Category Archives:Trademark Law
Jan Blachowicz Granted Two Trademark Registrations for His Name and Alias
By Joanna Lubczanska, Santucci Priore, P.L.
Jan Blachowicz (@janblachowicz), the renowned UFC fighter from Poland, known as “The Legendary Polish Power” was just granted on February 18, 2022, by the European Union Intellectual Property Office (EUIPO) two trademark registrations for his name and alias in both, English and Polish, for various goods and services in Classes 9, 16, 25, 28, and 41.
Jan is a Polish professional mixed martial artist, currently competing in the Light Heavyweight division for the UFC, where he is the former UFC Light Heavyweight Champion.
The good and services covered by the registrations are as follows:
Class 9: Video recordings; Films, exposed; Video films; Electronic publications, downloadable; Audio books; E-books; Protective helmets for sports.
Class 16: Printed matter; Photographic material; Calendars; Books; Periodicals and magazines.
Class 25: Clothing, footwear, footwear for combat sports, workout suits, Hats, Furs [clothing], Coats, Casual jackets, Ready-made clothing, Costumes, Jackets, blazers, Waistcoats, Smocks, Trousers, Shorts (Bermuda shorts), Skirts, Shirts, blouses, Gowns, Sweaters, pullovers, Gym suits, Underwear for children and adults, Socks, panty hose stockings, Hats, caps, belts, Neckerchiefs, scarves, Scarves, sashes for wear Neckties, Bowties; Kimonos used in mixed martial arts (MMA); Kimono belts used in mixed martial arts (MMA).
Class 28: instruments and Accessories used in mixed martial arts (MMA), in particular: Martial arts gloves, Punching bags, Martial arts shields, trainer’s paws [accessories for martial arts], Foot protectors, Shin guards, Groin guards, Pears [accessories for martial arts], reflex balls, Training accessories.
Class 41: Sporting events; Education information; Physical education; Arranging and conducting of training; Arranging and conducting of cultural experience events, Arranging and organising recreational events, Organisation and conducting of sports events; Arranging and conducting of sports classes; Arranging and conducting of sport camps; Arranging and conducting athleticcompetitions; Providing information to others relating to sports and entertainment; Film production, other than advertising films; rental and distribution of films; Publication of magazines, periodicals, books; provision, Relating to the following goods: E-books, Audio books, Music, Motion pictures and images, not downloadable; Providing online, Relating to the following goods: Publication of books, E-books, journals, MAGAZINE, Audio books, digital music, Motion pictures and images, not downloadable.
You can view his registrations for Jan Blachowicz – The Legendary Polish Power (No. 018537841) here: Jan Blachowicz – The Legendary Polish Power
You can view his registration for Jan Błachowicz – Legendarna Polska Siła (No. 018537840) here: Jan Błachowicz – Legendarna Polska Siła.
Gratulacje, Janek! Congratulations, Jan!
USPTO Further Extends Certain Patent and Trademark-Related Timing Deadlines under the CARES Act to June 1, 2020
On April 28, 2020, United States Patent and Trademark Office USPTO director Andrei Iancu circulated a communication further extending USPTO deadlines to file certain trademark and patent-related documents or fees pursuant to Section 12004 of the Coronavirus Aid, Relief, and Economic Security Act (CARES Act).
The USPTO has further extended all deadlines which fall between March 27, 2020, and April 30,2020 until June 1, 2020 for any:
- response to an Office action, including a notice of appeal from a final refusal, under 15 U.S.C. § 1062(b) and 37 C.F.R. §§ 2.62(a) and 2.141(a);
- statement of use or request for extension of time to file a statement of use under 15 U.S.C. § 1051(d) and 37 C.F.R. §§ 2.88(a) and 2.89(a)
- notice of opposition or request for extension of time to file a notice of opposition under 15 U.S.C. § 1063(a) and 37 C.F.R. §§ 2.101(c) and§ 2.102(a);
- priority filing basis under 15 U.S.C. § 1126(d)(l) and 37 C.F.R. § 2.34(a)(4)(i)
- transformation of an extension of protection to the United States into a U.S. application under 15 U.S.C. § 1141j(c) and 37 C.F.R. § 7.31(a);
- affidavit of use or excusable nonuse under 15 U.S.C. § 1058(a) and 37 C.F.R. §2.160(a)
- renewal application under 15 U.S.C. § 1059(a) and 37 C.F.R. § 2.182; or
- affidavit of use or excusable nonuse under 15 U.S.C. § l 141k(a) and 37 C.F.R. § 7.36(b);
- reply to an Office notice issued during pre-examination processing by a small or micro entity;
- reply to an Office notice or action issued during examination or patent publication processing;
- issue fee;
- notice of appeal under 35 U.S.C. § 134 and 37 C.F.R. § 41.31;
- appeal brief under 37 C.F.R. § 41.37;
- reply brief under 37 C.F.R. § 41.41;
- appeal forwarding fee under 37 C.F.R. § 41.45;
- request for an oral hearing before the Patent Trial and Appeal Board (PTAB or Board) under 37 C.F.R. § 41.47;
- response to a substitute examiner’s answer under 37 C.F.R. § 41.50(a)(2);
- amendment when reopening prosecution in response to, or request for rehearing of, a PTAB decision designated as including a new ground of rejection under 37 C.F.R. § 41.50(b);
- maintenance fee, filed by a small or micro entity;
- request for rehearing of a PT AB decision under 3 7 C.F.R. § 41.52;
- request for rehearing of a PTAB decision under 37 C.F.R. §§ 41.125(c) or 41.127(d); or
- petition to the Chief Judge under 37 C.F.R. § 41.3.
