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

[Paul Tattersfield]

Sorry George, it was very careless of me, too much haste on my part though
no excuse. The examples I looked at when I was researching 89 series marks
all involved the removal of possibly confusingly similar marks. Thinking it
though, of course you are right even without any examples.

If you ever come to England let me know, I owe you a beer or two.

Best regards,


Paul.

On Thu, Nov 16, 2017 at 11:13 PM, George Kirikos <icann at leap.com> wrote:

> 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/
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