Tuesday, November 21, 2017

Alexander Wang Files Application to Register Fanny Pack Design as a Trademark

On November 16th, AW Licensing, LLC (which appears to be Alexander Wang's trademark holding company and owns several ALEXANDER WANG trademark registrations) filed a federal trademark application with the U.S. Patent and Trademark Office for the fanny pack design seen below (ed. - are fanny packs back in?). AW Licensing filed the application in Class 25 for "fanny packs." According to the application, Alexander Wang has been selling these fanny packs since December 15, 2016.
The application describes the trademark as "a five-zipper and chain design on a fanny pack." Note that the dotted lines help show where the trademark appears on the product but are not actually considered part of the mark. TMEP 1202.02(c)(i)(B). In other words, this application does not cover the entire fanny pack, just the placement of the chain and zippers. The specimen of use submitted with the application, showing how this fanny pack appears to consumers, is below.
Technically, this application is for "trade dress," which is generally defined as the "total image and overall appearance of a product" and "may include features such as size, shape, color or color combinations, texture, [and] graphics." TMEP 1202.02Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1 (1992). As I've blogged about before, trade dress can be registered if it is (1) non-functional and (2) inherently distinctive or has acquired distinctiveness in the marketplace.

Generally, trade dress is functional if it is "essential to the use or purpose of the article or if it affects the cost or quality of the article." TMEP 1202.02(a) Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995) (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850, n.10 (1982)). In considering whether trade dress is functional, the following factors are considered:
  • the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;
  • advertising by the applicant that touts the utilitarian advantages of the design;
  • facts pertaining to the availability of alternative designs; and
  • facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.
TMEP 1202.02(a)(v).

If the trade dress is not functional, it must be inherently distinctive or have acquired distinctiveness in the marketplace. TMEP 1202.02(b). In a 2000 Supreme Court case, the Supreme Court stated that trade dress related to product designs (such as this fanny pack), as opposed to trade dress for product packaging, is never inherently distinctive. Wal-Mart Stores, Inc. v Samara Bros., 529 U.S. 205, 215 (2000). Proving acquired distinctiveness, at least in the product design context, requires a great deal of evidence that shows the product design identifies not only the goods, but the source of those goods. See TMEP 1212  et seq. In other words, Alexander Wang will need to convince the Trademark Office that when consumers see the "five-zipper and chain design" on a fanny pack, they recognize that fanny pack as an Alexander Wang fanny pack.

What do you think? Is the five-zipper and chain design essential to the use or purpose of the fanny pack? Does it affect cost or quality? Does Alexander Wang tout the utilitarian advantages of five zippers? Are there other alternatives for designing a fanny pack? If the design is not functional, do you recognize Alexander Wang as the designer when you see this fanny pack because of the zipper and chain design?

We'll see what the Trademark Office thinks in approximately three months when this application is assigned to an examining attorney.

Monday, November 20, 2017

Trademark Application for Design of Cryptocurrency "Boomcoin" Filed

Led by the surge of BitCoin, cryptocurrency seems to be all over the news lately. It's no surprise, then, that those hoping to cash in on the trend (no pun intended) are also filing cryptocurrency-related trademark applications.

One of the latest trademark applications, filed with the U.S. Patent and Trademark Office on November 15th by a "Mr. Kofi" in Malibu, California, is for the design of the "Boomcoin" seen below.
The application describes the trademark as consisting "of the wording BOOMCOIN in rose gold and gold. A depiction of two coins and a microphone sits on top of the B in the middle of each coin. One coin consist of two colors, rose gold and white in the middle. The other coin is solid gold."

