The Glad Products Company (“Glad Products”) has been using the trademark GLAD since 1962 in connection with the advertising and sale of plastic bags.  If you walk down one of the 25 aisles at your local Walmart (don’t ask me which one), you’ll see that Glad Products offers all kinds of plastic bags for household use, including trash bags, food storage bags, and freezer bags.  Unless you’ve boycotted television over the past twelve years, you are undoubtedly familiar with the DON’T GET MAD GET GLAD slogan featured on many of Glad Products’ commercials.  You know, the ones where someone picks up a generic trash bag and the bottom splits, causing a gigantic mess all over the clean kitchen floor.  I don’t know about you, but I’ve been using generic trash bags for the better part of my adult life and I can’t say that I’ve ever experienced such a breakage.  So, I would encourage everyone out there to save a few bucks a year and purchase the cheapest garbage bags you can possibly find.  Trust me, your social standing with the neighbors and the garbage man will not suffer.

Of course, Glad Products has taken all of the necessary steps to federally protect its GLAD trademark.  Its earliest federal trademark registration for GLAD dates back almost five decades and is for “plastic bags.”  Over the years, Glad Products has expanded its use of GLAD for a wide variety of plastic household products, such as rigid food containers, plastic wrap, drinking straws, and plastic ovenware.  As the GLAD line of products grew, Glad Products obtained additional trademark registrations to cover these items.  My research indicates that Glad Products owns at least a dozen active trademark registrations that incorporate the word GLAD, many of which have been in existence for quite awhile.  Because millions of Americans are familiar with the GLAD trademark and the products with which the trademark is used, I don’t think it’s going too far out on a limb to say that the mark is “famous” and entitled to a broad spectrum of protection.

But, it appears that such fame has seriously affected the judgment of the folks in charge at Glad Products.  Trans Western Polymers, Inc. (“Trans Western”) is a competitor of Glad Products.  According to its website, Trans Western was founded in 1983 and is primarily a manufacturer and distributor of plastic bags and plastic cutlery.  On March 9, 2011, Trans Western filed a federal trademark application for the mark IRONCLAD for “plastic food storage bags for household use” and “plastic trash bags.”  The trademark examining attorney reviewed the application and allowed it to proceed through the registration process without even mentioning any of the registered trademarks owned by Glad Products.  However, on January 9, 2012, Glad Products filed an opposition against Trans Western’s trademark application, thereby stalling the registration of the IRONCLAD trademark.

In the notice of opposition, Glad Products alleges five different bases for challenging Trans Western’s trademark application for IRONCLAD, all of which seem pretty laughable to me.  First, Glad Products alleges that IRONCLAD is “confusingly similar to Opposer’s GLAD Marks in sight, sound, connotation and commercial impression” and will deceive consumers into believing that IRONCLAD plastic bags are manufactured by Glad Products.  Hmmmm, how stupid does Glad Products think the American public is?  Although there may be a slight resemblance in sound between the marks, they otherwise could not be more different.  I think the good people at Glad Products should crack open a dictionary because the “connotation and commercial impression” of GLAD and IRONCLAD are completely distinct from one another.  Their meanings are completely unrelated.  They are not opposites nor synonyms.  In fact, I’m not sure I’ve ever seen the two words in the same sentence before I wrote this article.  Absolutely ridiculous.

The second ground for opposition is Glad Products’ claim that IRONCLAD will “dilute the strength and value” of its famous GLAD trademarks.  I’m not exactly sure how that could occur since there’s clearly nothing inherent about the IRONCLAD mark that would tend to affect the ability of the GLAD trademarks to function as unique source identifiers for plastic bags.  And IRONCLAD certainly doesn’t tarnish the GLAD marks or the GLAD line of products.  So, again, I’m at a loss as to what Glad Products is talking about.

Third, Glad Products alleges that IRONCLAD is misdescriptive and not entitled to registration because consumers are “likely to believe that [Trans Western's] goods contain iron or are coated with iron.”  Ummmm, what??  Who in this entire world would believe that a trash bag or food storage bag would be coated with iron?  Seriously, this just illustrates how little respect Glad Products has for the intellectual capabilities of the very people to whom they sell their products.  If you’re not insulted, you should be.

