USPS files petition to protect its brand, files protest against federal agency’s attempt to register “post office”

USPS filed a petition to cancel the trademark registration of a foreign business using the eagle designs. USPS argued” that it has been damaged , is currently being damaged and will continue to be damaged by the continued registration of the Foreign company’s trademark.”

The Postal Service argued further that it has used various eagle designs in connection with its goods and services including but not limited to mail and other delivery services and thus owns trademark rights in these eagle designs. For example, the Postal Service has used and owns valuable trademark rights in the following two eagle designs (the “Full-Bodied Eagle” and the “Sonic Eagle,” respectively). The Postal Service wrote in its petition that they have made widespread and continuous use of its Full-Bodied Eagle Design mark since 1971 and the Sonic Eagle Design mark since 1993.

The Foreign company claims to have first used the eagle trademark in April 2008 and was granted registration for the eagle mark in 2009– approximately fifteen years after the Postal Service started using its SONIC EAGLE mark and over thirty years after the Postal Service started using the FULL-BODIED EAGLE mark. The mark consists of the stylized head of an eagle inside an incomplete rectangle to the left of the stylized wording “UNITED STATES” over the wording “POSTAL SERVICE” separated by a line.

As USPS noted:  Assignee’s use and registration of its mark dilutes the famous and distinctive quality of the Postal Service’s Eagle Design marks. The continued registration of Assignee’s trademark is likely to cause confusion, or mistake, or to deceive consumers as to the source of each party’s services and may lead consumers to falsely infer the existence of an affiliation, connection or association between the parties.  Assignee’s trademark incorporates the Postal Service’s SONIC EAGLE mark in its entirety, with some additional minor elements. Those additional elements of Assignee’s trademark are not sufficiently distinctive to differentiate Assignee’s mark from the Postal Service’s SONIC EAGLE mark.

In the second battle

USPS is seeking  to halt registration of the trademark “OLD POST OFFICE filed by the United Stated General Services Administration (GSA) . GSA is claiming the wording was first used as early as 01/01/1949  and is now in use as shown in the snapshot of its website below.

According to the records: “It is not clear from the record that the mark is in lawful use in commerce under Trademark Act Sections 1 and 45, 15 USC 1051. The applied for mark includes the wording “POST OFFICE.” Exclusive rights to this wording have been granted by statute to the United States Postal Service. See 18 USC 1729 below. However, applicant does not appear to be an authorized party in the statute and the application does not otherwise indicate that applicant is in authorized party.The following statute is referenced regarding the use of the term Post Office. It appears that the applicant is not entitled to use the term Post Office.”.

§ 1729. Post office conducted without authority                                              

Whoever, without authority from the Postal Service, sets up or professes to keep any office or place of business bearing the sign, name, or title of post office, shall be fined under this title.

It seems that there is some confusion over “OLD POST OFFICE” as both parties have been filing for extensions since last year.