Josh Gerben Profile picture
Jul 19 8 tweets 3 min read
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

Jun 22
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
Mar 8
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
Jan 5
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
Oct 27, 2021
The Cleveland Indians have been sued over the team’s planned name change to The Cleveland Guardians.

A roller derby team named the Cleveland Guardians filed the lawsuit earlier today.

The lawsuit makes some juicy claims.

[a thread]

#ClevelandGuardians #ClevelandIndians
The elbows begin flying immediately in the complaint.

In the second paragraph the roller derby team asserts that two sports teams cannot reside in the same city and have the same name.

[2/8]
After coming out of the gate strong, the roller derby team goes on to posit that it has common-law trademark rights in northeast Ohio, going back to late 2013.

[3/8]
Read 8 tweets
Aug 16, 2021
There is a trademark battle underway in Kentucky.

The University of Kentucky has opposed a trademark application for "TEAM KENTUCKY" filed by the Commonwealth of Kentucky.

The University claims that it owns the word KENTUCKY when it comes to clothing products.

#Kentucky
[2]

You did not see this wrong.

The University of Kentucky and the Commonwealth of Kentucky are engaged in a trademark battle over who owns the trademark for KENTUCKY when it comes to clothing.
[3]

The University of Kentucky is claiming that consumers are likely to think any clothing products sold by the state government using the trademark "TEAM KENTUCKY" are actually products sold by the University.
Read 7 tweets
Aug 8, 2021
A roller derby team filed a trademark application for "Cleveland Guardians" on July 27.

The filing was made 4 days after the @Indians announced the team would be renamed the "Cleveland Guardians."

This is why the filing is significant.

[A thread]
#clevelandguardians
[2]

The roller derby's trademark filing for "Cleveland Guardians" was focused on merchandise items.

These items overlap the items claimed in the @Indians' trademark filing for "Cleveland Guardians."

Specifically, class 16 (bumper stickers) and class 25 (clothing).
[3]

In its trademark application, the roller derby team also claimed that it has been using the Cleveland Guardians trademark to sell merchandise since 2014.

If true, this would give the roller derby team "common law" trademark rights extending back to 2014.
Read 17 tweets

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