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.

Tuesday, May 8, 2018

Is Jimmy Buffett's Margaritaville Getting into the Marijuana Business? Recent Trademark Applications for IT'S 4:20 SOMEWHERE and CORAL REEFER Say Maybe

It's 5:00 somewhere? Not anymore. 4:20 is the new 5:00, at least according to recent trademark applications filed by the entity operating the Jimmy Buffett's Margaritaville restaurants and resorts.
On May 3rd, Margaritaville Enterprises, LLC, founded by Jimmy Buffett, filed twelve federal trademark applications with the USPTO covering what appears to be a variety of marijuana-focused goods and services. The applications are for two phrases - IT'S 4:20 SOMEWHERE and CORAL REEFER. Margaritaville Enterprises filed each phrase in six different classes of goods and services each, rather than listing the six classes in a single application (hence the twelve applications). Applicants often do this to prevent an issue in one class from holding up all the other classes (which is what would happen if all the classes were listed in a single application).

The goods and services covered by the IT'S 4:20 SOMEWHERE and CORAL REEFER applications are, for the most part, the same and include:
Margaritaville Enterprises filed each application on an intent-to-use basis, suggesting it is not currently using these phrases as trademarks for the listed goods/services 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, the phrases must actually be used as trademarks for the listed goods/services and sufficient evidence of that use must be submitted to the USPTO. TMEP 902.

Notice that Margaritaville Enterprises did not list "marijuana" as one of the goods in its applications. That is because the sale of marijuana is illegal at the federal level. The USPTO will refuse to register any trademark for the sale of marijuana because that sale violates federal law, and a trademark must be in lawful use in commerce for the USPTO to register it. I blogged about this issue before here.

So is Jimmy Buffett's Margaritaville moving into the marijuana business? Will you be able to get marijuana as easy as margaritas at the Margaritaville restaurants and resorts in the near future? You be the judge (and pay attention to these applications to find out).

According to my quick search, Margaritaville Enterprises, LLC owns 432 active trademark applications or registrations with the USPTO, including several registrations for MARGARITAVILLE, like this one from 1995.

Monday, May 7, 2018

Applications Filed to Register FISH-AS-A-SERVICE, FAAS as Trademarks for Underwater Drone Rental

You've heard of software as a service (SaaS), but fish-as-a-service (FaaS)? Probably not. That name, and the acronym, are the subjects of two recent federal trademark applications.
On May 2nd, a California partnership called Aquaai Corporation filed the FISH-AS-A-SERVICE and FAAS trademark applications with the U.S. Patent and Trademark Office. Both applications cover the "rental of underwater drones" in Class 41 and indicate the trademarks have been in use since April 18, 2018.

According to Aquaai's website and the specimen submitted with the trademark applications (seen above), the company rents biometric fishlike drones to collect data underwater. The company's mission is to "save the seas by providing intelligence under the surface."

What happens to the trademark applications next? In about three months, the applications will be assigned in an examining attorney at the USPTO, who will review the application to make sure it meets all the statutory requirements for registration. See TMEP 704.01; 37 CFR 2.61(a). If there are any issues, the examining attorney will notify the applicant, who will be given six months to respond. TMEP 705 et seq. For example, a refusal to register the mark will be made is a confusingly similar trademark is already on file with the USPTO. TMEP 1207; 15 USC 1052(d).

If the applications make it through the examination process, or any issues raised during the examination process are resolved, the application will be published for thirty days in the USPTO's Official Gazette. TMEP 1502; 15 USC 1062. During that time period, any third party that believes it would be damaged by the registration of the trademark is entitled to oppose its registration. If an opposition is filed, it triggers a lawsuit-like proceeding in front of the Trademark Trial and Appeal Board. TMEP 1503.01 et seq. If no opposition is filed, the applications should mature into registrations about eleven weeks after the initial publication date. In total, a trademark application without any issues in the examination phase takes about nine to twelve months to register.

Wednesday, April 25, 2018

Netflix Studios Files Three Trademark Applications for Potential New Shows

As is often the case when potential new shows are in the works, Netflix Studios, LLC filed three applications to registered the titles of potential new shows as trademarks with the U.S. Patent and Trademark Office this month. The applications filed in April are:
According to the trademark applications, both Another Life and Black Moon will be "dramatic television series" whereas Turn Up Charlie will be an "ongoing comedic drama television series." Netflix Studios, LLC filed all these applications on an intent-to-use basis, suggesting it is not currently using these titles as trademarks in commerce yet but has a bona fide intention to do so in the near future (which makes sense given these shows aren't available for streaming yet). 15 USC 1051(b); TMEP 806.01(b).

