Wednesday, September 19, 2018

Marilyn Monroe Fireworks? Maybe, According to a Recent Trademark Application

Is the estate of Marilyn Monroe getting into the fireworks business? It might be, if a recent trademark application is any indication.
On September 14th, The Estate of Marilyn Monroe LLC filed an application to register MARILYN MONROE as a trademark for "fireworks" in Class 14 with the U.S. Patent and Trademark Office (ed. - are these Marilyn Monroe branded fireworks or fireworks in the shape of Marilyn Monroe?). The estate filed the application on an intent-to-use basis, suggesting it is not currently using the late actresses's name as a trademark in conjunction with fireworks yet, but has a bona fide intention to do so in the near future. TMEP 806.01(b); 15 USC 1051(b).

As I've blogged about before, the estate of Marilyn Monroe regularly files trademark applications for a variety of goods and services. According to the estate's website, consumers can purchase MARILYN MONROE spa services, jewelry, mobile applications, clothing, books, movies, and drinkware. And now, maybe, fireworks?

Two interesting things to note about this application. First, you'll notice the application indicates "The name(s), portrait(s), and/or signature(s) shown in the mark does not identify a particular living individual." That language stems from Section 2(c) of the Trademark Act, which prohibits the registration of any trademark that "[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent..." See also TMEP 1206 et seq. In this case, Marilyn Monroe is not living, so the application is making it clear consent is not required.

Second, all the trademark registrations owned by Marilyn Monroe's estate demonstrate how trademark law can be used to leverage control over a celebrity's name, either in conjunction with or as an alternative to state right of publicity laws. Generally, right of publicity laws prevent the use of one's name or likeness for a commercial purpose without that individual's consent.

In the case of Marilyn Monroe, several years ago the 9th Circuit Court of Appeals ruled that California's post-mortem publicity statute did not apply to her because she died in New York (which does not have a law providing for a post-mortem right of publicity). Since it does not apply to Marilyn Monroe, the estate is using trademark law as a means to take control of the actress's name, especially in certain market segments (like spa services, jewelry, and clothing). As a result, if a third party uses MARILYN MONROE or a confusingly similar mark in conjunction with goods or services related to those offered by the estate, the estate may have a claim for trademark infringement. Additionally, if the estate shows the MARILYN MONROE trademark is famous, it may have a claim for trademark dilution, which would allow the estate to broadly enforce its trademark rights against those selling goods and services in almost any industry.

According to my quick search, The Estate of Marilyn Monroe LLC owns 25 active trademark applications or registrations with the USPTO for MARILYN MONROE or variants. A creative legal approach for an estate that lost the right of publicity battle and needed another mechanism for protecting the actress's name.

Monday, September 10, 2018

Coaxial Cable Designer/Manufacturer Files Application to Register Coaxial Cable Pattern as a Trademark

In a recent application that demonstrates trademarks are more than just words, logos, and slogans, Megaphase, LLC, a designer and manufacturer of coaxial cables and connectors, filed an application to register the coaxial cable pattern seen below as a trademark with the U.S. Patent and Trademark Office. But will it get a registration on the Principal Register (which affords the most legal benefits)?
The application, filed on September 5th, describes the trademark as "repeating pairs of yellow dashes applied in a spiral pattern along the length of a coaxial cable." The color yellow is claimed as a feature of the mark. The application covers "coaxial cables" in Class 9 and the mark has been in use since May 31, 2015 (according to the application).

Repeating patterns marks can function as trademarks. TMEP 1202.19 ("Repeating-pattern marks are often applied to clothing and fashion accessories, but they also appear on other goods, including furniture, bedding, dinnerware, luggage, paper products, and cleaning implements. In addition, these marks frequently appear on packaging for a variety of goods and have been registered for use in connection with services such as retail stores and travel agencies."). In fact, the USPTO's Trademark Manual of Examining Procedure has an entire section devoted to examples of various repeating pattern marks. TMEP 1202.19(k).

