Trademark filers are familiar with the “balaclava problem”. When I say the “balaclava problem” I mean the many US trademark registrations in which the listing of identified goods or services in a particular trademark class is a listing of all possible goods or services in that class. The USPTO has launched two recent initiatives which are intended to try to fight the “balaclava problem”. This blog article discusses one of the initiatives and the next blog article discusses the second of the initiatives.
Let’s first give a real-life illustration of the “balaclava problem”. As an example consider the 721 items of goods in class 25 (clothing) for this application, which is presently pending before the USPTO:
- A-shirts
- After ski boots
- Aikido uniforms
- Albs
- American football bibs
- Anglers’ shoes
- Ankle boots
- Anklets
- Anoraks
- Anti-perspirant socks
- Anti-sweat underclothing
- Anti-sweat underwear
- Apparel for dancers, namely, tee shirts, sweatshirts, pants, leggings, shorts and jackets
- Apres-ski shoes
- Aprons
- Athletic footwear
- Athletic jackets
- Athletic shoes
- Athletic shorts
- Athletic sweaters
- Athletic tights
- Athletic uniforms
- Baby bibs not of paper
- Baby bodysuits
- Baby bottoms
- Baby layettes for clothing
- Baby tops
- Balaclavas
- Ball gowns
- Ballet slippers
- Balloon pants
- Ballroom dancing uniforms
- Bandanas
- Bandeaux
- Barber smocks
- Baseball caps
- Baseball shoes
- Baseball uniforms
- Baselayer bottoms
- Basketball sneakers
- Bath sandals
- Bathing caps
- Bathing costumes
- Bathing costumes for women
- Bathing suits
- Bathing suits for men
- Bathing trunks
- Bathrobes
- Beach cover-ups
- Beach coverups
- Beach shoes
- Beanies
- Bed jackets
- Belts
- Belts made from imitation leather
- Belts made of leather
- Belts made out of cloth
- Belts that are designed to accommodate pregnancy size changes
- Berets
- Bib shorts
- Bib tights
- Bibs not of cloth or paper
- Bicycle gloves
- Bicycling gloves
- Biketards
- Bikinis
- Birding vests
- Blazers
- Blousons
- Bodies being underclothing
- Body linen
- Body shapers
- Body shirts
- Bodysuits
- Boleros
- Bonnets
- Boot accessories, namely, fitted decorative covers for boots
- Boot cuffs
- Boot uppers
- Booties
- Boots for sport
- Bottoms
- Boxer shorts
- Boxing shoes
- Boxing shorts
- Braces
- Brassieres
- Breeches
- Breeches for wear
- Bridal garters
- Briefs
- Bustiers
- Button down shirts
- Cagoules
- Camisoles
- Camouflage jackets
- Camouflage shirts
- Camouflage vests
- Canvas shoes
- Cap visors
- Capelets
- Capes
- Capes for use in salons and barber shops
- Capri pants
- Capris
- Caps with visors
- Cardigans
- Cargo pants
- Cat suits
- Chaps
- Chef coats
- Chef pants
- Chef shirts
- Cheongsams (Chinese gowns)
- Children’s and infant’s apparel, namely, jumpers, overall sleepwear, pajamas, rompers and one-piece garments
- Children’s and infants’ apparel treated with fire and heat retardants, namely, jumpers, overall sleepwear, pajamas, rompers and one-piece garments
- Choir robes
- Clam diggers
- Cleats for attachment to sports shoes
- Climbing boots
- Cloaks
- Clogs
- Cloth bibs
- Cloth bibs for adult diners
- Cloth bibs for use by senior citizens or physically- or mentally-challenged persons
- Clothing extension used to extend the normal size range of clothing items to accommodate pregnancy size changes
- Clothing for athletic use, namely, padded pants
- Clothing for babies, toddlers and children, treated with fire and heat retardants, namely, pajamas, jackets, shirts, pants, jumpers
- Clothing for wear in wrestling games
- Clothing items, namely, adhesive pockets that may be affixed directly to the inside of clothing for storage and safekeeping of personal items
- Clothing items, namely, blindfolds worn over the eyes
