Tuesday, July 9, 2019

Toy Company WowWee Files Application to Register BOTTLE CAP CHALLENGE as a Trademark

Have you heard of the viral Bottle Cap Challenge making its rounds on social media in recent weeks? The challenge involves normal people (and celebrities) unscrewing a bottle cap with a round house kick. Exciting, huh?
One company, however, is trying to register the phrase as a federal trademark. On July 4, Hong Kong-based toy company WowWee filed an application to register BOTTLE CAP CHALLENGE as a trademark with the U.S. Patent and Trademark Office. The application covers "Games, toys and playthings" in Class 28. WowWee filed the application on an intent-to-use basis. TMEP 806.01(b); 15 USC 1051(b).

Does this mean WowWee can prevent others from using the term BOTTLE CAP CHALLENGE? No.

For starters, the vast majority of those using "Bottle Cap Challenge" are not using it as a trademark (i.e., to identify the source of goods or services). They are only using it as the name of a particular viral challenge. And this fact may make it harder for WowWee to register it as a trademark. See TMEP 1202.04(b) ("The more commonly a term or phrase is used in everyday speech or in an associational or affinitive manner by various sources, the less likely consumers will perceive the matter as a trademark or service mark for any goods and services.").

Further, WowWee's trademark application only covers "Games, toys and playthings." If this application actually registers, WowWee's trademark rights are limited to those goods and anything related to them. Selling unrelated goods or offering unrelated services under the same mark will not infringe the toy company's trademark rights.

And finally, because the trademark application was filed on an intent-to-use basis, WowWee must actually start using BOTTLE CAP CHALLENGE as a trademark for "Games, toys and playthings" and submit sufficient proof of such use to the USPTO before this mark can be registered. See TMEP 1103. If they never start selling toys under this trademark, the application will eventually go dead and the mark won't register.

According to my quick search, this is the first and only federal trademark application for BOTTLE CAP CHALLENGE pending with the USPTO.

My best guess as to why the toy company filed this application? They probably want to market some type of toy or game based on the Bottle Cap Challenge.

Tuesday, June 25, 2019

Sugar Factory Restaurant Files Application to Register Configuration of Colored Sandwich Buns as a Trademark

Colored hamburger buns as a trademark? That's what Sugar Factory, LLC is trying to register by way of a recent application filed with the U.S. Patent and Trademark Office. The restaurant, which has multiple locations nationwide and is apparently frequented by celebrities, filed the application for the mark seen below on June 20th.
The application describes the mark as:
[A] three-dimensional configuration of five burgers, sliders or sandwiches, with the first burger, slider or sandwich having top and bottom buns depicted in the color blue, the second burger, slider or sandwich having top and bottom buns depicted in the color red, the third burger, slider or sandwich having top and bottom buns depicted in the color yellow, the fourth burger, slider or sandwich having top and bottom buns depicted in the color green, and the fifth burger, slider or sandwich having top and bottom buns depicted in the color purple. The broken lines depicting a toy duck, a plate, the shape of the buns, and certain components of burgers, sliders or sandwiches indicate placement of the mark on the goods and are not part of the mark.
The goods covered by the application are "Burgers; sandwiches, sliders." According to the application, the Sugar Factory has used the mark since April 2017.

The specimen submitted with the application, which is supposed to show how the mark is actually used, is below.
A color may be registered as a trademark if it is not functional and shown to have acquired distinctiveness on or in connection with the applicant's goods or services. TMEP 1202.05. A color is functional if it "yields a utilitarian or functional advantage, for example, yellow or orange for safety signs." TMEP 1202.05(b). Further, an applicant must demonstrate that the color mark has acquired distinctiveness, or "source-indicating significance in the minds of consumers." TMEP 1202.05(a). This is a substantial burden. Id.

Does a series of colored sandwich buns yield a utilitarian or functional advantage, like red on a stop sign or yellow/orange on a safety sign? Do you think consumers will recognize the Sugar Factory as the source of these colored sandwich buns? We'll see what the USPTO thinks when this application is assigned to an examining attorney in approximately three months.