Mr. Kofi filed this application in Class 36 for the following services:
We provide financial services, namely, providing a decentralized and open source crypto-currency on a global computer network utilizing a blockchain. We provide financial advice; Financial affairs and monetary affairs, namely, financial information, management and analysis services; Financial analyses; Financial consultancy; Financial consultation; Financial credit scoring services; Financial forecasting; Financial information and evaluations; Financial information processing; Financial trust administration; Financial trust operations; Financial valuations; Banking and financing services; Cash and foreign exchange transactions; Conducting financial feasibility studies; Currency exchange services; Currency trading; Electronic funds transfer by telecommunications; Electronic transfer of funds; Electronic transfer of money; Electronic transfers of money; Exchanging money; Financial management via the Internet; Financial research and information services; Foreign exchange information services; Issue of tokens of value; Monetary exchange operations; Money exchange services; On-line real-time currency trading; Pawnbrokerage; Providing financial information; Provision of financial information; Surety services; Trustee services.
Note that the USPTO may require the applicant to clean up this description of services, particularly those at the beginning. TMEP 1402.01 states "[t]he identification of goods and/or services must be specific, definite, clear, accurate, and concise." Extraneous wording like "we provide" should be omitted.

According to the application, Mr. Kofi has been providing the listed services under this mark at least as early as January 1, 2013. However, the specimen submitted with the application, seen below, does not appear to show the mark as it is used in conjunction with the advertising or rendering of the listed services.
Acceptable specimens of use for services marks are those "(1) showing the mark used or displayed as a service mark in the sale of the services, which includes use in the course of rendering or performing the services, or (2) showing the mark used or displayed in advertising the services, which encompasses marketing and promotional materials." TMEP 1301.04. Those specimens may include "newspaper and magazine advertisements, brochures, billboards, handbills, direct-mail leaflets, menus (for restaurants), press releases that are publicly available (e.g., on the applicant’s website), and the like." Id.

According to my quick search, approximately 378 cryptocurrency-related applications have been filed with the USPTO and about 315 are currently active.

Tuesday, November 7, 2017

Kanye West Files Four Trademark Applications for YEEZY SOUND...Is It a New Record Label, Streaming Music Service, or Something Else?

Whatever Kanye West's plans are for YEEZY SOUND, they appear to be big (at least according to four recent trademark applications filed for the name). On November 2nd, Mascotte Holdings, Inc. (a holding company for Kayne's trademarks), filed four applications to register YEEZY SOUND [standard characters] as a federal trademark.
Kayne's holding company filed each application in a different class of goods or services (hence the four applications) and the goods and services covered by these application are extremely broad. Some of the standouts include:

All these applications were filed on an intent-to-use basis, suggesting Kayne is not using these trademarks in commerce yet, but has a bona fide intention to do so in the near future. TMEP 806.01(b); 15 USC 1051(b). Before these applications can mature into registrations, Kayne must start using the mark with the listed goods and services and submit sufficient proof of same to the U.S. Patent and Trademark Office. See TMEP 1103.

According to my quick search, these are the first applications for YEEZY SOUND filed by Mascotte Holdings, Inc. and are four of the eight applications filed by the holding company with the USPTO this year. Earlier this year, Mascotte Holdings filed applications for YEEZY (various clothing items), WAVE RUNNER (flip flops, sandals, shoes), and two applications for CALABASAS CLOTHING (various clothing items and bags).

So are the YEEZY SOUND applications related to a new streaming music services, record label, retail stores, or something else? Pay attention to these applications to find out.

Tuesday, October 31, 2017

Despite Recent Claims He is Not Running, Kid Rock Files Trademark Application For KID ROCK FOR SENATE

Despite claiming on October 24th that he is not running for Senate in 2018, on October 26th Robert J. Ritchie (that's Kid Rock's real name) filed a trademark application for KID ROCK FOR SENATE with the U.S. Patent and Trademark Office. This appears to be the first application for KID ROCK FOR SENATE filed by Robert J. Ritchie and the only trademark application filed by him in 2017.
The application covers a few broad goods and services that will likely need to be clarified further before this application can register:
  • Paper goods and printed matter (Class 9);
  • Entertainment services (Class 41); and
  • Clothing (Class 25).
Kid Rock filed this application on an intent-to-use basis, suggesting he is not currently using this mark with the listed goods and services but has a bona fide intention to do so in the near future. TMEP 806.01(b); 15 USC 1051(b). Before this application can fully register, and assuming there are no other issues with it, Kid Rock will need to actually start using this trademark with the listed goods and services and submit sufficient proof of such use to the Trademark Office. TMEP 902; TMEP 904.