Whether a repeating pattern actually functions as a trademark or is ornamental or decorative depends on the type of pattern, how it is used, industry practice, and several other factors. When determining whether a repeating pattern functions as a trademark or is merely ornamental/decorative matter, the USPTO will consider a variety of factors, including:
  • Whether the pattern is common or widely used (TMEP 1202.19(e)(i)(A));
  • Whether the pattern creates a commercial impression distinct from any wording or other matter that appears on the relevant goods (TMEP 1202.19(e)(i)(B));
  • The nature of the repeating pattern, including whether it contains any arbitrary wording (TMEP 1202.19(e)(i)(C));
  • The industry practice and whether it is common in the industry to use repeated patterns in an ornamental/decorative manner or as trademarks (TMEP 1202.19(e)(i)(D));
  • Whether consumers are used to seeing repeating patterns on the type of product, such that they either view them as ornamental/decorative features or as trademarks (for example, repeating patterns are commonly used on items like clothing, furniture, and pillows, so it would be difficult to argue a pattern is functioning as a trademark when used on those goods) (TMEP 1202.19(e)(i)(E)).
If a repeating pattern mark is inherently distinctive, the USPTO will register it on the Principal Register. However, if the repeating pattern is more common, basic, and/or decorative, the USPTO will refuse to register it as a trademark. If the pattern is capable of functioning as a trademark after obtaining acquired distinctiveness in the marketplace, the USPTO may register it on the Supplemental Register.

According to my quick search, MegaPhase does not own any U.S. trademark registrations for a coaxial cable pattern. However, it did obtain a registration back in 2010 for "the color red-orange, Pantone warm red C, as applied to the entirety of the surface and length of a cable." However, that registration is on the Supplemental Register because color marks can never be inherently distinctive (see TMEP 1202.05(a)) and MegaPhase did not attempt to argue that its use of this color on coaxial cables had acquired distinctiveness such that registration on the Principal Register was proper.

Wednesday, August 29, 2018

An American Idol Amusement Park Attraction? Maybe, According to a Recent Trademark Application

An American Idol-themed amusement park attraction may be in the works, if a recent trademark application is any indication.
On August 24th, FreemantleMedia North America, Inc. (the producer of American Idol) filed an application to register AMERICAN IDOL (in standard characters) as a trademark with the U.S. Patent and Trademark Office. But the services listed in this most recent application aren't for a reality show (they already have a registration covering those services). Instead, Freemantle North America listed the following services in the application:
Entertainment services in the nature of an amusement park attraction, namely, a themed area
An American Idol amusement park attraction? How will that work? Is it a ride? A talent competition? In what amusement park(s) will the attraction be placed? Unfortunately, the application does not provide any additional information related to Freemantle North America's plans.

But such information may come in the near future. Freemantle North America filed the application on an intent-to-use basis, suggesting it is not currently using AMERICAN IDOL as a trademark for these services yet, but has a bona fide intention to do so in the near future. 15 USC 1051(b); TMEP 806.01(b). Before this application can mature into a registration, however, the production company must start rendering the entertainment services listed in the application in interstate commerce and submit sufficient proof of same to the USPTO. See TMEP 1103.

In other words, generally that means the attraction is open and members of the public are traveling across state lines to visit it. When that occurs, Freemantle North America can submit various promotional materials used in the sale or advertising of the attraction to secure its registration for these services (so long as such materials prominently display the AMERICAN IDOL mark). TMEP 1301.04 et seq.

By that point, however, it's likely the theme park will already be announced. So if you're an American Idol fan, keep your eye out for a possible amusement park attraction coming soon.

Tuesday, August 21, 2018

Is GOOD COLD BEER Merely Descriptive of "Beer"?

On August 16th, a brewing company in Georgia filed an application to register GOOD COLD BEER for "Beer" in Class 32 as a trademark with the U.S. Patent and Trademark Office. The brewing company filed the application on an intent-to-use basis, suggesting it is not currently using the phrase as a trademark but has a bona fide intention to do so in the near future. But will it obtain a registration on the Principal Register?
As I've blogged about before, merely descriptive trademarks will be refused registration on the USPTO's Principal Register (which affords the most legal benefits) under Section 2(e)(1) of the Trademark Act unless and until the mark acquires distinctiveness (see Section 2(f) of the Trademark Act). Merely descriptive trademarks describe "an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services." TMEP 1209.01(b). For example, in my blog post linked to above, the USPTO deemed the mark REMOTE DRUG TESTING to be merely descriptive of drug testing services.

