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Morris E. Turek

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Ridiculous Trademark Opposition of the Week – 12/06/09

This Ridiculous Trademark Opposition of the Week is brought to you by a company who has to sell its watches for thousands of dollars so that it can finance even more ridiculous trademark oppositions.

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:

Omega Trademark

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:

Omega Trademark 3As 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.

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2 Responses to Ridiculous Trademark Opposition of the Week – 12/06/09

  1. Rex says:

    What ever happened with the above case? How did it resolve? How do you deal with such abusive companies that file such a high volume of objections? We just became a victim of this (not from Omega, but from an equally overly-zealous company). How can we defend ourselves given that the marks don’t even look similar? And without spending a fortune in legal bills?

  2. Charles says:

    As a proud member of this organization (fraternity), I understand the watchmaker’s concern. One one hand, we too have a problem with unregistered vendors hawking products in the name of Omega. They flood our conventions, and return none of their profits for the community service to which we pledge; on the other hand however, to take litigation to such extremes is both petty and just plain sad. If anything, my affinity for “Omega” has lent to an appreciation in the coffers of the Swiss watchmaker, not an affront to.

    I currently am the owner of a Broad Arrow Speedmaster (in the absence of my fraternal affiliation, I would not have otherwise given a second thought to purchasing), and I’m not the only one… for now.

    Check ebay under the seller name “Mad Que” for a great deal on a slightly used timepiece manufactured by a watchmaker that has surgically incised their collective noses.

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