Next, Glad Products claims that the specimen submitted with Trans Western’s application did not show use of the IRONCLAD trademark.  The specimen consists of a photograph of a box of freezer bags that displays the trademark as IRON-CLAD (rather than IRONCLAD).  So, although Glad Products might technically have a point, Trans Western could simply amend its application to display the mark as IRON-CLAD and all would be fixed.  No problem.

Finally, Glad Products claims that Trans Western’s IRONCLAD mark is not entitled to registration because Trans Western has misused the ® symbol.  Again, technically Glad Products is correct.  The specimen shows IRONCLAD with a ® being used in connection with freezer bags even though Trans Western does not own a federal registration for IRONCLAD for freezer bags.  But, again, this is not going to prevent the registration of Trans Western’s mark.  It’s just nonsense.

But here’s the kicker.  Trans Western already owns an active federal trademark registration for IRONCLAD for “plastic trash bags.”  This registration dates back to 1983 and has coexisted with the original GLAD registration for almost 30 years.  Assuming Trans Western has been continuously using the IRONCLAD trademark during that time without any substantial period of non-use, this fact exponentially raises the ridiculousness of this trademark opposition.  How can Glad Products with a straight face claim likelihood of confusion, dilution, and misdescriptiveness after all these years?  If there truly has been 30 years of coexistence, it is ludicrous.  If not, the opposition still lacks merit in the humble opinion of this trademark attorney.

I’d love to hear your opinion.  Feel free to get mad, but I still recommend you don’t get Glad.

This week’s ridiculous trademark opposition deserves a giant “Ho! Ho! Ho!” for its absolute stupidity.  If you’ve ever eaten canned or frozen vegetable in your lifetime (perhaps under duress), you are undoubtedly familiar with the products sold by General Mills under the GREEN GIANT trademark.  Since at least as early as 1925, General Mills has been convincing Americans to purchase GREEN GIANT vegetables despite the fact that they are significantly more expensive than almost every other brand of vegetable on the supermarket shelf.  I guess it must be that sissy, toga-wearing version of the Incredible Hulk that appeals to a particular segment of the American public because there’s no discernible difference between GREEN GIANT canned peas and those sold at your local dollar store.

Not surprisingly, General Mills owns approximately 15 federal trademark registrations for the GREEN GIANT mark, all of which are for vegetables and related food items.  According to the Green Giant website, the name was first used with the introduction of an unusually large pea, but as we all know, use of the GREEN GIANT mark has expanded to include all kinds of vegetables and vegetable blends over the years.  It’s oldest registrations date back to 1952 and the GREEN GIANT trademark has been in continuous use for the past 85 years or so.

Now, on August 26, 2010, a company by the name of Greenliant LLC filed a trademark application seeking federal registration of the mark GREENLIANT for the following products:

Integrated circuits; integrated circuit modules sold as a component of electronic devices for secure data storage, wireless communication and Internet computing, and instruction manuals sold as a unit therewith; computer hardware and peripherals; semiconductors; flash microcontrollers; flash memory cards for digital cameras; remote controls for TVs, CD and DVD players, audio-video receivers, personal stereos, VCRs and stereo receivers and tuners; televisions; DVD players; CD players; audio-video receivers; personal stereos; stereo receivers and tuners; VCRs; cable television converters; semiconductor storage devices for storage and backup of electronic data; motherboards; cellular phones; microcontrollers; automotive entertainment and communication devices, namely, apparatus for recording, transmission or reproduction of sound and images; blank electronic storage media

Greenliant’s website describes itself as being “dedicated to developing energy-efficient, highly reliable and secure storage solutions for the embedded system, data center and mobile Internet markets.”  Although Greenliant filed its trademark application on an intent-to-use basis, it appears from the website that the GREENLIANT mark is already in use in connection with solid-state storage drives, flash memory, and NAND controllers.  Admittedly, I have no experience with Greenliant’s products, but I’m sure they’re very tasty indeed, especially with some cheese sauce drizzled over them.

