Wednesday, July 11, 2018

Is SAKE ICE CREAM Merely Descriptive of, or Generic for, Providing Sake Ice Cream and Ice Cream Parlors?

As a matter of practice, when filing a federal trademark application, I generally try to avoid using the term I'm trying to get registered in the identification of goods/services listed in the application. Such use generally signals that the designation the applicant seeks to register is merely descriptive of the underlying goods/services or, worse, generic for them.

Merely descriptive designations cannot function as trademarks until (and if) they acquire distinctiveness and the U.S. Patent and Trademark Office ("USPTO") will refuse to register merely descriptive designations on the Principal Register under Section 2(e)(1) of the Trademark Act. Generic terms can never function as trademarks and the USPTO will absolutely refuse to register such terms as trademarks.
Take a recent application for SAKE ICE CREAM filed by a New York LLC, for example. This application, filed on July 6th, covers
Catering services; Ice cream parlors; Providing of food and beverages namely sake ice cream for consumption on and off the premises; Provision of food and drink namely sake ice cream in restaurants and liquor stores and exhibition spaces; Services for providing food and drink namely sake ice cream
Is SAKE ICE CREAM merely descriptive of these services? Generic?

The USPTO will deem a mark merely descriptive "if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services." TMEP 1209.01(b). Additionally, "the mark need not describe all the goods and services identified, as long as it merely describes one of them." Id. For example, the mark APPLE PIE was deemed merely descriptive of potpourri that smelled like apple pie. In re Gyulay, 820 F.2d 1216 (Fed. Cir. 1987).

The USPTO will deem a designation generic "if its primary significance to the relevant public is the class or category of goods or services on or in connection with which it is used." TMEP 1209.01(c)(i). The USPTO applies a two part test: (1) what is the genus of goods or services at issue? and (2) does the relevant public understand the designation primarily to refer to that genus of goods or services? For example, the term SCREENWIPE for premoistened antistatic cloths for cleaning computer and television screens was determined to be generic for those goods. In re Gould Paper Corp., 834 F.2d 1017, 1018 (Fed. Cir. 1987).

Is SAKE ICE CREAM merely descriptive of the services of providing sake ice cream? Or is it generic? If the mark sought to be registered was ICE CREAM without "SAKE" in front, would it change your opinion?

The determination is significant - generic terms can never function as trademarks and never be registered, but merely descriptive terms may become trademarks upon a showing of acquired distinctiveness and the USPTO will register such terms (if in use) on the Supplemental Register until (and if) the applicant proves acquires distinctiveness. For more on acquired distinctiveness, see TMEP 1212 et seq.

We'll find out what the examining attorney assigned to this application thinks in approximately three months.

Thursday, June 28, 2018

Applications Filed to Register I REALLY DO CARE Phrases as Trademarks After Melania Trump Wears Controversial Jacket

On her way to visit migrant families in Texas last week, First Lady Melania Trump sported a Zara jacket with the phrase "I really don't care do u?" emblazoned on the back. The choice of apparel ignited a controversy regarding the administration's attitude towards the migrant families. It also prompted many celebrities to respond by printing various "I really do care" phrases on the back of their own jackets and led to at least two federal trademark applications for similar phrases (although they don't appear to be filed by celebrities or major apparel companies).
On June 22, a joint venture in California filed an application to register the words I REALLY DO CARE, DO U? as a trademark for various athletic apparel (see specimen submitted with the application above). Additionally, on June 23, a corporation in Florida filed an application to register I REALLY DO CARE. DON'T U? as a trademark for various apparel (see specimen submitted with application below).
Unfortunately for these applicants, their slogans will likely be refused registration on the basis of ornamentation. Merely decorative subject matter, which does not identify and distinguish an applicant's goods, does not function as a trademark and therefore cannot be registered as one. See TMEP 1202.03. Slogans or phrases used on items such as t-shirts and sweatshirts are routinely refused registration because "purchasers will perceive [them] as conveying a message rather than indicating the source of the goods." TMEP 1202.03(f)(i).

When you see the phrases on the shirts above, do you see a message being conveyed? Or does it tell you the source of the shirt? If you see a message being conveyed, rather than the source of the shirt (i.e., Nike, adidas, Hanes), the use is probably ornamental, not trademark use. We'll see what the examining attorneys assigned to review these applications at the USPTO think in about three months.