How do we know this Robert J. Ritchie is actually Kid Rock? Despite the fact that the mark references Kid Rock, there are a couple other indicators: (1) the address listed in the application (a Tequesta, Florida P.O. box) appears to coincide with Kid Rock's charity and is the same address listed in Kid Rock's AMERICAN BADASS BEER COMPANY and KID ROCK trademark registrations and (2) the attorney listed in this application is the same attorney listed in many other Kid Rock trademark applications and registrations, including the registration for KID ROCK.

Is Kid Rock actually running for Senate or is this just a publicity stunt? Notably, this trademark application does not include "political campaign services," which is often included in trademark applications for political campaigns, such as the application for Evan McMullin's logo I blogged about last year. Therefore, unless and until Kid Rock further clarifies the goods and services listed in this application, submits specimens showing use of this trademark, and/or files a new application that covers political campaign services, we may have to take his word that he is not actually running for Senate in 2018. Bummer?

Monday, October 30, 2017

Is This Recent Trademark Application for Bartending Robots?

On October 25th, a company called Lush Robotics, Inc. filed a federal trademark application with the U.S. Patent and Trademark Office for LUSH [standard characters] covering a variety of goods and services that appear to be related to robots (and possibly bartending robots).
The goods and services covered by this futuristic application are:
  • Entertainment services, namely, appearances by robots; providing bartending services (Class 41);
  • Beverage preparation machines; industrial robots (Class 7); and
  • Computer programs, downloadable computer programs and mobile device software for control of intelligent robot, for beverage, snack and food mixing, for conducting financial transactions, for image recognition, for communicating with other users, for sending beverages and redeemable credits to other users and for social networking (Class 9).
Bartending robots? Or just a fancy vending machine? Unfortunately, this application does not give us much more detail.

Lush Robotics filed the application on an intent-to-use basis, suggesting it is not currently providing these goods/services under the LUSH mark but has a bona fide intention to do so in the near future. TMEP 806.01(b); 15 USC 1051(b). Therefore, Lush Robotics did not need to submit any specimens showing how this trademark is being used in commerce, which would have shed some more light on these goods and services. TMEP 904. However, Lush Robotics will need to eventually submit acceptable specimens if it desires a registration for this mark. TMEP 902.

According to my quick search, Lush Robotics, Inc. does not even have a website, although the trademark application indicates they are a Delaware corporation located in Palo Alto, California. This appears to be the first trademark application filed by the company with the USPTO.

Friday, October 27, 2017

Apple Files Application to Register iPhone X's "FACE ID" as a Trademark. Will it Obtain a Registration?

Apple's new iPhone X comes with a facial recognition feature that unlocks the phone simply by scanning the owner's face (although the accuracy has come under some fire lately). That feature is call the Face ID, and Apple just filed a federal trademark application for the name.
The trademark application for FACE ID, which Apple filed on October 23rd, is for the stylized version of the name seen above. The application covers:
Computer hardware and software for secure biometric authentication, and password management and protection for use on computers, handheld mobile digital electronic devices and mobile telephones
in Class 9 and was filed on an intent-to-use basis (which suggests Apple is not using this as a trademark yet, but has a bona fide intention to do so in the near future - likely because pre-orders for the iPhone X didn't start until October 27th). Interestingly, Apple also claims a priority date of April 24, 2017 based on a trademark application it filed for this same mark in Liechtenstein. Claiming priority based on a foreign application is permitted under Section 44(d) of the Trademark Act. See also TMEP 1003.