What’s that?  You’re telling me that Greenliant’s products aren’t edible?  They aren’t grown on a farm?  They would likely kill you if ingested in mass quantities?  Well, it probably would have been helpful for someone to have explained to General Mills the differences between vegetables and computer memory prior to it filing an opposition against Greenliant’s application for GREENLIANT a few weeks ago.  That’s right, General Mills has opposed Greenliant’s application on the basis of likelihood of confusion and on the basis that it is likely to dilute the distinctive quality of the “famous” GREEN GIANT trademark.  One thing I find particularly amusing in the Notice of Opposition is that General Mills contends that, in addition to vegetables, it has used the GREEN GIANT mark in connection with USB flash drives and actually attached a photograph of a flash drive prominently displaying the GREEN GIANT trademark as shown below:

Of course, this USB flash drive is clearly nothing more than a fancy promotional item that advertises the GREENT GIANT food products produced by General Mills.  I mean, I could easily hire a company to print “YourTrademarkAttorney.com” on flash drives as well, but that doesn’t mean I’m in the business of selling flash drives or that I have expanded my trademark rights to cover flash drives.  Rather, I am simply advertising my trademark legal services via the distribution of flash drives to potential clients.  Even so, I wonder if the Green Giant flash drive goes better with green beans or spinach.  Either way, it’s probably going to need a little salt.

So, what do you think?  Is this opposition a GIANT waste of time and money, or does General Mills have a case?  Drop a comment to let me know.

On July 21, 2009, an insurance company by the name of Guard Insurance Group filed a trademark application seeking to register the mark shown below for “underwriting services for property, casualty, accident and health insurance, excluding insurance underwriting in the field of professional liability and directors and officers liability”:

As explained on its website, Guard provides a wide range of commercial property and casualty insurance products for small and medium-sized businesses.  One of those products is commercial umbrella insurance, and as you can see in the lower-right portion of the trademark, Guard has incorporated a highly stylized depiction of an umbrella within its overall mark (which honestly looks more to me like a mushroom than an umbrella).

Well, just this past week, The Travelers Indemnity Company (which is known by most people as simply “Travelers”), filed an opposition against Guard’s trademark application on the basis that it is likely to cause confusion with the following trademarks for which Travelers owns federal registrations:

I don’t know about you, but I think Travelers has driven off a cliff in bringing this ridiculous opposition.  Granted, Travelers has been using its umbrella logo for 50 years in connection with insurance services and the logo has certainly become well-recognized by consumers throughout the United States.  Heck, I might even be on board with Travelers’ allegation of likelihood of confusion if the umbrella in Guard’s mark was significantly more prominent and even looked like an umbrella rather than a fungus.  But, as it stands, when the marks are compared in their entireties (which is what’s required under the law), I would bet a serious amount of dough that 99% of Americans would agree that Guard’s trademark and Travelers’ trademarks look nothing alike and have very distinct commercial impressions.

But, as you might expect, Guard is not the first to have its trademark application opposed by Travelers.  Over the years, Travelers has filed oppositions against many applications for trademarks that include an umbrella design, some of which are not even for products or services related to insurance.  For example, Travelers has challenged applications for:

In addition, Travelers opposed an application for the mark GOT UMBRELLA? that was filed for “insurance brokerage in the field of auto, home, and business.”  Even though the owner of the trademark application expressly disclaimed exclusive rights to the word “UMBRELLA” (since the term is clearly generic when used in connection with providing umbrella insurance coverage), that didn’t stop Travelers from challenging the application and getting a default judgement.

So what’s next?  Travelers trying to stop an umbrella manufacturer from using the word “umbrella” or an umbrella logo as part of its trademark?  Requesting that Rihanna issue a disclaimer that she’s not referring to purchasing insurance in her very generous musical offer to “stand under my umbrella?”  Soon, you’ll need Travelers’ permission to even own an umbrella and you’ll pay a licensing fee every time you use it.

If that’s the case, I think I’ll stick with a raincoat.

Before I begin this week’s post, I must issue a disclaimer.  I am not a Best Buy fan.  I try to stay away from Best Buy unless it actually has the best price on whatever electronic gadget I’m looking to purchase (which is rarely).  Seriously, I wonder if its federal trademark registrations for BEST BUY can be canceled on the basis that the mark is merely deceptively misdescriptive?