- Clothing items, namely, gags worn over the mouth
- Clothing layettes
- Clothing shields, namely, pads applied to the underarms of shirts, blouses and sweaters
- Clothing wraps
- Clothing, namely, arm warmers
- Clothing, namely, athletic sleeves
- Clothing, namely, cowls and smoke ring scarves
- Clothing, namely, crops
- Clothing, namely, folk costumes
- Clothing, namely, khakis
- Clothing, namely, knee warmers
- Clothing, namely, maternity bands
- Clothing, namely, neck warmers
- Clothing, namely, wrap-arounds
- Coats
- Coats of denim
- Cobblers’ aprons
- Collar guards for protecting clothing collars
- Collar liners for protecting clothing collars
- Collar protector strips for application to clothing collars
- Collars
- Combinations
- Competitors’ numbers of textile
- Corduroy trousers
- Corselets
- Corsets being foundation clothing
- Corsets being underclothing
- Costumes for use in children’s dress up play
- Costumes for use in the amusement industry
- Coveralls
- Coverups
- Crew necks
- Crop pants
- Crop tops
- Cross-country gloves
- Cuffs
- Culottes
- Cycling caps
- Cycling shoes
- Cycling shorts
- Cyclists’ jerseys
- Dance pants
- Dance shoes
- Dance slippers
- Detachable collars
- Disposable slippers
- Disposable underwear
- Do rags for use as caps
- Down jackets
- Down suits
- Drawers
- Dress pants
- Dress shields
- Dress shirts
- Dress straps
- Dress suits
- Dresses
- Dresses made from skins
- Dressing gowns
- Driving gloves
- Dungarees
- Dust coats
- Ear warmers
- Earbands
- Embossed soles and heels of rubber or of plastic materials
- Espadrilles
- Esparto shoes or sandals
- Eternity scarves
- Evening dresses
- Evening gowns
- Fascinator hats
- Fedoras
- Fichus
- Fishermen’s jackets
- Fishing shirts
- Fitted shoe or boot covering to protect the shoes or boot from water or other damage
- Fleece shorts
- Flight suits
- Flip flops
- Flood pants
- Foam pedicure slippers
- Football boots
- Football boots and studs therefor
- Football shoes
- Footies
- Footwear
- Footwear for men and women
- Footwear for track and field athletics
- Footwear for women
- Footwear made of vinyl
- Footwear made of wood
- Footwear not for sports
- Footwear uppers
- Footwear, namely, pumps
- Footwear, namely, rubbers
- Footwear, namely, work boots
- Formalwear, namely, dresses, gowns, tuxedos, dinner jackets, trousers and footwear
- Foul weather gear
- Foundation garments
- Foundation garments worn around the midsection or thighs to keep the stomach in and create a slimming effect
- Fur cloaks
- Fur hats
- Fur jackets
- Fur muffs
- Fur stoles
- Furs being clothing
- G-strings
- Gaiter straps
- Gaiters
- Galoshes
- Garter belts
- Gauchos
- Gift packages sold as a unit consisting primarily of a sweatshirt and also including a photo frame, a coffee mug, and a tote bag
- Gilets
- Girdles
- Gloves
- Gloves with conductive fingertips that may be worn while using handheld electronic touch screen devices
- Golf caps
- Golf cleats
- Golf shoes
- Golf shorts
- Golf spikes
- Graphic T-shirts
- Greatcoats
- Gym boots
- Gym shorts
- Gymnastic shoes
- Hairdressing capes
- Half-boots
- Halloween costumes and masks sold in connection therewith
- Handball shoes
- Hat frames
- Hatbands
- Hats for infants, babies, toddlers and children
- Head sweatbands
- Head wear
- Headwear
- Heavy coats
- Heel inserts
- Heel pieces for shoes
- Heelpieces for footwear
- Henley shirts
- High rain clogs (ashida)
- Hiking boots
- Hiking trousers
- Hip-guards especially made for fishing
- Hockey shoes
- Hooded pullovers
- Hoodies
- Horse-riding boots
- Horse-riding pants
- Hunting boot bags
- Hunting jackets
- Hunting shirts
- Hunting vests
- Infant sleepers
- Infant wearable blankets
- Infants’ shoes and boots
- Infants’ trousers
- Insoles
- Insoles for footwear
- Jacket liners