In addition, the USPTO will refuse to register, on the Principal or Supplemental Registers, informational phrases or "common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry." In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); TMEP 1202.04(a). The USPTO deems this matter not registerable "because consumers would perceive it as imparting its ordinary meaning and not as serving to identify and distinguish the applicant’s goods or services from those of others and to indicate their source." TMEP 1202.04(a). For example, the term BEST BEER IN AMERICA was deemed "so highly laudatory and descriptive of the qualities of its product that the slogan does not and cannot function as a trademark." In re Boston Beer Co. L.P, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999).

Will GOOD COLD BEER suffer a similar fate? Will it be deemed merely descriptive and therefore appropriate only for registration on the Supplemental Register rather than the Principal? Will it be deemed so highly laudatory and descriptive that it must be refused registration completely? None of the above? We'll find out in approximately three months after this application is assigned to an examining attorney at the USPTO.

Tuesday, August 14, 2018

Samsung Files Applications to Register 8K, QLED 8K as Trademarks

Samsung appears to be gearing up for the launch of its new 8K television line with recent trademark applications filed on August 9th. On that date, the electronics giant filed applications to register a stylized 8K and QLED 8K as trademarks with the U.S. Patent and Trademark Office.
Both applications cover the same goods in Class 9, namely:
Televisions; Digital signage; Digital signage monitors; Monitors for large format displays, namely, liquid crystal display (LCD) monitors, light emitting diode (LED) monitors and plasma monitors; Data processing apparatus for large format display; Large-screen light emitting diode (LED) displays; Panels for large format displays, namely, LCD large format display panels, LED large format display panels, large format display panels and large format display electric panels; Computer software for operating digital signage; Digital signage players, comprised of computers, computer hardware and LCD displays; Digital signage display panels; Television sets; Television receivers; Display panels for television; Monitors for commercial purpose, namely, computer, television, video, and touchscreen monitors
Additionally, Samsung is claiming a priority date of August 3, 2018 under Section 44(d) of the Trademark Act based on similar applications filed in the UK. See TMEP 1003.

But will the USPTO refuse to register these marks as merely descriptive of the television-related goods listed in the application? In general, a merely descriptive mark "describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services." TMEP 1209.01(b). Merely descriptive trademarks cannot be registered on the Principal Register (which affords the most legal rights) until and if such marks become distinctive as applied to the applicant's goods or services in commerce (often referred to as "acquired distinctiveness" or "secondary meaning"). TMEP 1212; 15 USC 1052(f).

The term "4k" refers to a screen resolution of 4,000 pixels, so presumably "8k" refers to a screen resolution of 8,000 pixels. Additionally, "QLED" is short for quantum-dot light-emitting diodes. Are such terms merely descriptive of a quality, characteristic, function, or feature of televisions? We'll find out what the examining attorney assigned to these applications thinks in about three months, but in past trademark applications for marks containing QLED and 4K covering similar goods, Samsung did receive merely descriptive refusals (like this one for QLED TV) or was required to disclaim "4k" because the USPTO deemed it to be a merely descriptive component of the mark.

What about the stylization of 8K and QLED 8K? Does presenting the marks in gold font avoid a merely descriptive refusal? Not necessarily. Generally, "[a]dding  stylization to descriptive or generic wording does not render the resulting mark registrable on the Principal Register unless the stylization creates a commercial impression separate and apart from the impression made by the wording itself, or the applicant can otherwise show by evidence that the particular stylized display has acquired distinctiveness." TMEP 1209.03(w). My guess is that the examining attorney will ignore the slight stylization and focus on the wording.

According to my quick search, Samsung has filed 140 trademark applications with the USPTO in 2018, including two applications filed earlier this year for 8K QLED and 8K HDR ELITE. The application for 8K QLED, filed in January 2018, received an Office action because the USPTO deemed it to be merely descriptive of televisions and because the USPTO believes it is confusingly similar to a registration for QLED owned by LG Electronics (and also due to an issue with the way the goods are described in the application).