Wednesday, June 27, 2018

Anheuser-Busch Files Applications to Register FROSE-A-RITA, BERRY-KIWI-RITA, and Several Other "-RITA's" as Trademarks

The month of June was a busy time for Anheuser-Busch and RITA-themed trademark applications. The beverage giant filed six applications to register various -RITA marks this June (ed. - appropriate summer trademarks, no?) and appears to be expanding this line of products, if these trademark applications are any indication. The application filed this month are for:
Anheuser-Busch filed each application in Class 32 for "flavored beer." The applications were filed on an intent-to-use basis, suggesting Anheuser-Busch is not currently using these trademarks with flavored beer but has a bona fide intention to do so in the near future. TMEP 806.01(b); 15 USC 1052(b). Before these applications can register, Anheuser-Busch must start using these trademarks in conjunction with the sale of flavored beer and submit sufficient proof of same to the U.S. Patent and Trademark Office, like it did for an application it filed in 2016 for BUD LIGHT LIME COCO-NUT-RITA SPLASH (see image to the right for the evidence filed).

In December 2016, I blogged about Anheuser-Busch's application for GRAPE-A-RITA, which has since registered. Back in August and September 2016, the beverage company filed trademark applications for BUD LIGHT LIME COCO-NUT-RITA SPLASH, BUD LIGHT LIME PINE-APPLE-RITA SPLASH, BUD LIGHT LIME PEACH-A-RITA, and BUD LIGHT LIME ORANGE-A-RITA. All those applications, except BUD LIGHT LIME COCO-NUT-RITA, were abandoned because Anheuser-Busch did not submit proof it was using those trademarks by the deadline to do so. However, Anheuser-Busch refiled similar marks without "Bud Light Lime" in front and obtained registrations for those (like PEACH-A-RITA and ORANGE-A-RITA).

According to my quick search, Anheuser-Busch currently owns 463 active trademark applications or registrations with the U.S. Patent and Trademark Office. And yes, a registration for DILLY DILLY covering "beer" is one of them.

Wednesday, June 6, 2018

Bacardi Files Application to Register Grey Goose Bottle Design as a Trademark

Recognize the source of the bottle below? If so, it might be functioning as a trademark, which is exactly what Bacardi is banking on given its recent federal trademark application for this bottle design.
On June 1st, Bacardi & Company Limited filed an application with the U.S. Patent and Trademark Office to register the design above as a trademark. Bacardi filed the application in Class 33 for "alcoholic beverages except beers" and described the mark as
a bottle with a narrow neck which has a blue and white neck label with white geese imprinted on a blue band on the bottom of the neck label. Centered on the front of the bottle is a silhouette of a large goose and several smaller geese behind and in front of the larger goose. These geese appear to be flying over a mountainous lake design which is generally blue with some white for shading purposes. There is a flock of white flying geese above the lake. Below the mark is a rectangle comprising a blue portion on the left, a red portion on the right, and a white portion in the middle.
Can product designs or packaging function as trademarks? Yes, if they are (1) non-functional and (2) distinctive. TMEP 1202.02. In other words, the product design or packaging must not be essential to the use or purpose of the article or affect the cost or quality of it (i.e., non-functional) and, by its intrinsic nature, serve to identify a particular source (i.e., it is distinctive). See TMEP 1202.02(a)(iii)(A) and TMEP 1202.02(b)(i).

Bacardi has had success registering bottle designs as trademarks in the past. For example, it owns a registration for the Grey Goose Le Melon bottle design and the Dewar's White Label bottle design, among others.

In this case, however, Bacardi may need to clarify some things before it can obtain a registration. For example, is the Grey Goose design Bacardi seeks to register for a two-dimensional depiction of the bottle or for a three-dimensional bottle design? The USPTO asked Bacardi the same thing in an application Bacardi filed for a Bacardi rum bottle back in December 2017. Specifically, in that case the USPTO asked Bacardi to indicate whether the application was for a three-dimensional configuration of the goods or packaging or a specific design feature of the goods or packaging. Because the mark description for the Grey Goose bottle does not specify whether it is for a three-dimensional configuration, Bacardi may need to indicate as much again.

According to my quick search, Bacardi & Company owns 197 active trademark applications or registrations with the USPTO, several of which are for bottle designs and/or bottle configurations (like this one for the Grey Goose VX bottle).

