Tuesday, October 17, 2017

Dwanta Claus is Coming - Dwayne "The Rock" Johnson Files Trademark Application for DWANTA CLAUS

Dwanta Claus, Dwayne "The Rock" Johnson's holiday alter ego, may be a registered trademark soon. On October 12th, DJIP, LLC (the same entity that owns a trademark registration for DWAYNE JOHNSON) filed a federal trademark application with the U.S. Patent and Trademark Office for DWANTA CLAUS.
The application covers a massive amount of goods and services, including many of the goods and services for which The Rock is known, including:
  • Entertainment in the nature of live performances by a sports, film and entertainment celebrity (Class 41);
  • Entertainment services, namely, personal appearances by a sports and film celebrity (Class 41);
  • Charitable services, namely, providing sporting goods to underprivileged children (Class 41);
  • Consulting services in the fields of fitness and exercise (Class 41);
  • A variety of toys and athletic equipment (Class 28);
  • A variety of clothing and apparel items (Class 25);
  • Series of books, magazines and written articles in the field of entertainment, general interest, health, nutrition, sports, fitness, athletics, exercise, film, television, celebrity news and information, sports news and information; address books (Class 16); and
  • Pre-recorded CDs and DVDs featuring entertainment films, health, nutrition, sports, athletics, exercise, instructional content regarding exercise, fitness, motivation and self-improvement, television, celebrity news and information, motivation and self-improvement information, sports news and information, and music (Class 9).
The application was filed an on intent-to-use basis, suggesting (but not necessarily meaning) that The Rock is not using DWANTA CLAUS in conjunction with the listed goods and services yet, 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 mature into a registration, he must provide evidence to the Trademark Office that he is using the mark with the listed goods and services. See TMEP 1103.

According to my quick search, this is the first application for DWANTA CLAUS filed by Dwayne Johnson (or, more appropriately, the legal entity that appears to hold his trademarks). Apparently the actor has been using the term "Dwanta Claus" for quite some time, including when he gave away a car last year, when he visited a sick teen in the hospital, and when he read his "Twas the Night Before Rockmas" on YouTube.

Given the expansiveness of this trademark application, it doesn't look like The Rock plans to give up this phrase anytime soon. Expect to hear more from Dwanta Claus this holiday season.

Monday, October 16, 2017

CBS Files Trademark Application for $1

No, I'm not talking about the filing fee to the U.S. Patent and Trademark Office (that was $275 per application). I'm talking about the actual mark CBS wants to register.
On October 11th, CBS Studios, Inc. filed two federal trademarks application for "$1" in standard characters (meaning the registration sought covers only the text, not a specific stylized version - see TMEP 807.03).

One application covers "Digital media, namely, pre-recorded digital video discs, digital versatile discs, DVDs, downloadable audio and video recordings, and high definition digital discs featuring drama; Downloadable television programs featuring drama provided via a video-on-demand services" in Class 9.

The other application covers, in Class 41:
Entertainment services in the nature of a television and multimedia series featuring drama distributed via various platforms across multiple forms of transmission media; Providing non-downloadable entertainment television programs featuring drama via a video-on-demand services; providing information in the field of entertainment via the Internet and portable and wireless communication devices
A TV show called $1? Maybe. CBS filed this application on an intent-to-use basis, suggesting it is not currently using this trademark in commerce in conjunction 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). Although this is not a guarantee CBS will release a television series titled $1, it is supposed to be a guarantee that something is in the work for such a show.

According to my quick search, these are the first trademark applications for "$1" filed by CBS. CBS Studios currently owns 374 other live trademark applications or registrations with the USPTO.

Tuesday, October 10, 2017

The Simpsons Production Company Files Applications to Register Closing Credits Animation, Sound as Trademarks

Recognize the closing credits scene below? Can you hum the jingle that accompanies it?

This animated scene appears at the end of The Simpsons, and other shows produced by James L. Brooks' Gracie Films. The film and television production company (or, more specifically, the Trustee(s) of The Brooks Family Trust) just filed federal trademark applications for the logo (seen below), animation, jingle accompanying the animation, and the words GRACIE FILMS and JAMES L. BROOKS.
The Brooks Family Trust filed each of these applications on October 5th and, with the exception of the JAMES L. BROOKS application, all the applications cover entertainment services in the field of film and television, namely, the creation, production and distribution of motion picture films, television programs and animation in Class 41 and claim a first use date of 1984. The JAMES L. BROOKS application covers "Entertainment services, namely, director, producer, and screen writing services for motion picture films and television programming" and claims a first use date of 1965.