Friday, May 24, 2019

Kim Kardashian West Has Already Filed 16 Applications to Register Her Newest Son's Name - PSALM WEST - as a Trademark

Kim Kardashian wasted no time filing applications to register the name of the newest addition to her family, her son Psalm West, as trademarks with the U.S. Patent and Trademark Office. On May 18, less than ten days after Psalm West was born, she filed 16 trademark applications for his name.

The applications cover a variety of merchandise, including:
The applications were filed by an entity called Kimsaprincess Inc., which also owns multiple trademark applications for NORTH WEST, CHICAGO WEST, and SAINT WEST. While that makes it pretty obvious these trademark applications are actually associated with Kim, she also provided her written consent to register PSALM WEST's name as a trademark with the applications, leaving no doubt these applications are actually associated with the real Psalm West.

Section 2(c) of the Trademark Act prohibits the registration of a trademark that consists of the name of a living individual without that individual's consent. In the case of minors, parents can sometimes provide this consent on their behalf. TMEP 1206.04(a).

The serial numbers associated with these applications, all of which were filed on an intent-to-use basis, are below.

Tuesday, May 7, 2019

A Kendall/Kylie Cosmetics Collab? Kendall Jenner Files Trademark Applications for KENDALL, KENDALL JENNER Covering Cosmetics

Kylie Jenner, Kendall's sister, launched her Kylie Cosmetics brand about three years ago and subsequently build it into an empire. Is Kendall now launching her own cosmetic line? Or planning a collaboration with Kylie? According to recent trademark applications, she might be.
On May 2, Kendall Jenner, Inc. filed trademark applications for KENDALL JENNER and KENDALL with the U.S. Patent and Trademark Office. Both applications cover the same goods in Class 3, namely:
Fragrances; eau de parfum; eau de toilette; perfumes; hair care preparations; hair styling preparations; bath and shower gels; bubble bath; body powders; body lotions; body creams; face lotions; body milks; skin toners; skin cleansers; beauty masks; body scrubs; facial scrubs; body oils; deodorant for personal use; lip balm; lip gloss; cosmetics; cosmetic preparations; nail polish; nail polish remover; and nail care preparations
Further, not only did Kendall give consent to Kendall Jenner, Inc. to file her name as a trademark (which is required under Section 2(c) of the Trademark Act), she also gave consent to Kylie's entity, Kylie Jenner, Inc. (see below). In other words, Kylie Jenner, Inc. is permitted to file a trademark application for KENDALL or KENDALL JENNER, strongly suggesting a collaboration between the sisters (which apparently they've had planned for a long time, considering Kendall signed the consent in 2015).
Interestingly, back in 2011 the sisters' legal entities jointly filed trademark applications for KENDALL AND KYLIE covering cosmetics, but those registrations never issued because the trademark was never actually put into use.

Kendall's legal entity also filed these most recent trademark applications on an intent-to-use basis, suggesting it is not using her name as a trademark for cosmetics yet, but has a bona fide intention to do so in the near future. TMEP 806.01(b); 15 USC 1051. According to my quick search, these are the first and only federal trademark applications filed by Kendall Jenner, Inc. in 2019.

For those of you hoping for a cosmetic collaboration between the Jenner sisters, you might be getting your wish soon.

Tuesday, April 30, 2019

Is an NFL Team Coming to Duluth? NFL Files Application to Register DULUTH ESKIMOS as a Trademark for Professional Football Games, Related Services

On April 25, the day the draft started, NFL Properties LLC (the owner of famous NFL trademarks like SUPER BOWL, the NFL logo, and PRO BOWL) filed two federal trademark applications for DULUTH ESKIMOS with the U.S. Patent and Trademark Office.
Apparently, the Duluth Eskimos played in the National Football League in the 1926 and 1927 seasons. While NFL Properties LLC has filed trademark applications for vintage football teams in the past, like the CANTON BULLDOGS, BALTIMORE COLTS, and the BOSTON REDSKINS, those applications only covered apparel (presumably because the NFL was selling vintage football clothing).