Tuesday, May 29, 2018

Kid Rock Files Applications to Register KID ROCK'S REDNECK RYE, KID ROCK'S REDNECK WHISKEY as Trademarks

Kid Rock might not actually be running for Senate (despite filing an application to register KID ROCK FOR SENATE as a trademark last year), but he may actually be expanding his line of alcoholic beverages, if recent trademark applications are any indication. On May 24th, Robert J. Ritchie (aka Kid Rock) filed applications to register KID ROCK'S REDNECK RYE and KID ROCK'S REDNECK WHISKEY as trademarks with the U.S. Patent and Trademark Office.
Not surprisingly, each application covers "distilled spirits" in Class 33. The rocker filed each application on an intent-to-use basis, suggesting he is not currently using these trademarks to sell distilled spirits 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, Kid Rock must actually start using these designations as trademarks and submit sufficient proof of same to the USPTO.

Before that can happen, however, Kid Rock might need to deal with a couple issues. One is that the USPTO is likely to require Robert Ritchie to submit his written consent to the use and registration of a trademark containing KID ROCK. Such consent is required because Section 2(c) of the Trademark Act prohibits the registration of any name, portrait, or signature that identifies a particular living individual without that individual's written consent. 15 USC 1052(c). That prohibition applies not only to full names, but also to "first names, surnames, shortened names, pseudonyms, stage names, titles, or nicknames, if there is evidence that the name identifies a specific living individual who is publicly connected with the business in which the mark is used, or who is so well known that such a connection would be assumed." TMEP 1206.01. The USPTO initially refused to register the KID ROCK FOR SENATE application, for example, in part because this written consent was not submitted (and still hasn't been).

Another potential issue is a rejection of this application based on a likelihood of confusion with existing KID ROCK trademark registrations. This is not an issue if similar trademarks are owned by the same party, but in Kid Rock's case, Top Dog Records, Inc. owns some KID ROCK trademark applications and registrations (including a pending application for KID ROCK'S MADE IN DETROIT covering "restaurant and bar services"). Because the whiskey and rye applications are in Robert J. Ritchie's name personally, and other KID ROCK applications/registrations are in a record company's name, the trademarks are owned by two different owners (in the USPTO's eyes), which requires (under Section 2(d) of the Trademark Act) the USPTO to refuse to register the latter filed applications in light of the existing applications or registrations, if the latter filed applications are deemed to be confusingly similar to the existing applications and registrations. For example, the KID ROCK FOR SENATE application (which covered apparel and was in Robert J. Ritchie's name) was initially refused registration because of a perceived likelihood of confusion with an existing registration for KID ROCK, owned by Top Dog Records, Inc., that also covered apparel.

These are not the first alcohol-related trademark applications filed by Robert J. Ritchie. The rocker currently owns registrations for AMERICAN BADASS BEER COMPANY (and a logo), BADASS BEER, BADASS, and an eagle design, all covering "beer."

Wednesday, May 16, 2018

Epic Games Files Applications to Register Every Location in Fortnite as a Trademark

Your favorite spot to drop in Fortnite? It's now the subject of a federal trademark application.
On Friday, May 11th, Epic Games, Inc. filed applications to register every location in Fortnite (all 21 of them) as a trademark with the U.S. Patent and Trademark Office. Links to each application are below:
Epic Games filed each application (with the exception of LUCKY LANDING, which was not filed in Class 41, maybe by mistake) in the same three classes for the same goods and services:
  • Class 9 - Video game software
  • Class 25 -  Hats; Headwear; Hooded pullovers; Hooded sweatshirts; T-shirts
  • Class 41 - Entertainment services, namely, providing on-line computer games; Entertainment services, namely, providing online video games
Each application was filed on an intent-to-use basis, meaning Epic Games will need to submit evidence that they are using these names as trademarks for the listed goods and services before a registration can be issued. TMEP 806.01(b); 15 USC 1051(b). For example, Epic Games submitted the screenshot above with its application for the name FORTNITE covering "Entertainment services, namely, providing on-line computer games," which registered earlier this year.

A federal trademark registration comes with a number of benefits, one of the main ones being that it gives the owner the presumption of the exclusive right to use the trademark nationwide (as opposed to within a limited geographic area, which is typically the case with an unregistered trademark). It can also streamline the process of filing similar trademark applications in foreign countries and gives the owner the right to use the little (r) symbol (unregistered trademarks can only use the small (tm)).

According to my quick search, these are the first trademark applications for the locations in Fortnite filed by Epic Games. The gaming company also owns pending applications for VICTORY ROYALE and SLURP JUICE, filed back in February, covering the same goods and services.