Alibaba Group Holding Limited is a China-based e-commerce giant specializing in facilitating e-commerce all over the world. If you aren’t familiar with the name Alibaba, you may be more familiar with some of their businesses. For example, Alibaba owns both AliExpress and Taobao, both of which are hotspots for buying cosplays, merch, and other accessories from across the ocean.
Alibaba filed the original application to register the SESAME mark all the way back on January 21, 2014 for use in many markets including electronics, advertising and business management, telecommunications services, educational seminars, and several more. The USPTO first refused to register the mark on March 27, 2014, stating that registration of the SESAME mark was likely to result in likelihood of confusion among other various other existing marks containing the word SESAME. In order to overcome the refusal, Alibaba changed the scope of their mark’s marketplace, limiting it slightly but remaining broad in its application of the SESAME mark.
The application process was originally suspended while the USPTO waited for Alibaba to provide evidence of trademark registration in China, but Alibaba’s SESAME mark was rejected once again on February 24, 2015 due to its similarity to an existing SESAME mark for use in order fulfillment services and downloadable software.
A second rejection at the USPTO was not enough to stop Alibaba from trying once again. On November 19, 2015, the USPTO held up its rejection, but this time it stated that the proposed SESAME mark was too similar to the family of Sesame Street marks including SESAME STREET, SESAME WORKSHOP, SESAME STREET PARENTS, CTW SESAME STREET LIVE, and SESAME PLACE. Because Alibaba’s SESAME mark was intended for educational purposes (among many others), the Sesame Street family of marks were appropriately similar.
The USPTO gave Alibaba the option of amending its application to eliminate the use of its SESAME mark for educational purposes and on August 22, 2016, it was confirmed to have done just that. In the meantime, letters of protest and other issues came up with many of the classes that Alibaba had attempted to register its SESAME mark for. On September 29, 2016, the USPTO withdrew many of its refusals in light of Alibaba’s efforts to comply with the USPTO’s requests and reduce confusion in the marketplace.
But nothing, of course, is ever that easy. Amendments continued to be made to the application throughout 2016 and 2017. In response to another letter of protest, however, the examining attorney took further action regarding the similarity of SESAME to the family of Sesame Street marks. On April 29, 2017, the SESAME mark was refused registration again.
While Alibaba had managed to overcome the barriers of the Sesame Street marks registered for the purpose of education, other SESAME STREET marks in other marketplaces such as for use in entertainment, computer programs, and calendars came to the attention of the USPTO- and to Alibaba. Once again, Alibaba was encouraged to amend the scope of the application and try once again.
The SESAME mark was eventually published for opposition in the Official Gazette on December 19, 2017. It’s no surprise that Sesame Workshop, with its feet dipped in this case already, filed an opposition to the registration of the mark on June 18.
Sesame Workshop cites several of its marks in opposition to the registration of Alibaba’s SESAME mark, including several of its SESAME STREET marks (SESAME STREET, 123 SESAME STREET), SESAME WORKSHOP, SESAME STUDIOS, PLAZA SESAMO, and more. The opposition filed by Sesame Workshop notes (several times) that it is a not-for-profit organization that seeks not only to educate the children of the world, but to protect the integrity of the goodwill and reputation of its marks and its educational and entertainment-focused services. In addition to its entertainment marks, many of its marks are registered in fields of charitable service, streaming, activities and games, theatrical productions, amusement parks, printed publications, housewares, food and beverage items, and more. If Alibaba’s SESAME mark is to be registered for use in marketplaces so similar to its own, Sesame Workshop argues, consumers will be subject to confusion and deception due to the belief that Alibaba’s SESAME mark is affiliated with the goodwill and well-known brand created and maintained by Sesame Workshop.
While Sesame Workshop’s opposition is on our mind, it’s not the only one in play here. Alibaba’s SESAME mark is also facing opposition from Credit Sesame, Inc, a California-based financial advisor and owner of registered marks such as CREDIT SESAME and CREDITSESAME.COM.
As per usual, we’ll have to wait and see where this one takes us. I think that Alibaba’s business is not necessarily going to be confused with the Sesame Street brand, especially because the customer base is not exactly the same. It will certainly be interesting to see what Alibaba is actually planning on doing with the SESAME mark, especially with the wide breadth of the application and Alibaba’s attempt to get as much protection over the SESAME mark as possible. I’m not so sure how this one will pan out, but the USPTO will assuredly take its time with this one.
Author, Caroline Womack, is a rising 3L at Quinnipiac University School of Law and primarily studies intellectual property law, focusing on video game and internet law.