- Jackets and socks
- Jackets incorporating backpacks
- Japanese sleeping robes (nemaki)
- Japanese split-toed work footwear (jikatabi)
- Japanese style sandals (zori)
- Japanese style sandals of leather
- Japanese style wooden clogs (geta)
- Japanese toe-strap sandals (asaura-zori)
- Jerseys
- Jogging outfits
- Jogging suits
- Judo uniforms
- Jump suits
- Jumper dresses
- Jumpers
- Jumpsuits
- Kaftans
- Karate suits
- Kerchiefs
- Kilts
- Kimonos
- Kippahs (yarmulkes)
- Knee highs
- Knee-high stockings
- Knit bottoms
- Knit face masks
- Knit skirts
- Knitted caps
- Knitted gloves
- Knitted underwear
- Knot caps
- Knotted caps
- Korean outer jackets worn over basic garment
- Korean topcoats
- Lab coats
- Ladies’ boots
- Ladies’ suits
- Leather boots
- Leather headwear
- Leather pants
- Leather shirts
- Leather shoes
- Leather skirts
- Leather slippers
- Leather vests
- Leg shapers
- Leg warmers
- Leg-warmers
- Leisure shoes
- Leotards
- Leotards and tights for women, men and children of nylon, cotton or other textile fibers
- Light-reflecting coats
- Lingerie accessories, namely, removable silicone breast enhancer pads used in a bra
- Live flower headdresses
- Long jackets
- Long johns
- Long-sleeved shirts
- Loungewear
- Low wooden clogs (hiyori-geta)
- Low wooden clogs (koma-geta)
- Maniples
- Mantles
- Martial arts uniforms
- Martial arts uniforms, namely, gis
- Maternity bras
- Maternity lingerie
- Maternity sleepwear
- Men’s and women’s jackets, coats, trousers, vests
- Men’s dress socks
- Men’s socks
- Men’s suits, women’s suits
- Millinery, namely, fascinators
- Miniskirts
- Mittens
- Mittens modified to cover the hand and an animal leash handle or other loop
- Mock turtle-neck sweaters
- Mocknecks
- Moisture-wicking sports bras
- Moisture-wicking sports pants
- Moisture-wicking sports shirts
- Motorcycle gloves
- Motorcyclist boots
- Mountaineering boot liners
- Mountaineering shoes
- Mufflers
- Muffs
- Mules
- Muscle tops
- Neck bands
- Neck gaiters
- Neck scarfs
- Neck scarves
- Neckerchiefs
- Neckties
- Neckwear
- Negligees
- Nightcaps
- Nightdresses
- Nightgowns
- Nightshirts
- Nightwear
- Nipple covers, namely, pasties
- Non-slip soles for footwear
- Nurse dresses
- Nurse overalls
- Nurse pants
- One piece garment for infants and toddlers
- One-piece garments for children
- One-piece play suits
- Outer jackets
- Over coats
- Over shirts
- Overalls
- Overalls for use in salons and barber shops
- Overcoats
- Oxford shoes
- Padding jackets
- Pajama bottoms
- Pajamas treated with fire and heat retardants
- Pantaloons
- Panties, shorts and briefs
- Pants
- Pantyhose
- Paper aprons
- Paper hats for use as clothing items
- Paper shoes used when going through metal detectors to keep feet and socks clean
- Pareos
- Pareu
- Pareus
- Parkas
- Parts of clothing, namely, gussets for tights, gussets for stockings, gussets for bathing suits, gussets for underwear, gussets for leotards and gussets for footlets
- Parts of clothing, namely, underarm gussets
- Patient slippers
- Pea coats
- Pedal pushers
- Pedicure slippers
- Perspiration absorbent underwear clothing
- Petti-pants
- Pinafores
- Plastic baby bibs
- Plastic socks used in the airport environment when going through security to keep feet clean, dry and sanitary
- Play suits
- Pleated skirts for formal kimonos (hakama)
- Plimsolls
- Pockets for clothing
- Polo knit tops
- Polo shirts
- Protective metal members for shoes and boots
- Pyjamas
- Race number belts that hold a paper number on the race participant’s front or back during competition
- Rain boots
- Rain coats
- Rain hats
- Rain jackets
- Rain slickers
- Raincoats
- Rainproof jackets
- Rainwear
- Ramie shirts
- Rash vests
- Ready-made linings being parts of clothing
- Redingotes
- Reversible jackets
- Riding boots
