Monday, 23 February 2015

USPTO dismisses cancellation action for 'nollywood' trade mark

That home DIY moment when you realise you only have two options: down tools and live with it, or spend some cash for an expensive expert to sort it out. This Leo has just learned (a few months later) that the ‘nollywood’ trade mark challenge reported here last year ended without much argument.
Do I need a forklift for this?

Reproduced below is the body of the withdrawal letter to the Trademark Trial and Appeal Board (TTAB) in which the petitioner also asked for a chance to slug it out again in the future. 

Today September 1, 2014, I Olusola Osofisan, wish to withdraw petition #92059251 because I have been unable to secure legal representation due to its cost and my financial limitations.

The withdrawal of this petition does not in any way mean that I am admitting that the Registrant should have been given the trademark of the term Nollywood by the USPTO. In fact, I am more convinced than ever that he pulled a fast one on everyone, but it is what it is and I do not want to set up a potentially bad precedent by mishandling the case that should be left to an attorney.

I believe the USPTO should revisit its approval of this registration by doing additional investigation – or simply review the original due diligence done when the trademark was granted. Somebody goofed in a big way. Dictionaries now list the word as the name of the Nigerian movie industry and this registration flies in the face of simple research. Registrant’s claim to First Use is nullified by the New York Times usage and his further claim to consistent use is nullified by the attached survey and a simple Google search.

This misguided granting of the ownership of the term Nollywood to the Registrant is going to cause havoc for thousands of legitimate businesses around the world (It has already sent an aspect of my business on a downward spiral through Registrant’s C & D, resulting in the loss of hundreds of Dollars). Even the Nigerian Federal Government support of the Nollywood industry through is now threatened through the use of the name. Another party or agency with adequate resources may take up the challenge in a new filing at a future date. I reserve the right, if I can, to join such new filing at a later date.”

TTAB’s response
Unfortunately it didn’t show much sympathy to the petitioner. The cancellation petition was not only terminated but also dismissed with prejudice for failure to follow Rule 2.114(c). So, it seems the petitioner may not get a second bite at the Nollywood cherry. Anyway, let’s see if the ‘nollywood’ trade mark owner will be able to maintain the mark on the register and take enforcement actions where/when necessary.

The moral of the story for this Leo is this: obtain appropriate legal advice from the outset (Says Afro Leo, “it’s meant to help not just for the law but also costs v benefits analysis which includes having your name, documents and so on all over the internet.”).

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