Monday, November 2, 2020

Distillery in New York Files Application to Register MARIJUISKEY as a Trademark for Whiskey. Any Issues?

On October 28, New Scotch, LLC dba New Scotland Spirits filed a federal trademark application for MARIJUISKEY covering "distilled spirits, namely, whiskey" in Class 3.

But what does this mark mean? Is it a combination of "marijuana" and "whiskey"? Like mariju-iskey? If so, the applicant is likely to run into issues during the registration process.

A trademark must be in lawful use in interstate commerce for the U.S. Patent and Trademark Office ("USPTO") to register it. See TMEP 907. If a trademark or the goods/services offered in conjunction with a trademark violate federal law, the USPTO will refuse registration under Sections 1 and 45 of the Trademark Act because the mark is not in lawful use. 15 USC 1051, 1127.

The federal Controlled Substances Act, among other things, prohibits the manufacturing, distributing, dispensing, or possessing of marijuana and marijuana-based preparations. Therefore, the USPTO will (and frequently does) refuse the registration of trademarks for marijuana or goods containing marijuana. Further, the USPTO is a federal office governed by federal law, so the fact that marijuana may be legal in the applicant's state is irrelevant.

Therefore, if MARIJUISKEY is a whiskey that contains marijuana, the applicant will get a refusal under Sections 1 and 45 of the Trademark Act, though that refusal may be premature at this point. This application was filed on an intent-to-use basis, meaning the applicant has not yet submitted a specimen showing the USPTO how it uses this mark on its goods (and a cursory review of the applicant's website does not reveal this whiskey). Therefore, other than assumptions about the name, there's currently nothing to suggest this whiskey has anything to do with marijuana.

However, the mark itself may prompt the examining attorney assigned to this application to issue an inquiry into the lawfulness of the applicant's goods and request additional information, which they are permitted to do. See TMEP 907. If the applicant's evidence indicates this whiskey does contain marijuana, and therefore isn't lawful at the federal level, the USPTO may refuse registration based on this "extrinsic evidence" even if the description of goods in the application itself (i.e., "distilled spirits, namely, whiskey") is lawful. Id. On the other hand, if it turns out MARIJUISKEY whiskey doesn't contain marijuana, there's no basis for a refusal based on unlawful use. 

Interested in the fate of MARIJUISKEY? Check in on the application in approximately three months after it is reviewed by an examining attorney.

Tuesday, October 6, 2020

Jordan Belfort, the Wolf of Wall Street, Files Application to Register His Name as a Trademark

Jordan Belfort, the former stockbroker played by Leonardo DiCaprio in the 2013 Wolf of Wall Street movie, recently filed an application with the U.S. Patent and Trademark Office to register his name, JORDAN BELFORT, as a trademark.


What types of goods and services does the Wolf of Wall Street intend to sell under his name? Apparently a variety, according to the application. The goods and services listed in the application span seven different classes and include the following:

  • Cologne and after shave gel (Class 3);
  • A variety of clothing, including shirts, hats, shoes, and pajamas (Class 25);
  • Gaming machines for gambling and board games (Class 28);
  • Beer, sports drinks, energy drinks, and soft drinks (Class 32);
  • Wine and spirits (Class 33);
  • Ashtrays, e-cigarettes, lighters, tobacco grinders, and tobacco water pipes (Class 34); and
  • Entertainment services, namely, personal appearances by a celebrity (Class 41).
The application indicates Mr. Belfort has been providing the entertainment services in Class 41 in conjunction with his name since August 26, 2008, but is not yet providing the other goods (which were all filed under an "intent to use basis"). Before JORDAN BELFORT can be registered as a trademark for the listed goods, Mr. Belfort will need to make sales of those goods, or transport those goods, under his name in interstate commerce and submit sufficient proof of same to the USPTO. See TMEP 1103.

Mr. Belfort also filed an application to register WOLFPACK as a trademark for various business consulting, job training, career counseling, and educational services in late September 2020. According to my quick search, that application and the application for JORDAN BELFORT are the only two federal trademark filings currently in Mr. Belfort's name.

Wednesday, July 1, 2020

San Francisco Company Files Application to Register GAS STATIONS IN SPACE as a Trademark for...Space Gas Stations?