- Riding coats
- Riding gloves
- Riding jackets
- Riding shoes
- Robes
- Rompers
- Ruanas
- Rubber shoes
- Rubbers
- Rugby shirts
- Rugby shorts
- Rugby tops
- Running pads that strap onto shoes
- Running shoes
- Sabots
- Safari jackets
- Salopettes
- Sandals
- Sandals and beach shoes
- Sarees
- Saris
- Sash bands for kimono (obi)
- Sashes
- Sashes for wear
- Scarfs
- School uniforms
- Scrimmage vests
- Scrubs not for medical purposes
- Sedge hats (suge-gasa)
- Serapes
- Shawls
- Shawls and headscarves
- Shawls and stoles
- Sheepskin coats
- Sheepskin jackets
- Shell jackets
- Shifts
- Shirt inserts, namely, dickies
- Shirt yokes
- Shirt-jacs
- Shirts
- Shirts and short-sleeved shirts
- Shirts for infants, babies, toddlers and children
- Shoe accessories, namely, fitted decorative covers for shoes
- Shoe covers for use when wearing shoes
- Shoe inserts for primarily non-orthopedic purposes
- Shoe inserts for primarily non-orthopedic purposes that also deodorize shoes
- Shoe soles for repair
- Shoe straps
- Shoes
- Short overcoat for kimono (haori)
- Short sets
- Short-sleeve shirts
- Short-sleeved or long-sleeved t-shirts
- Short-sleeved shirts
- Shoulder scarves
- Shoulder wraps
- Shrugs
- Silk scarves
- Singlets
- Skating outfits
- Ski boots
- Ski jackets
- Ski suits for competition
- Ski trousers
- Ski wear
- Skirt suits
- Skirts
- Skiwear
- Skooters
- Skull caps
- Skullies
- Slacks
- Sleep pants
- Sleeping garments
- Sleeved or sleeveless jackets
- Sleeveless jerseys
- Sleeves worn separate and apart from blouses, shirts and other tops
- Sliding shorts
- Slipovers
- Slipper socks
- Slippers
- Slips being underclothing
- Smoking jackets
- Snap crotch shirts for infants and toddlers
- Snow boots
- Snow pants
- Snowboard jackets
- Snowboard mittens
- Soccer boots
- Sock suspenders
- Soles
- Soles for footwear
- Soles for Japanese style sandals
- Sport shirts
- Sport stockings
- Sports bras
- Sports jackets
- Sports jerseys and breeches for sports
- Sports over uniforms
- Sports shirts
- Sports shirts with short sleeves
- Sports shoes
- Stocking hats
- Stockings
- Stoles
- Strapless bras
- Straps for bras
- Stretch pants
- Studs for football boots
- Stuff jackets
- Suede jackets
- Suit coats
- Suits
- Sun leggings
- Sun sleeves
- Sun visors
- Sunsuits
- Suspender belts
- Suspender belts for women
- Suspenders
- Swaddling clothes
- Sweat bands
- Sweat jackets
- Sweat pants
- Sweat shirts
- Sweat-absorbent stockings
- Sweatbands
- Sweatpants
- Sweatshirts
- Sweatsuits
- Swim caps
- Swim suits
- Swim trunks
- Swim wear
- Swim wear for gentlemen and ladies
- Swimming caps
- Swimming caps
- Swimming costumes
- Swimsuits
- Swimwear
- T-shirts
- Tabards
- Taekwondo uniforms
- Tailleurs
- Tams
- Tank tops
- Tank-tops
- Tap shoes
- Teddies being underclothing
- Tee shirts
- Tee-shirts
- Tennis wear
- Thermal socks
- Thigh high stockings
- Thong sandals
- Ties
- Tightening-up strings for kimonos (datejime)
- Tips for footwear
- Toboggan hats
- Toe boxes
- Toe caps
- Toe straps for Japanese style wooden clogs
- Togas
- Tongue or pullstrap for shoes and boots
- Top coats
- Top hats
- Topcoats
- Tops
- Torsettes
- Track and field shoes
- Track suits
- Tracksuits
- Training shoes
- Training suits
- Travel clothing contained in a package comprising reversible jackets, pants, skirts, tops and a belt or scarf
- Trekking jackets
- Trekking trousers
- Trench coats
- Trousers
- Trousers for sweating
- Tube skirts
- Tube tops
- Tunics
- Tuques
- Turtle neck shirts
- Turtleneck pullovers
- Turtleneck sweaters
- Tutus
- Tuxedo belts
- Tuxedos
- Underarm clothing shields
- Underclothing
- Undergarments
- Undershirts
- Undershirts for kimonos (juban)
- Underskirts
- Uniforms
- Union suits
- Unitards
- Uppers of woven rattan for Japanese style sandals
