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.

Monday, November 12, 2018

Boston Dynamics Files Trademark Applications for "Humanoid Robots With Artificial Intelligence" and "Surveillance Robots"

Want a surveillance robot? A robot for "entertainment"? A "humanoid robot with artificial intelligence"? You may be able to purchase one named Spot, Handle, or Atlas from Boston-based Boston Dynamics soon, if recent federal trademark applications are any indication.
On November 7, Boston Dynamics, Inc. filed federal trademark applications with the U.S. Patent and Trademark Office for:
The trademark application for SPOT covers:
  • Industrial robots for use in distribution and logistics applications (Class 7); and
  • Surveillance robots; robots for use in security, safety and inspection applications; robots for entertainment (Class 9).
According to the application, the SPOT trademark is already in use (i.e., Boston Dynamics is using it in conjunction with the sale of the goods listed in the application). The photograph above is an excerpt from the specimen of use filed with the SPOT application.

The application for HANDLE covers "[i]ndustrial robots for use in manufacturing, assembly and distribution applications; robots for loading and unloading pallets; industrial robots for use in logistics applications" in Class 7 while the application for ATLAS covers "[h]umanoid robots with artificial intelligence[.]" Those two trademarks are not yet in use, according to the applications, though the filing basis indicates Boston Dynamics has a bona fide intention to use those trademarks in the near future.

The robotics company also filed an application for its name, BOSTON DYNAMICS, on the same day, which covers all the goods listed above, in addition to "[d]esign and development of robots; robotic engineering services" in Class 42.

According to my quick search, these are the first federal trademark applications filed by Boston Dynamics, Inc.

Friday, October 12, 2018

Elon Musk's Tesla, Inc. Files Application to Register TESLAQUILA as a Trademark for Tequila

Electric cars, rockets, and now...tequila? Maybe, according to a recent federal trademark application filed by Elon Musk's Tesla, Inc.
On October 8, Tesla, Inc. filed an application with the U.S. Patent and Trademark Office to register TESLAQUILA as a trademark for "[d]istilled agave liquor; [d]istilled blue agave liquor" in Class 33. Or, in other words, tequila (although "tequila" cannot be listed in the application because it is a registered certification mark, as described in an INTA article I recently wrote accessible here).

The intent-to-use filing basis of the application suggests that Tesla is not using TESLAQUILA as a trademark for "distilled agave liquor" or "distilled blue agave liquor" yet, but has a bona fide intention to do so in the near future. See TMEP 806.01(b); 15 USC 1051(b). Interestingly, Tesla filed an application for this same mark in Jamaica back on April 10, 2018 and is asserting a U.S. priority date based on that foreign application under Section 44(d) of the Trademark Act. See also TMEP 1003 et seq.

Tesla fans - while this doesn't guarantee Tesla will be releasing a tequila in the near future, you might want to keep your eyes open. Tesla is not required to start selling TESLAQUILA tequila simply because it filed a federal trademark application, but in order to file the application on an intent-to-use basis, it is required to have a bona fide intention to use the trademark in conjunction with the listed goods in the near future. Generally, there should be documentary evidence to back up this bona fide intention (such as a business plan, contracts with manufacturers, etc.). A mere idea, without more, won't cut it.

While Tesla, Inc. currently owns 54 active trademark applications or registrations with the USPTO, somewhat surprisingly, this is the first federal trademark application filed by the company in 2018. The last federal trademark applications Tesla filed were on November 29, 2017 when it filed two applications for MEGACHARGER, one of which covered battery chargers for electric vehicles and the other charging station services.

Tuesday, October 9, 2018

Idaho Potato Commission Files Applications to Register IDAHO POTATO ALE as a Trademark for Beer, 100% IDAHO POTATO BEER as a Certification Mark for Same

Beer brewed with potatoes? Apparently that's a thing, but maybe only in Idaho...

On October 4, the Idaho Potato Commission filed an application with the U.S. Patent and Trademark Office to register the words IDAHO POTATO ALE as a trademark for "beer, ale and lager" in Class 32.
According to the application, the Idaho Potato Commission has been using this trademark in commerce at least as early as March 9, 2015 (ed. - though the specimen, seen above, apparently indicates the beer may be brewed by Bear Island. It's unclear what connection, if any, Bear Island has with the Idaho Potato Commission).

The Commission filed another application to register 100% IDAHO POTATO BEER as a certification mark for "beers, lagers and ales that include potatoes" on that same day. According to that application, "[t]he certification mark certifies the regional origin of potatoes grown in the State of Idaho and certifies that those potatoes conform to grade, size, weight, color, shape, cleanliness, variety, internal defect, external defect, maturity and residue level standards promulgated by the certifier."

Certification marks, which can also be registered with the USPTO, are different that traditional trademarks. Certification marks are any word, name, symbol, or device, or any combination:
  1. used by a person other than its owner (ed. - unlike traditional trademarks); or
  2. which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by the Trademark Act,
to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services or that the work or labor on the goods or services was performed by members of a union or other organization. TMEP 1306.01; 15 U.S.C. 1127.

The application for a certification mark is similar to a traditional trademark application, with a few differences. For example, the applicant must submit (1) a certification statement (like the one for 100% IDAHO POTATO BEER quoted above), (2) a copy of the standards established to determine whether others may use the certification mark on their goods and/or in connection with their services, and (3) a statement that the applicant is not engaged in, or will not engage in, the production or marketing of the goods and/or services. See TMEP 1306.03 et seq. Unlike traditional trademarks, which indicate source, "the purpose of a certification mark is to inform purchasers that the goods or services of a person possess certain characteristics or meet certain qualifications or standards established by another person." TMEP 1306.01(b).

The Idaho Potato Commission is one of the more well-known certification mark holders and owns several registrations for certification marks related to Idaho potatoes, including registrations for IDAHO, GROWN IN IDAHO logos, and CERTIFIED 100% IDAHO POTATOES logos.

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.