Monday, January 14, 2019

POPSUGAR Inc. Files Application to Register Its Popular #TWINNING Hashtag as a Trademark

POPSUGAR's #Twinning celebrity lookalike tool took off in popularity a couple weeks ago. The tool allows you to upload a selfie, then uses an algorithm to match you with your celebrity "twin." Social media users have been posting the matches to their friends and followers under the hashtag #Twinning (which is also the name of the tool).
The hashtag is now the subject of a federal trademark application, which POPSUGAR Inc. filed on January 9th. The #TWINNING application covers the following services in Class 42:
providing temporary use of on-line, non-downloadable software to match the photograph of the user with similar photographs or images of celebrities, public figures or pop culture characters, for entertainment purposes
According to the application, POPSUGAR first started using #TWINNING as a trademark in conjunction with these services in February 2018. The screenshot above is the specimen POPSUGAR submitted with the application to prove it is using the hashtag as a mark. See TMEP 1301.04.

Don't let this application fool you into thinking any hashtag can be registered as a trademark. They can't, because "the hash symbol and the wording HASHTAG do not provide any source-indicating function because they merely facilitate categorization and searching within online social media..." TMEP 1202.18. However, hashtags can be registered as trademarks if they function as an identifier of the source of the applicant's goods or services. Id. If POPSUGAR only used #Twinning as a hashtag on social media, it would not be able to register the term as a trademark. But because the hashtag is also the name of the software tool, POPSUGAR has a better chance of getting it registered. See TMEP 1202.18(b).

A quick search of the U.S. Patent and Trademark Office's database reveals POPSUGAR currently owns 59 active trademark applications or registrations (though this is the first one for #TWINNING).

On another note, did you submit your selfie to the #Twinning tool? Before you do, you might want to read POPSUGAR's terms. As noted by The Fashion Blog, by uploading your image to the #Twinning tool, you are granting POPSUGAR a very broad license to use your image for nearly any purpose (though such broad licenses aren't uncommon in the social media space).

Thursday, December 27, 2018

A CADDYSHACK Alcohol? Maybe, According to a Recent Trademark Application

Fans of the 1980 movie Caddyshack may get Caddyshack-themed alcohol in the near future, if a recent trademark application is any indication. On December 21, Warner Bros. Entertainment Inc. filed an application with the U.S. Patent and Trademark Office to register CADDYSHACK as a trademark for "alcoholic beverages except beer" in Class 33.
Warner Bros. filed the trademark application on an intent-to-use basis, suggesting it is not currently using CADDYSHACK as a trademark for alcoholic beverages except beer yet, but has a bona fide intention to do so in the near future. TMEP 806.01(b); 15 USC 1051(b). Warner Bros. will need to start using CADDYSHACK as a trademark for those beverages before this mark can register. TMEP 902. In other words, this application does not guarantee that Warner Bros. will release a Caddyshack alcohol, but it does (or is supposed to) mean something concrete is in the works.

According to my quick search, Warner Bros. owns five other trademark registrations for CADDYSHACK covering a variety of merchandise, but this is the first one for alcohol. Those looking for Caddyshack alcohol should keep their eyes peeled (although fans wanting a Caddyshack beer might be out of luck).

Wednesday, December 19, 2018

Miami Dolphins File Trademark Application for MIAMIRACLE Five Days After Walk-Off Victory Over Patriots

On December 9, 2018, with 7 seconds left in the fourth quarter, the Miami Dolphins took the ball 69 yards, lateraling it twice, to beat the New England Patriots 34-33. You can see a video of the play here. To Patriots fans, it was a nightmare. To Dolphins fans, it became the "Miami Miracle." And now the Miami Dolphins appear to be capitalizing on that phrase with a federal trademark application for MIAMIRACLE.
The Dolphins (or, more accurately, the Miami Dolphins, Ltd.) filed the trademark application with the U.S. Patent and Trademark Office on December 14. The application covers a wide variety of goods and services (mostly merchandise and novelty items) across 9 different classes, including the following:
  • Computer game software and disks and video game cartridges (Class 9);
  • Jewelry and watches (Class 14);
  • Magazines and books featuring football; pens; pencils; stickers; decals (Class 16);
  • All-purpose sport bags, athletic bags, and carrying bags (Class 18);
  • Wall fixtures, namely, three-dimensional wooden designs to be attached to the walls of rooms (Class 20);
  • Mugs; beverageware; glassware (Class 21);
  • A variety of apparel including T-shirts, sleepwear, athletic uniforms, and jerseys (Class 25);
  • Toys and sporting goods (Class 28); and
  • Entertainment services in the form of professional football games and exhibitions (Class 41).
The Dolphins filed this application on an intent-to-use basis, meaning the NFL team will need to actually start using MIAMIRACLE as a trademark in conjunction will all the goods and services listed in the application before the term can be registered as a trademark. TMEP 806.01(b); 15 USC 1051(b).