- Ushankas
- Vest extenders
- Vested suits
- Viscous gel polymer sold as a component of finished custom cushioned footwear for non-orthopedic purposes and apparel
- Visors
- Volleyball jerseys
- Waist bands
- Waist belts
- Waistband extender consisting of a button and button hole mounted on a strip of fabric that is inserted into the existing waistband of a garment
- Waistbands
- Waistcoats
- Warm up outfits
- Warm up suits
- Warm-up suits
- Water repelling boots
- Water repelling footwear
- Water repelling leather shoes and boots
- Water ski boot liners
- Water socks
- Waterproof leather boots
- Waterskiing suits
- Wearable garments and clothing, namely, shirts
- Wedding dresses
- Wellington boots
- Welts for boots and shoes
- Welts for footwear
- Wet suit gloves
- Wet suits for water-skiing
- Wet suits for water-skiing and sub-aqua
- Wetsuits
- Wetsuits for water-skiing
- Wimples
- Wind coats
- Wind pants
- Wind resistant jackets
- Wind suits
- Wind vests
- Wind-jackets
- Windjammers
- Windshirts
- Winter boots
- Winter coats
- Women’s athletic tops with built-in bras
- Women’s ceremonial dresses
- Women’s clothing, namely, shirts, dresses, skirts, blouses
- Women’s hats and hoods
- Women’s shoes, namely, foldable flats
- Women’s underwear
- Wooden main bodies of Japanese style wooden clogs
- Wooden shoes
- Woollen socks
- Woolly hats
- Woven bottoms
- Woven dresses
- Woven shirts
- Woven skirts
- Woven tops
- Wrap belts for kimonos (datemaki)
- Wrist bands
- Wristbands
- Wristbands containing a cooling substance to cool the wearer
- Yoga pants
- Zori
This application, like so many others that have passed through the USPTO over the years, has what I call the “balaclava problem”. It lists every conceivable item in class 25, including balaclavas (item 28) and smoking jackets (item 541). I blogged about the balaclava problem here.
Heretofore, many trademark registrants probably filed renewals for such registrations without thinking very much about whether all 721 items (or whatever) are really in use in commerce in the US.
The balaclava problem affects trademark applicants. Many applicants have run into the problem of an Examining Attorney refusing registration because of some previous filing such as this application with its 721 items of goods. The USPTO suggests (I think correctly) that it would be just as well to “clear out the deadwood” and to get things canceled out of the trademark register if they do not really belong there.
The USPTO has just now taken a step to try to fight the balaclava problem, namely requiring that when a trademark owner files a renewal, the owner is required to check five boxes to individually aver the following:
- Unless the owner has specifically claimed excusable nonuse, the mark is in use in commerce on or in connection with the goods/services … identified above, as evidenced by the attached specimen(s).
- The specimen(s) shows the mark as currently used in commerce on or in connection with the goods/services …
- The registrant requests that the registration be renewed for the goods/services … identified above.
- To the best of the signatory’s knowledge, information, and belief, formed after an inquiry reasonable under the circumstances, the allegations and other factual contentions made above have evidentiary support.
- The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of this submission, declares that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.
USPTO’s goal, of course, is that at least a fraction of those owners who file renewals in cases like this will feel a little uncomfortable because of the five check boxes … and will click the “back” button in TEAS to go back and cancel some of the goods.
How has the balaclava problem affected you? Please post below.