In total, Netflix Studios, LLC has filed 11 federal trademark applications in 2018, including the three listed above. The other eight applications were for:
  • PRINCE OF PEORIA (filed January 30th for, in part, an "ongoing comedic drama television series")
  • CHAMBERS (filed January 9th for, in part, an "ongoing dramatic television series")
  • MR. IGLESIAS (filed March 27th for, in part, an "ongoing comedic drama television series")
  • THE FIX (filed February 28th for, in part, an "ongoing unscripted comedic drama television series")
  • THE INNOCENTS (filed February 14th for, in part, an "ongoing dramatic television series")
  • SUPER MONSTERS (filed February 9th, not for a television series but rather for a variety of merchandise, such as clothing, bags, a variety of toys, and video games)
  • EVERYTHING SUCKS! (filed February 7th, also not for a television series but a variety of merchandise)
  • THE CHRISTMAS CHRONICLES (filed February 6th for a "series of motion pictures" along with a variety of merchandise)
Why no applications for the name of a movie? Because the USPTO will not register the title, or a portion of a title, of a single creative work as a trademark unless it has been used on a series of creative works (think Harry Potter). TMEP 1202.08. Single creative works are generally works "in which the content does not change, whether that work is printed, recorded, or electronic form." TMEP 1202.08(a). Without getting too into the weeds legally, the refusal to register titles to single creative works essentially stems from the fact that the USPTO does not consider the title of a single creative work to identify the source of the work, and therefore it does not function as a trademark (trademarks, by definition, are source indicators). This refusal is sometimes the subject of debate and often differs from the treatment of titles to single creative works by the federal courts, which, in certain circumstances, do tend to protect such titles from confusingly similar uses under Section 43(a) of the Trademark Act, 15 USC 1125(a).

According to my quick search, Netflix Studios, LLC owns 76 active trademark applications or registrations with the USPTO, all of which appear to be related to shows on Netflix (like registrations for THE OA, MINDHUNTER, and STRANGER THINGS).

Monday, April 9, 2018

Asahd Khaled's Company Spends $17,325 to File Applications to Register His Name as a Trademark

Like any proud dad, musical phenom DJ Khaled loves showing off his son, Asahd Tuck Khaled, who is about a year and a half old. Asahd is already so famous that his Instagram account has over 1.8 million followers. And recently, like most celebrity parents, his parents organizing the filing of applications with the U.S. Patent and Trademark Office ("USPTO") to register his name, and variants thereof, as trademarks.
On April 4th, ATK Entertainment, Inc. (ed. - short for "Asahd Tuck Khaled"?) filed three federal trademarks applications with the USPTO - one for ASAHD, one for ASAHD KHALED, and one for ASAHD TUCK KHALED. All three applications cover the same, incredibly broad range of goods and services spanning 21 classes. Some of the goods and services covered by these applications include:
  • Fragrances; Perfumes; Cosmetics (Class 3);
  • Baby food; Nutritional supplements (Class 5);
  • DVDs, CDs, and audio and visual sound recordings featuring musical performances (Class 9);
  • Baby teething rings; Pacifiers (Class 10);
  • Baby carriages, baby strollers (Class 12);
  • Jewelry (Class 14);
  • Books in the field of music, motion pictures, and musical performers (Class 16);
  • Handbags (Class 18);
  • A variety of clothing (Class 25);
  • Basketballs, baseballs, footballs (Class 28);
  • Breakfast cereals (Class 30);
  • Online retail store services featuring music, musical recordings, motion pictures, clothing and clothing accessories (Class 35);
  • Entertainment services by a musical artist and producer, namely, musical composition for others and production of musical sound recordings; production of television programs; entertainment services in the nature of ongoing television programs in the field of children's entertainment, fashion, music, dance and sports (Class 41)
Because the USPTO charges filing fees per class, ATK Entertainment paid $5,775 in filing fees per application, or $17,325 total for all three (not including any fees paid to the law firm that filed the applications - Edell, Shapiro & Finnan, LLC in Gaithersburg, Maryland). Those fees top the approximately $12,000 Beyonce paid last June to file applications for the names of her twins.

If you aren't convinced these applications are actually associated with the real Asahd Khaled, below is a written consent signed by Asahd's mother and DJ Khaled's wife - Nicole Tuck - consenting to the use and registration of Asahd's name as a trademark. A written consent was filed for each of the three applications.

The written consent above is required because Section 2(c) of the Trademark Act prohibits the registration of a trademark consisting of or comprising a name, portrait, or signature identifying a particular living individual, except with that individual's (or in this case, their guardian's) written consent. Section 2(c) doesn't just apply to full names, but to nicknames, shortened names, pseudonyms, and stage names as well. TMEP 1206.01.

Before Asahd's trademarks can register, ATK Entertainment will need to start using his name as a trademark in conjunction with those goods and services listed in the applications and submit sufficient proof of same to the Trademark Office. In other words, don't be surprised if you see ASAHD cologne, or ASAHD jewelry, in the near future.

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