As these applications demonstrate, and as I've blogged about before, it is possible for trademarks to take the form of something other than a name or a logo (in this case, a sound and an animation). Sound marks, for example, can "function as source indicators when they 'assume a definitive shape or arrangement' and 'create in the hearer’s mind an association of the sound' with a good or service." TMEP 1202.15. You can listen to the sound covered by the sound mark application here. Is this a familiar arrangement that creates an association with a particular good or service in your mind?

Shorts clips or animations can also function and be registered as trademarks. HBO, for example, obtained a registration for its iconic opening and closing scene. The motion must actually identify and distinguish the goods/services and indicate their source. To identify the motion mark, the applicant must submit to the Trademark Office a drawing that "depicts a single point in the movement, or...a square drawing that contains up to five freeze frames showing various points in the movement, whichever best depicts the commercial impression of the mark" along with a "detailed written description of the mark." TMEP 807.11.
For this motion mark application, the Trustee(s) of the Brooks Family Trust submitted the drawing above and described the mark as "a computer generated sequence showing movie goers in a darkened movie theater watching a projection of a film with the words "GRACIE FILMS" on the movie screen."

These Gracie Films-related trademark applications are a great example of the different types of marks that may be registered with the U.S. Patent and Trademark Office. These five applications cover standard character (word) marks, design marks (i.e., logos), sound marks, and motion marks. While the procedural hurdles for obtaining registrations for sound and motion marks can be a little more complex, such registrations are certainly possible.

Tuesday, October 3, 2017

Quarterly Index (7/1/17 - 9/30/17)

Entertainment Trademark Filings:
Sports Trademark Filings:
Food and Drink Trademark Filings:
Other Unique Filings:

Friday, September 29, 2017

Vacuum Maker Dyson Files Trademark Application Covering "Driverless Cars"

On September 26th, reports surfaced that Dyson Technology Limited, best known for its high-end vacuums, would be building an electronic car by 2020. By that time, the United Kingdom-based company had already filed a United States trademark application covering car-related goods and services, which may provide some further insight into its plans.
Trademark image
On September 25th, Dyson Technology Limited filed with the U.S. Patent and Trademark Office a trademark application for DYSON (standard characters) covering not only "electronic cars," but also "driverless cars," "autonomous vehicles," "driverless transporter vehicles," and "motorcycles" (initial reports did not seem to mention driverless cars, although I may have missed it). 

Some of the other goods and services covered by this application include:
  • All-terrain vehicles;
  • A variety of parts and fittings for land vehicles (chassis, bumpers, transmission systems, etc.);
  • Business consultancy services and business management advisory services, relating to the distribution, sale, maintenance, restoration and repair of motor vehicles and their parts and fittings;
  • Distributorship services and retail store services relating to motor vehicles and parts; and
  • Maintenance, repair, servicing, reconditioning, restoration, inspection, care, cleaning, painting and polishing of motor vehicles.
Dyson filed this application on an intent-to-use basis, which indicates it is not using DYSON in conjunction with these goods and services yet but has a bona fide intention to do so in the near future (which makes sense, considering it does not plan to fully develop these vehicles until at least 2020). TMEP 806.01(b); 15 USC 1051(b).

According to my quick search, this is the first automobile-related trademark application filed by Dyson Technology Limited in the United States (although the company owns 77 other active trademark registrations or application covering a variety of other goods and services).

Wednesday, September 20, 2017

The Ritz-Carlton Files Trademark Application Covering "Caviar"

As if the Ritz-Carlton hotel chain wasn't fancy enough already, a recent trademark application filed with the U.S. Patent and Trademark Office suggests the hotel may be adding another ritzy good to its lineup - caviar.

On September 15th, The Ritz-Carlton Hotel Company, LLC filed a federal trademark application for THE RITZ-CARLTON (in standard characters) covering a single good in Class 29 - "caviar." The hotel filed the application on an intent-to-use basis, suggesting it is not currently selling The Ritz-Carlton caviar but has a bona fide intention to do so in the near future. TMEP 806.01(b); 15 USC 1051(b). According to my search, this is the first trademark application covering caviar ever filed by The Ritz-Carlton.

