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Josh Gerben Profile picture
@JoshGerben
Jul 19, 2022 • 8 tweets • 3 min read • Read on X
Scrolly
Well, this is awkward.

The company that owns Shaq's trademarks (Authentic Brands Group) has opposed his son's trademark filing for "SHAQIR O'NEAL."

How on earth did this happen?

#Shaq
#Trademarks

A thread 🧵
[1/8]
The Notice of Opposition starts by claiming that Authentic Brands Group ("ABG") holds all the rights in Shaq's name, image and likeness.

This is true.

Shaq did transfer all of these assets to ABG and is a shareholder in the company.

[2/8]
Authentic Brands Group goes on to claim that the trademark for SHAQIR O'NEAL is "confusingly similar" to trademarks it owns for Shaq.

[3/8]
The Notice of Opposition concludes by claiming that the "purchasing public" will "erroneously assume" that goods and services offered under the "SHAQIR O'NEAL" trademark are connected to Authentic Brands Group.

[4/8]
A pause in the thread to congratulate the lawyers for working in the word "erroneously" to this pleading.

[5/8]
So how is this case likely to play out?

It should settle without any trial.

In fact, I am shocked it got this far. There is almost no excuse for two companies that Shaq is involved with to end up in a court case against each other.

[6/8]
Nevertheless, the filing of this Notice of Opposition indicates that some friction likely exists between Authentic Brands Group and Shaqir's team.

Shaqir now has 40 days to file his Answer.

🍿

[7/8]
Here is a link to the full Notice of Opposition, just filed on July 15th:

ttabvue.uspto.gov/ttabvue/v?pno=…

[8/8]

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More from @JoshGerben

Josh Gerben Profile picture
Jul 18
An epic trademark battle between NFL quarterbacks is underway.

Lamar Jackson has blocked Troy Aikman's attempt to register a trademark for “EIGHT” with the USPTO.

A thread 🧵

#LamarJackson #TroyAikman #NFL Image
Jackson's legal team recently filed a Notice of Opposition against Aikman's "EIGHT" trademark claiming that...

[2/6] Image
1⃣ Jackson has filed multiple trademarks for the number "8" as it relates to clothing and athletic bags, giving him superior rights in the mark.

2⃣ If registered Aikman's "EIGHT" trademark will cause consumer confusion with Jackson's "8" trademarks.

[3/6] Image
Read 6 tweets
Josh Gerben Profile picture
May 24, 2023
The USPTO has denied the trademark application for the NFL's Washington Commanders.

On May 18th, the USPTO issued the denial citing two reasons.

1⃣ An existing trademark for "Commanders' Classic."
2⃣ Pending applications filed by a DC-area man.

A thread 🧵

#HTTC Image
The Washington Commanders' trademark was refused because of an existing registration for:

"Commanders' Classic"

This is the name of a yearly college football game between the Air Force and Army teams.

[2/6] Image
The second reason the Commanders' trademark was refused was due to pending applications for:

1⃣ Washington Space Commanders
2⃣ Washington Wolf Commanders

The filings were made by Martin McCaulay, a DC-area man, who filed the trademarks trying to guess the new team name.

[3/6] Image
Read 6 tweets
Josh Gerben Profile picture
Oct 18, 2022
Luka Doncic and his Mom are in a legal battle for control of his trademarks.

In September, Luka filed to cancel a trademark his Mom owns for "LUKA DONCIC 7."

Last week, his Mom fired back, seeking to dismiss the legal proceeding on technical grounds.

[1/7]
#lukadoncic Image
The legal dispute began last month.

For years, Luka consented to his Mom owning trademark registrations for his name.

However, that arrangement appears to have changed as Luka has filed a "Petition to Cancel" a trademark registration his Mom owns for "Luka Doncic 7."

[2/7]
Luka's "Petition to Cancel" indicates that:

1. He was young and relied on his Mom for help when he consented to her owning his trademarks.

2. He is now trying to file trademarks under his own company which have been blocked by the previous registration owned by his Mom.

[3/7]
Read 7 tweets
Josh Gerben Profile picture
Jun 22, 2022
The Ohio State University has successfully registered a trademark for "THE."

The registration was just issued on June 21st by the USPTO.

The application was filed back in August 2019. So why did it take 3 years to get approved?

A thread🧵
The USPTO refused Ohio State's trademark application for the word "THE" on Sept 11, 2019, for two reasons:

1. The trademark was "merely ornamental."

2. The clothing company Marc Jacobs had filed an application for "THE" several months earlier.

tsdr.uspto.gov/documentviewer…

[2/5]
Ohio State responded by:

1. Showing the USPTO that it was not using the trademark in a mearly ornamental manner, and

2. Opposing Marc Jacobs' trademark application for the word "THE."

ttabvue.uspto.gov/ttabvue/v?qt=a…

[3/5]
Read 6 tweets
Josh Gerben Profile picture
Mar 8, 2022
I'm a trademark attorney who has assisted clients in registering 7,500+ trademarks on 6 continents.

Russia has threatened to "suspend" the trademark and patent rights of foreign companies that are ceasing operations in Russia.

Why is that significant?

A thread.
#UkraineRussia
Russian state media is reporting that the Russian government may suspend the trademark and patent rights of companies that are ceasing operations in Russia or in connection with "sanctioned goods."

[2/11]
This means that Russians might be able to use Fortune 100 brands and patents without the threat of litigation.

And it's significant because such a threat pressures the companies, who owe a duty to their shareholders, to think twice about further isolating Russia.

[3/11]
Read 11 tweets
Josh Gerben Profile picture
Jan 5, 2022
I have assisted clients in registering 7,000+ trademarks in the US and around the world.

The Washington Football Team has likely filed a trademark application for its new team name.

The question is where.

#WashingtonFootball #WFT #NFL #trademarks

[a thread]
[1/6]
There is a treaty called the Paris Convention.

178 countries signed this treaty.

If a company files a trademark in 1 of the 178 countries, it may then file the same mark in any of the other countries WITHIN 6 MONTHS and get the priority date from the original filing.

[2/6]
The Cleveland Guardians used the Paris Convention when securing the trademark for its new team name.

In March 2021, the team filed a trademark for "Cleveland Guardians" in the Republic of Mauritius.

The application went unnoticed until the new name was announced in July.

[3/6]
Read 7 tweets

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