Anyway, I’m sure all of you have had the misfortune of visiting a Best Buy or, at the very least, seeing a Best Buy commercial on TV.  If so, you will undoubtedly be familiar with the yellow price tag logo depicted in the above photo.  Best Buy first adopted the price tag logo in 1989 and has been using it throughout its retail stores and website ever since.  I don’t think there’s any question that the yellow price tag logo is very well-recognized by the general consuming public and that it’s strongly associated with Best Buy.

Not surprisingly, Best Buy is the owner of various trademark registrations for marks that incorporate the price tag logo, including:

Now, over two decades later, here comes a Montana corporation by the name of UFS Franchising, Inc. (“UFS”).   On May 6, 2010, UFS applied to federally register the following trademark for “retail furniture stores”:

According to its website, UFS operates two retail stores in Billings, Montana that purchase and sell used furniture.  Both locations have been open for several years, but it appears from the trademark application that the hand tag logo was only recently adopted at the beginning of 2010.

Well, apparently Best Buy didn’t much care for the UFS logo as evidenced by the opposition it filed on the basis of (1) priority and likelihood of confusion, and (2) dilution of a “famous” trademark.  Best Buy alleges in its Notice of Opposition that consumers will be deceived into believing that the services offered by UFS are “sponsored, endorsed, or approved by Best Buy” and that the UFS logo “will dilute the distinctive quality” of Best Buy’s registered price tag trademarks.

As soon as I came across this opposition, I got a funny image in my head of some hopelessly confused moron walking around a UFS store for ten minutes with a Best Buy circular in hand.  Frustrated, he locates a clerk and asks whether that 60 inch Samsung HD plasma television advertised for $999 is still in stock.  “Um, sir, we are a @!#$% used furniture store.  See all the furniture?  Best Buy is four miles down the road.  I swear, they don’t pay me enough to deal with idiots like yourself.”

But UFS is not the first business Best Buy has targeted.  In 2010 alone, Best Buy filed oppositions against the following five trademarks, all of which include a hand tag or price tag logo:

I’ll let you decide if Best Buy is being a trademark bully and asserting rights it really doesn’t have.  Although I personally find Best Buy’s actions to be unnecessarily aggressive and heavy-handed, I’m open to having my mind changed if a UFS employee confirms to me that customers have actually been searching for the latest Justin Bieber CD or inquiring as to how much it costs for the Geek Squad to assemble a desk.

As I was browsing through the records of the Trademark Trial and Appeal Board this afternoon, I came across a trademark opposition so ridiculous that I thought it was filed by mistake.  Let’s see if you agree.

On February 10, 2010, a company located in Atlanta called FB Goods filed a trademark application seeking registration of the mark DELIA’S for “sausages.”  According to the application, the DELIA’S trademark identifies Delia Champion, the restaurateur and chef who started the Georgia-based Flying Biscuit Cafe chain.  According to a recent article I located online, Ms. Champion and her business partner are planning to open a restaurant called “Delia’s Chicken Sausage Stand,” which will primarily feature menu items consisting of chicken sausage, such as chicken sausage breakfast burritos and chicken sausage hoagie sandwiches with cheese and chili.  Needless to say, I have already finalized my travel plans to Atlanta and have scheduled an appointment with a cardiologist for when I return.  Of course, maybe it’s not that bad for you.  It is chicken after all!

All was looking good for FB Goods until a Switzerland corporation by the name of Molinos IP filed an opposition against the DELIA’S trademark application on January 7, 2011.  According to the notice of opposition, Molinos is the owner of a 2003 federal trademark registration for NATURE’S IDEAL for “edible oils and fats” and “meats in general.”  In the opposition, Molinos alleges that DELIA’S is “likely to cause confusion, mistake, or deception among consumers” because it is “visually and aurally very similar to” its NATURE’S IDEAL mark and will be used in connection with identical or closely related products.

Oh come on!  This opposition has about as much merit as a chicken sausage has pork.  First, there is absolutely nothing similar between DELIA’S and NATURE’S IDEAL in terms of appearance or sound.  I mean, you would really have to pick these two marks apart to find any significant resemblance.  In addition, the commercial impression of DELIA’S and NATURE’S IDEAL is completely different.  DELIA’S is obviously a woman’s name, while NATURE’S IDEAL is a suggestive phrase that connotes purity and freshness.  So, I really don’t have the foggiest idea what Molinos is talking about.