While one of the DULUTH ESKIMOS applications also covers apparel, it is the other one that is most interesting. The second DULUTH ESKIMOS application covers the following services in Class 41:
Education and entertainment services in the nature of professional football games and exhibitions; providing sports and entertainment information via a global computer network or a commercial on-line computer service, or by cable, satellite, television or radio; arranging and conducting athletic competitions, namely, professional football games and exhibitions; football fan club services, namely, personal appearances by a costumed mascot for professional football teams; entertainment services, namely, live musical and dance performances provided during intervals at sports events; educational services, namely, conducting physical education programs
Does this mean the NFL is bringing a franchise to Duluth? On the one hand, the intent-to-use filing basis of the application does suggest that NFL Properties LLC has a bona fide intention to provide these services under this trademark in the near future. TMEP 806.01(b); 15 USC 1051(b). And this application will go dead unless the NFL actually starts using the DULUTH ESKIMOS trademark in conjunction with these services and submits sufficient proof of such use to the USPTO. See TMEP 1103. Finally, these are the typical services you see listed in a trademark application or registration for an NFL team's name.

On the other hand, NFL Properties LLC doesn't own any other trademarks for NFL team names. As I've blogged about before, most NFL team names are owned by the local franchise owner (although it is an attorney at the NFL who files the applications in the local franchise's name). For example, New England Patriots LLC owns the NEW ENGLAND PATRIOTS trademarks and Cincinnati Bengals, Inc. owns the CINCINNATI BENGALS trademarks. If this application is actually for a team's name, it would be the only team name owned by NFL Properties LLC instead of the local franchise (though, technically, NFL Properties LLC could later assign this trademark to the local franchise).

Perhaps the filings were made only because the NFL intends to send apparel or otherwise promote NFL games in conjunction with this vintage trademark? Or perhaps there are talks to bring back the Duluth Eskimos? Unfortunately, it's impossible to ascertain the NFL's intention from these filings alone. As the applications progress, we may get more details.

Friday, April 26, 2019

Is Travis Scott Opening a Retail Clothing Store Called S.P.A.C.E VILLAGE? A Recent Trademark Application Suggests He Might Be

Is the rapper Travis Scott opening up a retail clothing store called S.P.A.C.E VILLAGE? He might be, according to a recent federal trademark application.
On April 22, an entity called LaFlame Retail, Inc. filed an application to register S.P.A.C.E VILLAGE as a trademark with the U.S. Patent and Trademark Office. The application was filed in two classes for the following goods and services:
  • Clothing, namely, t-shirts, shirts, long-sleeved shirts, polo shirts, hooded shirts, sweatshirts, hooded sweatshirts, jerseys, shorts, sweat pants, jackets, scarves, pajamas, robes, boxer shorts, boxer briefs, underwear, head bands, wrist bands as clothing, swimsuits, skirts, dresses, bras, cardigans, blouses, tank tops, pants, coats, sweaters, leg warmers, socks, belts; footwear, namely, shoes, athletic shoes, slippers, boots, sandals; headwear, namely, hats, visors, beanies and caps (Class 25); and
  • Retail store services featuring clothing and general merchandise; On-line retail store services featuring clothing, general merchandise and downloadable pre-recorded music and video (Class 35).
In short, is appears LaFlame Retail, Inc. intends to use this trademark as the name of an extensive clothing line and a retail clothing store.

Is LaFlame Retail, Inc. associated with Travis Scott? For starters, "La Flame" is the rapper's well-known pseudonym. Further, last month a similarly-named entity called Laflame Enterprises, Inc. used the same attorney to file a trademark application for TRAVIS SCOTT, which I blogged about here. It's therefore safe to assume this application is also related to Travis Scott.

So, does this application mean Travis Scott is actually opening a retail clothing store and/or releasing a S.P.A.C.E VILLAGE clothing line? Maybe. This application was filed on an intent-to-use basis, suggesting the S.P.A.C.E VILLAGE trademark is not currently being used with the goods/services listed above, but LaFlame Retail, Inc. has a bona fide intention to use it in the near future. TMEP 806.01(b); 15 USC 1051(b). If the applicant wants this trademark to actually register, it will need to start using the trademark in interstate commerce and submit sufficient proof of same to the USPTO. See TMEP 1103. If it does not, the application will eventually be abandoned.

According to my quick search, this is the first and only federal trademark application owned by LaFlame Retail, Inc.