Cody’s legal team had six months to file supporting documentation to proceed with the filing. On November 20, 2019, Cody’s lawyer issued a response, indicating, “The applicant’s mark consists of the words BASH AT THE BEACH. The Cited Mark THE BASH does not include the words “AT” and “BEACH”. These additional words make the applicant’s mark noticeably longer than the Cited Mark THE BASH and create the distinct visual impression of multiple words instead of one word.”
Following the response from Cody’s legal counsel, The United States Patent and Trademark Office issued a refusal order, indicating the term “Bash At The Beach” sounds similar and has similar meaning to “Bash” in context to wrestling services.
“Here, the dominant portion of the registrant’s mark, “BASH” is the first and dominant term of the applied-for mark BASH AT THE BEACH. The marks sound similar and have a similar meaning when viewed in the context of the wrestling services to which they relate.”
On June 17, Cody issued another response, citing other trademark filings that have similar words, including other active wrestling-related trademarks that used the words “Wrestling”, “Fight”, “Rock”, and “Star”. The feeling is that if other wrestling trademarks can share terms, there should be no confusion in having “Bash At The Beach” and “The Bash” co-existing.
“To deny registration of the mark because of a single common word lacks logic and flies in the face of innumerable trademarks on the register that co-exist and have been co-registered without any likelihood of confusion. For example: 1) There are 216 active registrations and applications in Class 041 that include the word WRESTLING; 2) There are 5 active registrations in Class 041 for wrestling-related services that include the word STAR; 3) There are 13 active registrations and applications in Class 041 for wrestling-related services that include the word FIGHT; 4) There are 8 active registrations and applications in Class 041 for wrestling-related services that include the word ROCK; This exemplary list ignores that there are many other marks with similar wordings in Class 041 unrelated to wrestling but related to one another that co-exist. Again, the USPTO regularly allows for co-existing trademark registrations with common words, and, like in this instance, there is no likelihood of confusion. As noted in the previous response, hereby incorporated by reference in its entirety, the marks are two words (THE BASH) and three words (BASH AT THE BEACH) with three words (of the five total) being different from one another. In this light, Applicant renews its position that there is no likelihood of confusion between the marks, and the instant mark should be passed to publication.”
Documents obtained by HeelByNature.com reveal the United States Patent and Trademark Office has denied Cody’s request for reconsideration for the term “Bash At the Beach”.
On July 21, 2020, The United States Patent and Trademark Office issues a response, attaching an article from a Forbes, which read “AEW Stars Claim WWE May Sue Them Over ‘Bash At The Beach’ Trademark”. The USPTO believes Cody has knowledge of that name being owned at one time by World Championship Wrestling, and the confusion it would have with WWE’s current trademark of the name “The Bash”.
Please find Internet evidence attached showing applicant’s knowledge of an old mark owned by World Championship Wrestling, Inc. for BASH AT THE BEACH. Regardless of applicant’s knowledge of possible confusion between the now-expired registration, the likely confusion between the registrant’s mark, THE BASH, and the applicant’s mark, BASH AT THE BEACH, remains a sound basis for refusal under Section 2(d) where the formative portions of the mark and the services are identical in part.
The trademark office also believes Cody did not fulfil the following when re-filing.
Raise a new issue
Resolve all the outstanding issue(s)
Provide any new or compelling evidence with regard to the outstanding issue(s)
Present analysis and arguments that were persuasive or shed new light on the outstanding issue(s).
The argument that other wrestling-related trademarks using the terms “Fight”, “Rock”, and “Star” co-exist with multiple owners was also denied. The trademark office says there is only one other wrestling related trademark using the word “Bash”, and that is owned by WWE.
“The applicant’s arguments with regard to other terms such as “FIGHT”, “ROCK”, and “STAR” being used by multiple entities is unconvincing for a number of reasons. Each term has several uses with several owners in different fields. The term “BASH” has one registrant for wrestling-related services in International Class 41, World Wrestling Entertainment, Inc. The services in question are identical in part. Finally, the applicant’s mark simply adds a venue to the registrant’s mark.”
Cody now has two options to try and gain ownership of the name.
File an appeal with the Trademark Trial and Appeal Board
FIle another request for reconsideration that with and/or overcomes any outstanding final requirement(s) and/or refusal(s)