[Gnso-igo-ingo-crp] Nature of '89' series at USPTO TM database

[George Kirikos]

Hi folks,

During today's call, there was some debate as to the nature of the
'89' series at the USPTO TM database, that records various Article
6ter notifications.

See the chat transcript at:

http://mm.icann.org/pipermail/gnso-igo-ingo-crp/2017-November/000908.html

"Paul Tattersfield:UNHCR has an 89 series class listing at the USPTO
and it bars the registration of other TMs in all the international
classes

George Kirikos:@PaulT: it doesn't "bar" anything.

George Kirikos:It's still subject to the limitations of Article 6ter,
i.e. if it's not going to cause confusion, other TMs can be
registered.

Paul Tattersfield:Are you sure George I believe it does in the USPTO"

The nice thing about this debate is that one need only find a single
clear example, to prove conclusively that the 89-series doesn't bar
anything (as I stated). I had a few minutes, so I searched the term
"6ter" at the USPTO TM database (all fields) to come up with the list
of 89-series listings. Then, I randomly picked an "old" (for reason,
see below) and "short" one (to find commonly used terms that others
would want to legitimately register as marks), to get my example:

CDT: Filed on June 20, 2006, status date = Apr. 25, 2007
Owner: Translation Centre for the Bodies of the European Union

http://tsdr.uspto.gov/#caseNumber=89001045&caseType=SERIAL_NO&searchType=statusSearch

Does that 89-series listing bar registration by others of "CDT" marks?
Nope. Here's one registered to Jay Chang (an individual) for "Electric
Fans":

http://tsdr.uspto.gov/#caseNumber=86019678&caseType=SERIAL_NO&searchType=statusSearch

which is an elegant example, because its "First Use in Commerce" was
January 10, 2011 (i.e. years *after* that 89-series listing), it's a
standard character mark, etc. i.e. it's just a regular TM with no
"special case" exception (i.e. it wasn't dated before the 89-series
listing, or just a logo, or whatever). That's why I picked the "old"
one, by the way, so it would be easier to quickly find this elegant
example that is irrefutable.

If you look at the "documents" tab of that page, one can also verify
that no special permission was sought or required from the relevant
IGO, either. It went through the ordinary process, just like any other
application.

Q.E.D.

Sincerely,

George Kirikos
416-588-0269
http://www.leap.com/