It is important to note that the extended waiver of deadlines requires a statement from the practitioners, petitioners, applicants, trademark and patent owners, or other persons associated with the delayed filings and/or fees that they were personally affected by the COVID-19 outbreak. A non-exhaustive list of examples of reasons for COVID-19-related excusable delays includes office closures; cash flow interruptions; inaccessibility to files; travel delays; personal or family illness; or other similar circumstances materially interfering with timely filing or payment of fees. As to the form, the USPTO does not require such statements to be verified or to be provided in affidavit or declaration form.
Waiver of Fees for Petitions to Revive
The Notice further provides that applicants or a registrants whose trademark applications have become abandoned or whose registrations were canceled/expired due to a COVID-19 related- inability to timely submit a filing or payment in reply to an Office communication having a due date of May 31, 2020 or earlier can elect for the USPTO to waive the petition fee to revive the abandoned application or reinstate the canceled/expired registration.
Similarly, if due to the COVID-19 outbreak applicants and owners that were unable to timely submit a filing or payment in reply to an Office Communication having a due date of May 31, 2020 or earlier, causing their application to be abandoned or causing the termination of reexamination prosecutions, the UPSTO may waive the petition fee for filing a petition for the revival of such abandoned patent applications when the applicants or owners file a petition to revive and a provide a statement that the delay was due to the COVID-19 outbreak.
For any intellectual property-related questions including USPTO deadline extensions under the CARES Act, feel free to reach out to us via phone or email.
For the April 28, 2020 Notice of Waiver of Trademark-Related Timing Deadlines Under the CARES Act, click here.
For the April 28, 2020 Notice of Extended Waiver of Patent-Related Timing Deadlines under the Act and Other Relief Available to Patent Applicants and Patentees, click here.
For the USPTO’s answers to COVID-19-extension-related frequently asked questions:
 Certain restrictions may apply to the deadline extensions listed. To view copies of the notices, please click on the links provided in this blog entry.
Wu-Tang Clan opposes trademark application for “Woof-Tang Clan”
Recently, Robert Diggs, p/k/a RZA, opposed a trademark application for the mark WOOF-TANG CLAN. RZA is one of the leaders of the hip-hop group WU-TANG CLAN and alleges to be the owner of multiple trademark registrations containing the mark WU-TANG CLAN. The applicant Woof-Tang Clan, LLC (“Applicant”) is a New York business entity which filed a trademark application for the mark WOOF-TANG CLAN for dog walking services and pet sitting. Applicant’s website touts itself as “the illest group of dogs in New York City.”
In his Notice of Opposition, RZA makes several arguments why the WOOF-TANG CLAN application should not be allowed registration. First, RZA alleges that the WOOF-TANG CLAN mark falsely suggests a connection with RZA, who is known to be associated with the WU-TANG CLAN. RZA further alleges that the WU-TANG CLAN trademarks have been used prior to Applicant’s mark and that Applicant’s mark would cause consumers to be confused as to whether Applicant is affiliated with RZA or the WU-TANG CLAN. RZA’s last argument is that the WU-TANG CLAN trademarks are famous, and thus, Applicant’s mark is likely to dilute the distinctive value of the WU-TANG CLAN trademarks.
The deadline for the Applicant to respond to RZA’s claims is currently set on Christmas day. One of the issues yet to be determined is whether the Applicant knew of the WU-TANG trademarks prior to filing an application, and thus intentionally attempted to siphon off of the goodwill of WU-TANG. This coincides with RZA’s argument that the WU-TANG CLAN marks are famous. However, the burden will still be on RZA to establish the fame of the WU-TANG CLAN marks. If RZA’s arguments are successful it is likely that Applicant’s application will be denied registration.
We will be monitoring the status of this case. Please contact our office if you have any questions regarding the information in this article.
Daniel Devine, Esq.
Santucci Priore, P.L.
 See, Robert Diggs v. Woof-Tang Clan, LLC, Opposition No. 91237820 (TTAB Nov. 15, 2017).
 See, http://www.wooftangclan.com/services.html
 See, Robert Diggs v. Woof-Tang Clan, LLC, Opposition No. 91237820 (TTAB Nov. 15, 2017).