.  I tell you, if I was a judge on the Trademark Trial and Appeal Board assigned to this nonsense, it would take everything I have not to retire effective immediately.

But wait!  Breaking news:  Motorola attempts to register “M30497354623853762018374473425″ for its highly anticipated new cell phone.  Details on Nokia’s impending challenge to follow.

Anyway, on July 23, 2009, a Kentucky company by the name of Numeritex Displays, Inc. applied to register the mark VERSA-TRAC for “light emitting diode (LED) displays.”  A quick review of Numeritex’s official website indicates that it is in the business of designing, manufacturing, and selling LED signage and message boards for restaurants, schools, churches, and just about any other type of business or organization that would want to display advertising messages or other information about its products/services.  On what appears to be a related website, the VERSA-TRAC is described as a “revolutionary new display product, which utilizes the best in LED technology (available in red or amber displays) to offer users the versatility of both a message center and a price display.  You can program a variety of messages including options for time, date, and temperature.”  I don’t think I’m exaggerating when I say that nobody in the entire universe could possibly believe that specialized spinal surgery instruments are related in any manner to LED advertising message boards, or that Numeritex’s products are affiliated or associated with Carefusion, despite the fact that both trademarks are identical in appearance and sound.

Well, that is except for the folks in charge at Carefusion.  Yep, on April 14, 2010, Carefusion filed an opposition against Numeritex’s application for VERSA-TRAC on the basis of priority and likelihood of confusion.  Some of my favorite allegations from the Notice of Opposition are as follows:

Upon information and belief, Opposer and Applicant are competitors in the marketplace for the sale of pharmaceutical, medical devices and products…

Upon information and belief, Applicant’s VERSA-TRAC goods will be advertised, marketed, promoted, and provided through the same channels of trade and will be advertised in the same types of publications as Opposer’s VERSA-TRAC goods, and sold to the same classes of the purchasing public…

The registration of the VERSA-TRAC mark by the Applicant will cause the purchasing public and those who use or who are familiar with Opposer’s goods to assume, erroneously, and to be confused, misled and/or deceived, that the Applicant’s VERSA-TRAC goods are made by or originate with, are licensed by, endorsed or sponsored by, or are in some other way associated or connected with Opposer, all to Opposer’s great injury and irreparable damage.

If you read the Notice of Opposition in its entirety, Carefusion’s argument is basically that Numeritex’s LED displays could be used in medical devices and products such as the ones manufactured by Carefusion.  Um, what?  While it is true that some medical devices incorporate light emitting diodes (but notably not Carefusion’s VERSA-TRAC product), 10 seconds of research on Numeritex unambiguously reveals that it produces and distributes electronic signage and message boards for businesses and organizations.  Unless there’s suddenly a trend of hospitals using EKG machines and digital thermometers to advertise to their patients upcoming events at the local community center or the price of gas at the filling station down the street, I don’t think Carefusion has much to worry about in the way of consumer confusion.

But that’s not all.  Carefusion’s Notice of Opposition is also based on the premise that its VERSA-TRAC mark is “famous” within the meaning of the federal Anti-Dilution Act and that registration of Numeritex’s identical mark will “dilute the distinctive quality” of Carefusion’s famous mark.  Unfortunately, it appears that Carefusion has not recently reviewed the Anti-Dilution Act set forth in 15 U.S.C. 1125(c), which states that a “famous” mark is one that is “widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.”  I have to tell you, when I think about some of the most famous U.S. trademarks, such as WALMART, DISNEY, COCA-COLA, and MCDONALD’S, my humble opinion is that VERSA-TRAC doesn’t just miss the cut, it’s probably not even in the top 10,000.  The fact is that Carefusion’s mark would only be known by a minuscule percentage of the population, namely spinal surgeons.  It may even be “famous” among those wacky spinal surgeons.  But nobody with a straight face could rationally argue that Carefusion’s VERSA-TRAC mark is widely recognized by the general consuming public of the United States.  Again, except for those in charge of making important legal decisions at Carefusion.

You know, I forgot how fun it is to write about these crazy oppositions.  Expect more doozies soon!

On July 21, 2009, the Omega Psi Phi Fraternity filed an application to register the following trademark for a variety of jewelry products, namely lapel pins, charms, and rings:

For those of you who aren’t familiar with the Omega Psi Phi Fraternity (and I certainly wasn’t until I did some research), it was formed in 1911 at Howard University in Washington, DC.  Currently, there are approximately 750 chapters of the fraternity at colleges and universities throughout the nation.  Furthermore, Omega Psi Phi is already the owner of a federal trademark registration dating back to the year 2000 for OMEGA PSI PHI FRATERNITY for a variety of educational and entertainment services rendered for fraternal members.  So, I think it’s pretty reasonable to assume that the lapel pins, charms, and rings that Omega Psi Phi listed in its application are advertised and distributed primarily (if not exclusively) to the Fraternity’s members and other financial supporters.  I just don’t think too many people outside of Omega Psi Phi would have a strong desire to purchase jewelry featuring the name and Greek letters of a fraternity to which they never belonged or supported.  And, certainly, this type of jewelry is not of the type sold in high-end jewelry stores and boutiques.