Friday, July 27, 2018

Academy of Country Music Files Application to Register Its Award Trophy as a Trademark

Not all trademarks are words or logos, as this recent trademark application filed by the Academy of Country Music demonstrates. On July 23rd, the Academy filed an application to register the design seen below as a trademark with the U.S. Patent and Trademark Office.
The application describes the mark as "a 3-dimensional stylized rendering of an award trophy shaped as a cowboy hat on top." The application claims the Academy has used this design as a trademark in conjunction with the following services in Class 41 since at least as early as May 21, 2003:
Entertainment services, namely, award ceremonies in the field of music; Entertainment in the nature of performances and appearances by celebrities and musical artists and groups; Entertainment services in the nature of live musical performances; Entertainment services, namely, an on-going series featuring an award ceremony honoring those in the country music industry provided through internet, television, satellite, and cable networks
As I've blogged about before, it is possible to obtain trademark protection and a trademark registration for the way something looks, so long as the mark is (1) non-functional and (2) distinctive. TMEP 1202.02TrafFix Devices, Inc. v. Mktg.Displays, Inc., 532 U.S. 23, 28-29 (2001).

Generally, a design is functional if it is "essential to the use or purpose of the article or if it affects the cost of quality of the article." TMEP 1202.02(a)(iii)(A) (quoting TrafFix, 532 U.S. at 33). Additionally, because product designs are never inherently distinctive, an applicant must show that the design has acquired distinctiveness (i.e. consumers have come to recognize the product design as being associated with the applicant). TMEP 1202.02(b)(i).
Interestingly, the Academy of Country Music already owns a registration for the design of its award trophy seen above. That design, which consists of "a 12" tall, 3-dimensional stylized rendering of a cowboy hat in satin silver on a black base" registered on August 31, 2004 and covers "Entertainment services, namely organizing and conducting annual entertainment award ceremonies and television shows" in Class 41. That registration also lists a first use date of May 21, 2003.

Why file a new application for the same design? That's not clear, but if I had to guess, I'd guess (1) to submit a new, sleeker drawing of the trophy and/or (2) to expand the services covered by the registration (one cannot expand the scope of the goods or services listed in a trademark application after filing - see Trademark Rule 2.71(a) and TMEP 1402.06).

Wednesday, July 25, 2018

Recent Trademark Application for LIL MAYO Covers "Personal Appearances by a Fictitious Alien Character"

Just last week I blogged about a recent application to register the name of the popular BOOP MY NOSE Instagram account as a trademark with the U.S. Patent and Trademark Office. A couple days later, another popular Instagram account filed an application to register the account's name as a trademark - LIL MAYO. Is this a new trend?

On July 20th, an individual in California (apparently the individual behind the Instagram account), filed an application to register LIL MAYO as a trademark with the USPTO. The individual filed the application in two classes - 35 and 41 - for the following services:
(35) Endorsement services, namely, promoting the goods and services of others; (41) Entertainment services, namely, personal appearances by a fictitious alien character, Lil Mayo; Fashion modeling for entertainment purposes; Entertainment services in the nature of live visual and audio performances by a fictitious alien character, Lil Mayo
According to the application, LIL MAYO has been used as a trademark in conjunction with these services since April 21, 2015.
A post shared by 👽#LILMAYO👽 (@lilmayo) on
Side note - typically the USPTO does not favor an applicant using its own trademark in the identification of goods and services (LIL MAYO, in this case), so the applicant may be required to delete "LIL MAYO" from the identification of services before this mark can register (assuming there are no other issues). TMEP 1402.09.

Earlier this year, the same individual that filed this application filed another application for LIL MAYO covering "t-shirts." However, the USPTO issued an Office action refusing to register that trademark due to a likelihood of confusion with an existing registration for MAYO owned by the Mayo Foundation for Medical Education and Research that also covers various clothing items, including t-shirts. The applicant will have a chance to respond to the refusal, but has not yet done so.

Additionally, this individual owns a pending application for the alien head logo seen below that covers "hats" and "t-shirts." That application will be published for opposition on August 14, 2018 - the final phase of the registration process for a trademark that is already in use. See TMEP 1502.
As of the date of this post, the Lil Mayo Instagram account is a verified account with 1.8 million followers and consists primarily of photographs and videos of a little alien doing all sorts of wild stuff (as the Instagram post above from the account demonstrates).