[arrl-odv:35003] Trademark Good News - - Report Trademark published today

Good news - Today our long-sought registration for "The National Association for Amateur Radio" was published nationally by the USPTO. See attached notice. This is the last step as public comment is allowed for a 30-day period for filing oppositions. Some of you asked me in the last week or so what was up with the whole project. It has taken some time - I have many days of pro bono time in it myself over a few years. We filed this new application after the failure some years ago to get the term trademarked by other counsel. Rather than repeat the same explanation one on one, here is a brief overview with the good news of the last several days. This report is NOT for the minutes. If someone wants that, I can create a more formal report but there is no committee. Most or all of this information is published at the trademark office or otherwise in the wild. I knew this approval was coming but it took some time and appeals. We are The National Association for Amateur Radio now. No others. There can be other Amateur Radio Associations - there already are as local clubs so we had to concede that general language of course. Contrary to popular belief, we did NOT have a trademark registration on this valuable term by itself. In years past, our earlier counsel disclaimed, in writing, this term when he failed to argue the law related to entitlement based on many years of use as provided in well-settled law. Without trademark registration in all the classes of use we prosecuted in our new application; anyone could use it and not violate a registration. The remarkable admission against interest made some years ago by prior counsel (I reported to the board on all this during a Thursday night session) made it a bit difficult for us but after several years pending and the initial rejection I anticipated and reported on last year, we have full approval based on an appeal of the examining attorney's rejection. He originally found that The National Association for Amateur Radio was too descriptive and could be used by any national association for amateur radio. The limited product scope we had registration for was the combination ARRL, The National Association for Amateur Radio and only for certain uses and with the punctuation in combination with the ARRL mark which, by the way, was never registered by itself. We own only the logo ARRL for certain uses. The filings with our history of significant use created to support our DC firm are too massive to attach -Megabytes of PDF Evidence of long term use for the appeal. I will have it all with me this week. My personally drafted and signed affidavit certifying the history of use is attached with a list, but the supporting documents - public records now, can be provided through file transfer or a USB stick if someone is interested. By the way, though not on the original "fix-it" list, being the EC authorized trademark liaison for our League, I authorized our DC counsel to prepare and file an application for ARRL, standing alone, 2 years ago and we have completed prosecution of that. As with all the other problematic marks we fixed, many filed in the wrong name and many for the wrong class , service or product, we are batting 1000. We STILL need to file certain statements of use in the various categories we successfully prosecuted through the trademark office examiner. There have been inexplicable delays in obtaining what I need for our counsel since last year as HQ has been too busy to respond to my numerous, detailed written requests and phone calls. Working directly with counsel to HQ would multiply the cost significantly as counsel would need to understand our activities and needs. We have paid significant fees to extend the proof of use filing deadlines for each category for affidavits of use filings each 6 months, several time. I expected this project to be done a year ago. More good news. Though I expected this as well based on my 46 years experience, and as I reported to the board a year ago, we just received full trademark protection for NATIONAL TRAFFIC SYSTEM, not just the initials NTS which were also approved. This application was rejected some years ago as not subject to trademark protection since anyone could use the descriptive term, according to the examiner. Though appealed several times by prior counsel over many months, we lost. That all was frankly a mistake. I had provided my assistance and advice for years. The public docket at the USPTO shows several failed ARRL appeals. The evidence we filed in our new application and expected new appeal is also rather massive and not included here. The actual documents I can provide but the file is big. It is an interesting history of the NTS. We also have many classes of use approved as well. I do attach my personal affidavit filed verifying the evidence attached to the appeal response with a list. Also attached is the final registration issued July 11th, 2023. At the end of the above attachments, I attach a list of numerous other trademark registrations we have successfully prosecuted over the last several years. All have been allowed but are not issued yet until we file proof of use minimally acceptable under law for each separate category. And you can see the categories for which we claim protection. When I get the documents and data I need from HQ, this whole project comes to what I anticipate will be a very successful ending in spite of the difficulties I encountered and still am. Anyone wanting the gory details, seek me out and I can talk about this for hours. Intellectual property is at least half my practice. I have done many hundreds of trademark applications - maybe more- and conducted many trademark trials, Plaintiff or Defendant, to verdict in my career and would be happy to answer any questions. I will have the files with me electronically. By the way, we have several registrations that seem redundant on the list. They are not. Read the classes of use. DXCC, for example only, is not for just books and publications as filed years ago. It is a for certain membership in a group as described. We fixed that with a new application properly referenced to how we use it. On last thing of historical interest. The old Trademark committee appointed to address my extensive, detailed memo to my director Tom Abernethy (25 pages) dated January 14, 2017 resulted in a rather troubling, unsupported and conclusory report of the Ad Hoc Trademark Committee January 2018, which concluded: "Thus, in most cases, ARRL trademarks do not need the key benefits of registration". The legal reasons were bizarre and simply wrong as opposed to reasonable, supportable conclusions. They suggested we let our registrations expire! (Hint- they were already defective, filed in the wrong name and many wrong classes). We fixed the names on salvageable registrations after a year pending with a special petition for relief with the commissioner of trademarks. I signed the petition for special relief a few years ago. The attorney who undertook our applications for many years back in the day was the only attorney on that committee and paid by us. Let me know if you want a copy of my report from 2017 and their report of 2018 thereafter for reference. I think you would enjoy it. For those that have read this far down, please do ask any question. See you in the Windsor Marriott if the creek don't rise. Bob Famiglio, K3RF, 610-359-7300 ARRL Atlantic Division Director
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Famiglio, Bob, K3RF (Dir, AD)