This isn't the first NFL team to file a federal trademark application for a "miracle." Last year, the Minnesota Vikings filed trademark applications for MINNESOTA MIRACLE and MINNEAPOLIS MIRACLE after their win against the Saints in last year's NFL playoffs. Most of those applications, which I blogged about here, are close to registration.

Tuesday, December 18, 2018

Barbour Files Application to Register Jacket Design as a Trademark

Think Barbour jackets have a distinctive look? Barbour does, and the clothing company is seeking to protect that look through a federal trademark registration.

On December 13, J. Barbour & Sons Ltd. filed a federal trademark application with the U.S. Patent and Trademark Office for the jacket configuration seen below.
Note that Barbour is not seeking to register the entire jacket design. The areas depicted by dotted lines are not part of the mark. Instead, Barbour describes the mark as follows:
The mark consists of a three-dimensional configuration of an outerwear design featuring a combination of the following elements: (a) four pockets placed and oriented as follows: two on each of the front left and right side beginning at the mid-breast of the jacket and extending to the waist of the jacket; two large pockets on each of the left and ride side of the jacket beginning at the waste [ed. - sic] and extending to just above the bottom of the jacket both with exterior flap closures and two eyelets on the underside of the front pockets; (b) a metal zipper pull configured in a ring shape with the top quarter of the ring being solid on a two-way opening zip; (c) a collar made of corduroy with detachable throat cover; and (d) a studded flap that closes over the entirety of the front zipper on the middle of the jacket. 
The application covers "Clothing and outwear, namely, coats and jackets" in Class 25 (not surprisingly). According to the application, Barbour has been using this design as a trademark since 1980.

As I've blogged about before, a product design trademark (often referred to as "trade dress") can be registered as a trademark if it is (1) non-functional and (2) inherently distinctive or has acquired distinctiveness in the marketplace. TMEP 1202.02TrafFix Devices, Inc. v. Mktg.Displays, Inc., 532 U.S. 23, 28-29 (2001).

Generally, to show this coat design is non-functional, Barbour will need to demonstrate that the features it seeks to register are not essential to the use or purpose of the article and do not affects the cost or quality of the article. TMEP 1202.02(a)Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995). For example, Alexander Wang (which I previously blogged about) is having difficulty showing that its configuration for several zippers on a handbag isn't functional, in part because (1) Alexander Wang's advertising stated that the separate zipper compartments are for "multi functionality" and (2) several other designs from third parties incorporated zippers in the same areas, indicating there is not a wide variety of alternative designs available to competitors.

If Barbour can demonstrate that its jacket trade dress is not functional, it must show that the design has acquired distinctiveness in the marketplace, because product designs are never inherently distinctive. Wal-Mart Stores, Inc. v Samara Bros., 529 U.S. 205, 215 (2000). Generally, that means Barbour will need to submit convincing evidence demonstrating to the USPTO that when consumers see the jacket design Barbour seeks to register, they recognize it as a Barbour jacket (not just any jacket).

So, is Barbour's pocket placement, zipper design, and zipper flap essential to the use or purpose of the jacket? Are there other alternative jacket designs available to competitors? Or would designing around this configuration be too costly? Do you recognize this configuration as a Barbour jacket?

Like Alexander Wang, Barbour may have a difficult time convincing the USPTO that this trade dress is registerable. We'll see what the USPTO thinks in approximately three to four months when this application is reviewed by an examining attorney.

