NetJets submitted a trademark application for wine. What went wrong with their trademark application?
When a trademark application is filed, it gets in line behind other trademark applications and other trademark registrations. We say that the first user of a trademark has “priority,” which means that they have better rights than a subsequent trademark user. If a trademark application is found to be “confusingly similar” to something already in the trademark database, the application for that mark will be refused on that basis. There are many ways that a trademark can be “confusingly similar,” but one of the most common is because it incorporates the entirety of the senior trademark — the trademark with priority — and the goods listed in the trademark application are the same or “related” to the goods in the senior trademark.
The NETJETS trademark application for wine was refused due to the existence of another trademark application for the mark NET for wine. In this case, both marks were for “wine,” so that makes the goods identical. This NET trademark application has not been used yet, but the owners of the application, but then trademark office approved the mark for publication — which means that there were no prior-filed or registered marks that would bar registration of the NET trademark. The trademark was then published for Opposition, which gives others the opportunity to object to the trademark issuance. If no one objects, then the trademark applicant gets a Notice of Allowance. Once the Notice of Allowance is issued, then the applicant has 6 months from that date to either 1) show use of the trademark in commerce, or 2) apply for an extension to prove use in commerce.
Here, the owners of the NET trademark application filed an Extension to File a Statement of Use, so the owners of the NETJETS application for wine are in limbo — their application is suspended pending the outcome of the NET application. If the NET application does not mature into a registration, then the NETJETS application will move forward. The bad news is, though, that the NET application can be kept alive for up to 3 years just by filing extensions and paying a fee every 6 months.
This can leave a trademark applicant in a sort of twilight zone, where they don’t know whether to 1) continue investing in the trademark application, and hope that the owner of the cited application doesn’t file a Statement of Use, and the application goes abandoned, or 2) give up and choose a new trademark to register.
It’s a frustrating position to be in, and one to which there is no good answer, because you can’t predict what the other party is going to do. I’ve had clients in this situation, and it’s hard to know how to advise them; in the end, it’s a business decision that each client must make for themselves.
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Contact Dallas, Texas trademark attorney Angela Langlotz today to get started on a trademark application for your valuable brand.