Tuesday, October 2, 2007

Long Winding Road Towards Abandonment for Las Vegas Based “THE WEB STREET JOURNAL”

I was looking at some recently abandoned applications, and the one for THE WEB STREET JOURNAL caught my eye. The application went abandoned on September 28, 2007. It seemed obvious why this application never registered. And yet, while the application’s end was obvious, the way it came about its end was not.

The application was filed March 1, 2002, by a Nevada corporation named The Web Street Journal, Inc. (“WSJ”), located at 7500 W. Lake Mead Blvd., Las Vegas, Nevada 89129 (which I happen to know is a private mailbox address -- a UPS Store, to be exact -- and the reason I mention this will become obvious later).

The application sought registration for the mark under two classes of goods under Section 1(a) – downloadable electronic journals with reports on new financial offerings (class 9), which first date of use was claimed to be February 22, 2002, and printed journals with reports on new financial offerings (class 16), which first date of use was claimed to be March 3, 1987.

No surprise that in the PTO’s initial non-final office action, the PTO refused registration based on a likelihood of confusion. What is surprising is that the Examiner cited to two registrations, WEB STREET SECURITIES (for securities brokerage services) and WEB STREET (securities brokerage services), and a pending application for WEBSTREET.COM, to support its 2(d) likelihood of confusion refusal.

On February 11, 2003, WSJ filed its response to the non-final action asking for prosecution to be suspended on the grounds that the WSJ was currently opposing the registration of the WEBSTREET.COM (Opposition No. 91154927) on the grounds of abandonment by the applicant, Web Street, Inc., as well as senior use by WSJ. If successful, WSJ intended on filing petitions to cancel the other two registrations based on the same grounds. Web Street, Inc. did not file a response to WSJ’s opposition, so the TTAB entered a default judgment against Web Street, Inc., sustained the opposition, and refused registration.

On August 28, 2004, the PTO sent out a suspension letter notifying WSJ that the WEBSTREET.COM was no longer a bar to registration. The letter suspended prosecution further in order to determine if Web Street, Inc. would file its §8 and §9 declarations for WEB STREET SECURITIES, due by March 23, 2005. If nothing were to be received by December 28, 2005 (the nine months and five days grace period followed by the PTO), the registration would be canceled and such registration would not serve as grounds for refusing to register the mark.

On October 25, 2006, the PTO sent out a similar suspension letter notifying WSJ that prosecution would be further suspended in order to determine if Web Street, Inc. would file its §8 declaration for the WEB STREET, which was due by February 15, 2006. If nothing were to be received within the nine months and five days grace period (November 20, 2006), the registration would be canceled and such registration would not serve as grounds for refusing to register the mark. The same letter noted that the WEB STREET SECURITIES registration had been canceled.
Web Street, Inc. never filed its §8 declaration for the WEB STREET, so it was canceled. With the bases for the trademark examining attorney’s 2(d) refusal eliminated, the PTO allowed the application to be published, which it was on January 31, 2007.
The end of the story is rather predictable and anti-climactic. You can probably predict what happened after publication. Dow Jones, L.P., and Dow Jones & Company, Inc., the owners of the The Wall Street Journal (before Mr. Murdoch’s recent acquisition of the Journal) filed an opposition to registration on June 20, 2007 (Opposition No. 91177969). WSJ never filed an answer, resulting in the same type of default judgment by the TTAN on September 27, 2007 – the same type of default judgment it had obtained against Web Street, Inc.
What confounds me is how the application got to the point of publication at all. The registrations cited by the trademark examining attorney to support the 2(d) refusal were good, but was it also not obvious to anyone (and certainly a trademark examining attorney) that the same mark is likely to be confused with THE WALL STREET JOURNAL (a much more famous mark than WEB STREET). It’s the first thing that came to my mind when I noticed this application had gone abandoned.

As most practitioners know, trademark examining attorneys have a very large docket that they must contend with everyday, and often times, such attorneys will go for the easy rejection in order to issue the office action and get it off their desk. It was probably easier to cite those two registrations (and one application) rather than put forth a 2(d) argument regarding THE WALL STREET JOURNAL. Maybe the examining attorney recognized that the mark was likely to be confused with THE WALL STREET JOURNAL, but did not feel like it was worthwhile to fight such a battle ex parte, when the application can just be published and any potential opposer fight inter partes for refusal to register the mark.

I am also confounded by the sudden disinterest on the part of The Web Street Journal, in fighting for a mark that it had waited patiently for seven years to get to the point of having the mark published for opposition. And when faced with an opposition that it surely had to know was coming, it did not even put up a fight. Of course, the lack of a fight may have had something to do with the fact that the applicant corporation had its charter revoked on June 1, 2007. Maybe it just took too long and the applicant was no longer in business. It happens.

Or maybe there is a more interesting, more colorful story. I wouldn’t know because my interest ends at the trademark stage, but check out this link to a thread on a website that allows individuals to vent their anger towards a company known as Casavant Mining Kimberlite, Inc. (CMKX), some kind of penny stock involving diamond mining. There is a discussion of the colorful characters that once made up The Web Street Journal, Inc. It also gives you an idea of what kind of “financial offering” publications the company was planning to put out under the mark.

1 comment:

Anonymous said...

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