Can Apple obtain a registration for FACE ID on the U.S. Patent and Trademark Office's Principal Register though? To obtain such a registration, Apple will need to show, among other things, that FACE ID is not merely descriptive of the listed hardware and software for secure biometric authentication.

A trademark is considered merely descriptive "if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services." TMEP 1209.01(b). For example, BED & BREAKFAST REGISTRY was held merely descriptive of lodging reservation services. In re Bed & Breakfast Registry, 229 USPQ 818 (Fed. Cir. 1986). Merely descriptive trademarks can be registered on the Principal Register if they become distinctive of the applicant's goods or services in the marketplace, but that is nearly impossible to show if a trademark was only recently adopted. TMEP 1212 et seq.

Assuming Apple obtains a registration for FACE ID on the Principal Register, it would have the exclusive, nationwide right to use that term in conjunction with computer hardware and software for secure biometric authentication (subject only to those who may have acquired trademarks rights in this term for the same or related goods prior to Apple's application). If it must amend this application to the Supplemental Register (which I call the minor leagues of trademark registrations) because the Trademark Office deems FACE ID merely descriptive, it would not obtain those exclusive, nationwide rights. TMEP 801.02(b); 15 USC 1094.

So, is FACE ID merely descriptive of computer hardware and software for secure biometric authentication? That will be up to the attorney at the Trademark Office assigned to this application (and perhaps eventually the Trademark Trial and Appeal Board and a federal court) to decide.

According to my quick search, this is the first trademark application for FACE ID filed by Apple and the 47th trademark application filed by the company in 2017.

Monday, October 23, 2017

Is This Trademark Application for ALMOND BUTTER Merely Descriptive or Generic? Not So Fast...

As I've blogged about before, the U.S. Patent and Trademark Office will not register (on the Principal Register at least) trademarks that are merely descriptive without a showing of acquired distinctiveness in the marketplace. 15 USC 1052(e)(1). Merely descriptive trademarks describe "an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services" and the law prefers that these descriptive designations remain free for all to use, at least until the relevant consuming public starts to associate that designation with a particular product or service. TMEP 1209.01(b). Generic terms, which are primarily understood to be the common or class name for particular goods or services, are never registerable as trademarks. TMEP 1209.01(c).
So will the USPTO register the mark ALMOND BUTTER (standard characters) filed by Slippery Squid, LLC on October 18, 2017? It's a descriptive, or possibly even generic, word combination, right? Not so fast. It all depends on the underlying goods or services, which in this case are described as "Audio recording and production; Entertainment services in the nature of live musical performances; Music publishing services; Presentation of musical performances; Production of sound and music video recordings." Is ALMOND BUTTER descriptive or generic for audio recording, music publishing, and music performances? Probably not (unless maybe the music is about almond butter).

In this case, ALMOND BUTTER is likely an arbitrary trademark because it has nothing to do with the underlying music services. Arbitrary trademarks "comprise words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality, or characteristic of the goods or services." TMEP 1209.01(a). APPLE for computers is a good example of an arbitrary trademark. Arbitrary marks are much stronger than descriptive trademarks and therefore typically enjoy a greater degree of protection. Such marks can also be registered on the Principal Register without a showing of acquired distinctiveness.

This ALMOND BUTTER application is a good example of two important trademark concepts - (1) merely descriptive trademarks are weak, more difficult to register, and should be avoided, if possible and (2) the underlying goods and services play an important role in determining a trademark's strength (use of a word on some goods may be generic while use of the same word on other goods may be arbitrary).

In sum, had this application covered "almond butter" rather than music services, the applicant would have been in trouble. However, because the underlying services [probably] have nothing to do with almond butter, the risk of a refusal for being generic or descriptive is probably not likely (although there are several other issues that could prevent registration, such as creating a likelihood of confusion with a mark in a previously filed application or registration).