Perhaps the hotel will be selling this caviar on their new yachts in 2019? Not only did the hotel announce The Ritz-Carlton Yacht Collection on its website, but it also filed five applications to register the words THE RITZ-CARLTON YACHT COLLECTION as a federal trademark back in June 2017. Those applications, which the hotel also filed on an intent-to-use basis, cover a variety of goods and services related to cruise services, including "transport of passengers and of goods," "cruise ship services," and "organizing and operating excursions, tours, holidays and cruises."

Before the trademark applications for THE RITZ-CARLTON covering caviar and THE RITZ-CARLTON YACHT COLLECTION covering a variety of cruise ship-related goods and services can actually register, the Ritz-Carlton must actually start using the mark to sell the listed goods and render the listed services and submit sufficient proof of such use to the U.S. Patent and Trademark Office. TMEP 1103; 15 USC 1051(d).

Caviar and yachts - [probably] coming to Ritz-Carlton soon.

Thursday, September 14, 2017

Two Hurricane Irma-Related Trademark Applications Filed on Day Storm Hit Florida

As is the case when nearly any newsworthy event occurs (like with Covfefe), people across the country attempt to "capitalize" on a name or phrase by filing intent-to-use trademark applications with the U.S. Patent and Trademark Office ("USPTO"). Hurricane Irma, it appears, is no different.
On September 10th, the day Hurricane Irma made landfall in Florida, two Hurricane Irma-related trademark applications were filed - one for HURRICANE IRMA and the other for I SURVIVED HURRICANE IRMA.

An individual in Columbus, Mississippi filed the application for HURRICANE IRMA on an intent-to-use basis, which suggest she was not using the name as a trademark at the time of filing (i.e., was not selling goods or rendering services under that name) but has a bona fide intention to so do in the near future. TMEP 806.01(b); 15 USC 1051(b). That application covers a host of non-beer related alcohol products, including:
  • Alcoholic beverages made of fruit; 
  • Alcoholic beverages except beers;
  • Alcoholic cocktail mixes;
  • Alcoholic cocktails in the form of frozen pops; and
  • Alcoholic coffee-based beverage.
Before this application can register, the applicant will need to actually start selling the goods listed in the application under the HURRICANE IRMA name and submit sufficient proof of the same to the USPTO. TMEP 1103; 15 USC 1051(d). If she cannot do this before her extensions run out, the application will go dead.

The applicant who filed the I SURVIVED HURRICANE IRMA application, an individual from Levittown, New York, also filed that application on an intent-to-use basis. That application covers:
  • Tee-shirts; Tee shirts; Apparel for dancers, namely, tee shirts, sweatshirts, pants, leggings, shorts and jackets (Class 25); and 
  • Tee-shirt embroidering services; Imprinting messages on tee-shirts (Class 40). 
As with the HURRICANE IRMA application, this applicant will need to start actually using this phrase in conjunction with the listed goods and services before he can obtain a registration. However, simply plastering this phrase on various clothing items is not typically enough to demonstrate trademark use and therefore obtain a registration. TMEP 1202.03(f)(i) ("Slogans or phrases used on items such as t-shirts and sweatshirts, jewelry, and ceramic plates have been refused registration as ornamentation that purchasers will perceive as conveying a message rather than indicating the source of the goods.").

Although it might not be an issue with these two applications given the differences in the underlying goods and services, often when a slew of applications are filed for the same mark, many of the underlying goods or services are related (i.e., there might be several more Hurricane Irma-related applications covering clothing filed in the future). In that case, later filed applications are often refused registration under Section 2(d) of the Trademark Act.

Under Section 2(d), an application that is likely to cause confusion with a previously filed mark will be refused registration. TMEP 1207.01; 15 USC 1052(d). But what happens when two applications are executed and filed on the same day, such as the applications above, which were both executed and filed on September 10th? Which is the previously filed application? In this case, because the execution date and filing date are the same for both applications, the application with the lowest serial number will be deemed the earlier filed application. TMEP 1208.01(b). In this case, that is the HURRICANE IRMA application (Ser. No. 87/602,370), not I SURVIVED HURRICANE IRMA (Ser. No. 87/602,412).

Only two Hurricane Irma-related trademark applications have been filed so far, but considering the most recent trademark applications appearing in the USPTO's database are only from September 10th (the database is usually 4-5 days behind), I would not be surprised to see more applications in the near future.