If you happen to be a wristwatch connoisseur, you probably have already figured out where this is going.  Yep, Omega SA, the Swiss manufacturer of luxury watches that cost thousands of dollars, filed an opposition against Omega Psi Phi’s trademark application on the basis that the Fraternity’s mark is likely to cause confusion with its prior use and registration of the word OMEGA and the Ω Greek letter.  To be fair, Omega SA is the owner of multiple trademark registrations, including one registration for the following mark dating all the way back to 1894:

As I continued to research this Opposition, I found that Omega SA has also filed oppositions against other trademark applications owned by Omega Psi Phi Fraternity for the marks OMEGA PSI PHI FRATERNITY GRAND CONCLAVE (Serial No. 77354572), OMEGA PSI PHI FRATERNITY (Serial No. 77354564), and a logo that displays the Ω with the other two Greek letters of the Fraternity’s name (Serial No. 76593847).  These oppositions are currently pending and it appears that the parties are engaged in settlement negotiations.  Omega SA has also filed many other oppositions against third parties attempting to register either the word OMEGA or Ω, including another fraternity’s application for OMEGA DELTA PHI (Serial No. 78949191).  In fact, judging by the sheer number of oppositions filed by Omega SA over the past few years (around 45 since 2007), I would probably put the company in the same category as Virgin Enterprises, which files an opposition against any application that includes the word VIRGIN without regard to any other factor.  Hey, at least now I know why Omega SA’s watches aren’t $39.99.

I do not take issue with Omega SA challenging applications for legitimately confusingly similar marks that are used in connection with jewelry products.  Omega SA has been using the OMEGA name and Ω for 150 years and there is no doubt that its trademarks are very well-known among a substantial segment of the population and have valuable goodwill associated with them.  What I do have a problem with, however, is Omega SA bullying a fraternity with which it has coexisted for nearly 100 years, all because the fraternity uses OMEGA and Ω (along with two other Greek letters) in connection with very specific jewelry items that are traditionally worn by members to show an affiliation with the fraternity.  But, unfortunately, the current opposition system allows such abuse without any consequences whatsoever.  Until that changes, Omega SA and other wealthy companies will continue to make it more difficult and costly for smaller businesses and organizations to obtain the benefits and legal presumptions that stem from federal registration of their marks.

Hormel’s opposition to the SPAMROBIN application is based upon its belief that computer software for filtering junk email is “related to the goods and services sold and provided in connection with [Hormel's] SPAM trademark and/or represent a natural zone of expansion for [Hormel] in that such goods and services would travel and/or be promoted through the same channels of trade for sale to, and used by, the same class of purchasers.”

You have got to be kidding.  As anyone with an email address knows, the term “spam” has come to define unsolicited and unwanted junk email sent randomly to thousands of email accounts.  Clearly, the SPAMROBIN mark refers to this type of spam, not Hormel’s gelatinous tinned pig.  There is absolutely no relationship between canned meat and junk email filtering software, the products would generally not be sold in the same type of store or on the same website, and there is no chance that Hormel will be moving into the junk email filtering software business.  Maybe Hormel is just worried that, in blind taste tests, 9 out of 10 people preferred the taste of the SPAMROBIN computer software to Hormel’s SPAM mystery meat.

Needless to say, I would rather read 100 spam email messages every day than be forced to ingest a single can of SPAM processed meat product.  And, on a side note, does anyone know of even one person who actually buys  SPAM?  I bet that the $600 it cost Hormel in government filing fees to challenge the SPAMROBIN application is likely just about equal to the revenues Hormel has earned from the sales of its vile SPAM product over the 70 years it has been in existence.  And that’s not including the hundreds in legal fees Hormel paid its attorneys to prepare and file such garbage.  Undoubtedly, it will now take Hormel at least another seven decades of peddling SPAM to make up that cost.

• BUILD-A-TIGER for “plush and stuffed toys and accessories therefor; clothing for stuffed and plush toys”  (Serial No. 77630189)

• BUILD-A-TIGER for “retail store services and on-line retail store services featuring plush and stuffed toys and clothing and accessories for plush and stuffed toys.”  (Serial No. 77630179)

The Detroit Tigers’ challenge to these applications is based on its belief that BUILD-A-TIGER is likely to confuse consumers into believing that Build-A-Bear’s goods and services “have their origin with [the Detroit Tigers] and/or that such goods and services are approved, endorsed, or sponsored by [the Detroit Tigers] or associated in some way with [the Detroit Tigers].”

Certainly, the Detroit Tigers baseball club (like everyone else) is familiar with the types of products and services offered by the Build-A-Bear company.  For many years, Build-A-Bear has been using its various BUILD-A-BEAR trademarks in connection with a retail store and website that offers consumers the ability to create and customize their own stuffed bears.  Furthermore, Build-A-Bear owns multiple federal trademark registrations for marks that incorporate BUILD-A-BEAR (Registration Nos. 2633892, 2553748, and 3367891, among others).  Quick, someone notify the NFL Chicago Bears that Build-A-Bear is using the generic word “bear” to advertise and sell stuffed bears!

I’m sure that most people would agree that this opposition is nonsensical and frivolous.  Based upon Build-A-Bear’s previous use and registration of its BUILD-A-BEAR trademarks, as well as the recitation of products and services in its pending applications for BUILD-A-TIGER, it’s reasonable to assume that Build-A-Bear intends to use its BUILD-A-TIGER trademarks for essentially the same products and services as those offered under the BUILD-A-BEAR trademarks, except that consumers will be creating and customizing stuffed tigers rather than stuffed bears.  But, apparently, the Detroit Tigers believe that it has exclusive rights to the word “tiger” and can stop Build-A-Bear from using the term to indicate to consumers an essential characteristic of its products and services.  Maybe as part of a settlement agreement, Build-A-Bear can agree to change its trademark from “BUILD-A-TIGER” to “BUILD-A-LargeOrangeCatWithStripesAndSharpTeethThatEnjoysEatingRawFlesh.”  Pretty catchy, huh?  Kids would love that!

Perhaps if the Tigers would stop paying its attorneys hundreds of dollars per hour to pursue far-fetched claims of the type set forth in its opposition against Build-A-Bear’s trademarks applications for BUILD-A-TIGER, it could afford to reduce the cost of its tickets and merchandise and, even more importantly, field a decent team more than once every three decades.