I also would like to note that a cursory search of the Trademark Office’s records revealed approximately 700 active registrations and pending applications for marks used in connection with food and beverage products that incorporate the word “nature,” as well as another 33 that include the word “ideal.”  Yet, Molinos decides to pursue an opposition against an application for DELIA’S while seemingly ignoring the hundreds of others that actually might be problematic.  So, Molinos’ NATURE’S IDEAL mark can coexist with BAKER’S IDEAL (Reg. No. 1359458), NATURE’S SELECT (Reg. No. 3111870), NATURE’S PREMIUM (Reg. No. 3555437), NATURE’S PLACE (Reg. No. 2204040), NATURE’S MEADOW (Reg. No. 3212365), and NATURE’S TOUCH (Reg. No. 3685774) but not with DELIA’S.  Seriously, I must be living in an alternate universe.

What do you think?  Am I delusional or is it Molinos?  Drop a comment and let me know what you think.  I’ll just be here chowing a few Johnsonville (not chicken) sausages while watching the NFL playoffs.

My Ridiculous Trademark Opposition of the Week series is revived thanks to the pharmacy/drug store that somehow manages to thrive on every street corner in America despite being wildly expensive and having shoddier service than almost any other retail outlet known to man.  Yes, I’m talking about good old ubiquitous Walgreens, which is apparently everyone’s favorite place to shop judging by the sheer number of stores located across the nation.  Seriously, there are over 35 Walgreens within a 15 mile radius from my house.  I guess there must be a lot of people out there who enjoy spending at least 10% more than they would for the same products found at Walmart, Target, or Kmart.  Maybe they just enjoy maneuvering through the cramped aisles while searching for this year’s new Chia Pet or whatever “As Seen on TV” crap they saw on TV.

Anyway, Walgreens owns a trademark registration for the script version of its WALGREENS mark (see photograph of store above), as well as a registration for the stylized W by itself.  Both of these registrations are for “retail drug store and general consumer merchandise services.”  I am assuming that all of you have been inside a Walgreens before, but in the event you live on the top of Mount Rushmore (a “coming soon” location), go take a look at Walgreens’ website.

Now, if you happen to be from the Northeast, you may be familiar with a regional grocery store chain called Wegmans.  Wegmans would be considered by most to be a high-end supermarket that features everyday grocery items, but is better known for its ready-prepared foods, high quality produce and meats, and exotic niche products that aren’t offered in a typical supermarket (not to mention a Walgreens).  The first Wegmans store opened in 1930 in Rochester, NY and the company currently boasts nearly 80 stores spread over five states.  I actually patronized a Wegmans in Rochester about ten years ago and, let me tell you, it was pretty darn impressive.  You can learn more about how awesome Wegmans is by visiting its website.

For many years, Wegmans was using its trademark in the font style depicted in the photograph below:

In 2008, Wegmans decided to update and change the font style to the script design illustrated below:

On May 13, 2010 (which is almost two years after Wegmans first started using the trademark), Wegmans filed a trademark application seeking registration of the above mark for “retail grocery stores; retail stores featuring alcoholic beverages.”  The Trademark Office allowed the application and it was published for opposition on September 28.  But a mere 24 hours before the opposition period was set to expire, Walgreens filed a Notice of Opposition against Wegmans’ application alleging that the script design of the WEGMANS mark was likely to cause confusion with the script version of its own WALGREENS mark.  On that same day, Walgreens also filed a federal trademark infringement lawsuit against Wegmans.

Because a picture is worth a thousand words, here are the two trademarks shown together:

Is Walgreens off its rocker?  If you want my opinion, this is pretty nuts considering that the only resemblance between the two marks is the fact that both are presented in cursive.  Other than that, I see nothing even remotely similar between the two.  The actual fonts are clearly different and the “W” in each mark is distinct from one another.  Maybe I just wasn’t blessed with an eye for these kinds of things.  Or, perhaps Walgreens just has too much time and money to spend on nonsense.  You know, gotten too fat and happy on selling overpriced toothpaste.  As always, I’ll let you be the judge.

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.