Are space gas stations the future? Maybe. According to their website, San Francisco-based Orbit Fab, Inc. is apparently working on establishing the first gas station in space for satellite refueling. And the company recently filed a federal trademark application in that pursuit.
On June 26, Orbit Fab, Inc. filed an application to register GAS STATION IN SPACE as a trademark with the U.S. Patent and Trademark Office. The application covers the following goods and services:
  • Fuel for satellites, spacecraft, space vehicles, and space stations; propellant for satellites, spacecraft, space vehicles, and space stations (Class 4); and
  • Repair, maintenance, and refueling services for satellites, spacecraft, space vehicles, and space stations (Class 37).
In other words, space gas stations? The application was filed on an intent-to-use basis, so it may never register, but does indicate Orbit Fab, Inc. has plans to launch such gas stations (which is confirmed by the company's website).

But is GAS STATIONS IN SPACE merely descriptive of the underlying goods and services? If so, Orbit Fab will have a difficult time getting this mark registered (on the Principal Register, at least).

A trademark is generally "considered merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of an applicant’s goods or services." See TMEP 1209.01(b).

Does GAS STATIONS IN SPACE merely describe a quality, feature, function, or characteristic of the refueling services for satellites, spacecraft, space vehicles, and space stations? What about fuel for such vehicles? We'll find out what the USPTO thinks in approximately three months after this application is assigned to an examining attorney for review.

According to my quick search, this is the first ever federal trademark application filed by Orbit Fab, Inc.

Quarterly Index (4/1/20 - 6/30/20)

Food and Drink Trademark Filings:

Other Unique Trademark Filings:

Tuesday, June 30, 2020

Is Pepsi Blue Making a Comeback? A Recent Trademark Application Suggests So

While I only vaguely recall it, Pepsi Blue was a berry-flavored version of Pepsi that was launched in the U.S. in 2002 and discontinued shortly thereafter in 2004. Pepsico, Inc. previously owned federal trademark registrations for both the PEPSI BLUE name and former logo (seen below), but the U.S. Patent and Trademark Office canceled those registrations nearly ten years ago after Pepsi failed to renew them (likely due to non-use, as use is a requirement to renew a trademark registration).  

However, a recent trademark application filed at the USPTO by Pepsico, Inc. suggests that Pepsi Blue might be making a comeback. On June 25, Pepsico filed a federal trademark application to register PEPSI BLUE as a trademark for "Concentrates, syrups or powders used in the preparation of soft drinks; Soft drinks" in Class 32.

Pepsico filed the application on an intent-to-use basis, suggesting it is not currently using PEPSI BLUE as a trademark for the listed goods, but has a bona fide intention to do so in the near future. See TMEP 806.01(b); 15 USC 1051(b). Before PEPSI BLUE can be registered as a trademark again, Pepsico must start using the PEPSI BLUE trademark in interstate commerce in conjunction with the listed goods and submit sufficient proof of such use to the USPTO.

While Pepsico is not required to start selling Pepsi Blue again, it does mean something is likely in the works. 

This is the first trademark application for PEPSI BLUE filed by Pepsico since the now dead PEPSI BLUE registrations it filed for in 2002. Fans of Pepsi Blue - pay attention to this application. 

Tuesday, May 12, 2020

Bauer Hockey Files Application to Register BAUER as a Trademark for Sanitary Masks, Face Shields

Back in March, hockey equipment manufacturer Bauer Hockey announced the company would be switching from hockey equipment to protective medical equipment. A recent trademark application filed with the U.S. Patent and Trademark Office proves the company wasn't kidding.
On May 7, the hockey company filed a federal trademark application for BAUER, but it didn't cover hockey equipment. Instead, it covered the following goods:
  • Sanitary masks to protect from infection and prevent infection of others; face shields to protect from infection and prevent infection of others; disposable microorganism barrier gowns (Class 10); and
  • Multi-usage face shields; multi-purpose face shields; face masks; goggles (Class 9).
Bauer filed the application on an intent-to-use basis, suggesting it is not currently selling these goods in conjunction with the BAUER trademark yet, but has a bona fide intention to do so in the near future (which makes sense). See TMEP 806.01(b); 15 USC 1051(b). Before this particular BAUER trademark can be registered, Bauer must actually start using the BAUER trademark in interstate commerce in conjunction with the goods listed in the application and submit sufficient prove of such use to the USPTO. See TMEP 1103.

Kudos to Bauer for doing its part.