Friday, December 7, 2018

Dallas Cowboys Rookie Leighton Vander Esch Files 30 Trademark Applications in Single Day

LVE Development, LLC, a business entity presumably associated with Dallas Cowboys rookie Leighton Vander Esch, had a busy day at the U.S. Patent and Trademark Office on December 3rd. On that day, Vander Esch's entity filed 30 trademark applications ($6,750 in filing fees, if anyone is counting).

Though LVE Development filed 30 different applications, the applications cover only five potential trademarks:
Many of the filings appear to be related to Vander Esch's new online store, which he announced on Twitter two days after the filings.
How can 30 applications cover only five different trademarks? Because LVE Development filed each application in a single class of goods/services. For example, LVE Development filed one application for THE WOLF HUNTER in Class 28 for footballs and another application for THE WOLF HUNTER in Class 36 for a variety of charitable services. It's possible to list multiple classes in a single application, but an issue in one class can hold up the entire application, so it's often best to break up a multi-class filing into separate applications (the filing fees remain the same either way).

Other goods/services covered by these applications include:
  • Advertising services, namely, promoting the brands, goods and services of others (Class 35);
  • Beanies; Football uniforms; Gloves and a variety of other apparel items (Class 25);
  • Charitable services in the nature of providing fitness instruction in the field of football (Class 41); and
  • Backpacks; Athletic bags; Duffel bags; Gym bags; Sports bags; Weekend bags (Class 18).
And how do we know these trademark applications are actually associated with Leighton Vander Esch? Because Vander Esch gave his written consent to file each application and such consent was submitted to the USPTO. That written consent is required under Section 2(c) of the Trademark Act, which prohibits the registration of a mark consisting of the name of any living individual without that individual's written consent. That applies to pseudonyms, stage names, and nicknames as well (i.e. THE WOLF HUNTER). See TMEP 1206.01.

According to my quick search, these are the first and only federal trademark applications filed by LVE Development, LLC.

Thursday, November 15, 2018

Armament Company Files Application to Register the Color Yellow as a Trademark for Non-Metal Hand Restraints

In another application that demonstrates trademarks can be more than just words or logos, a Wisconsin company called Armament Systems and Procedures, Inc. filed an application to register the color yellow as a trademark for "[n]onmetal hand restraints used as handcuffs" with the U.S. Patent and Trademark Office on November 10. The specimen of use submitted with the application is below.
Can a color function as a trademark? Yes, if it is used in a manner that would be perceived as identifying and distinguishing the goods and to indicate their source (as opposed to mere decoration) and (1) the color mark has acquired distinctiveness and (2) the color is not functional.

Color marks are never inherently distinctive. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 211-12 (2000); TMEP 1202.05(a). Instead, an applicant must establish that its proposed color mark has acquired distinctiveness, or secondary meaning, in the marketplace. In other words, through substantial use of a color with particular goods or services, consumers have come to associate that color as identifying the source of the applicant's particular goods or services. An applicant can prove acquired distinctiveness by submitting evidence of the applicant's advertisement expenditures, sales figures, statements from the trade or the public, or other evidence indicating that the public associates the color with the applicant's goods or services. TMEP 1212.06. In the case of color marks, that's a different and high bar to meet.

Registration of a color mark will also be refused if the color is functional. TMEP 1202.05(b). Generally, a color is functional if it "yields a utilitarian or functional advantage, for example, yellow or orange for safety signs." Id. Color marks might also be functional if the color is more economical to manufacture or use (such as a natural color resulting from a by-product of a manufacturing process, in which case forcing others to alter the process to create a different color would put others at a competitive disadvantage) or otherwise offers some unfair competitive advantage. See TMEP 1202.02(a)(vi) (discussing aesthetic functionality).

Do you think a sufficient number of consumers would see yellow handcuffs and know they come from the applicant? Or would they simply see the color as a decorative feature? Does use of the color yellow on handcuffs offer any utilitarian or functional advantage? Armament Systems and Procedures will hope you answered "yes," "no," and "no" if they want this registration to issue.

Side note - the specimen above appears to be digitally created. The USPTO will not accept a computer graphic that merely illustrates what the mark looks like as a specimen. TMEP 904.04(a). Therefore, Armament Systems and Procedures may need to submit a substitute specimen consisting of an actual photograph of the goods.