Thursday, July 30, 2015

Marvel Files RED WOLF Trademark

On July 21st, Marvel Characters, Inc. filed a trademark that may hint at an upcoming comic book series. Marvel filed a federal trademark application for RED WOLF as it relates to "[c]omic books; printed periodicals in the field of comic book stories and artwork[.]"

The application suggests that Marvel is not yet using this trademark but has an intention to do so in the near future. It appears the Red Wolf characters may be joining the Marvel Universe again soon.

Tuesday, July 28, 2015

Legally Blonde Television Show in the Works?

On July 20th, MGM Studios filed a federal trademark application for LEGALLY BLONDE as it relates to
Entertainment services in the nature of an on-going television series featuring comedy, drama and romance; providing on-line information in the field of television and video entertainment featuring comedy, drama and romance via the Internet; entertainment services in the nature of non-downloadable videos and images featuring television shows and entertainment transmitted via various distribution channels[.]
The basis of this application means MGM isn't using this mark yet but has an intention to do so soon. Does this mean MGM is planning a television version of Legally Blonde? We can only hope.

Monday, July 27, 2015

Today's Tip For Saving Your Filing Fee - Don't Say F$ck

On July 19th, a pro se applicant filed a trademark application with the U.S. Patent and Trademark Office for the mark FUCK FRANCHISE FRIDAYS. The associated services listed on the application are related to various lobbying services. This applicant appears to really hate franchises...
Unfortunately for the applicant, this application is dead in the water. The USPTO will not register a mark containing any variation of the work "fuck" pursuant to Section 2(a) of the Trademark Act. Section 2(a) prohibits the registration of any mark containing "immoral, deceptive, or scandalous matter." The USPTO considers the word "fuck" obscene and therefore egregiously scandalous.

There is not a single registered mark in the USPTO's database containing the term "fuck," only a graveyard of dead applications from misinformed applicant's. A few applicants successfully registered a trademark containing the acronym "WTF," however.

A quick consultation with a trademark attorney would have saved this applicant's $225 nonrefundable filing fee, which is all but lost now.

Friday, July 24, 2015

Production Company Behind Wicked Tuna Files Trademark Related to Celebrity Decathlon TV Show

On July 17th, Pilgrim Films and Television, Inc., the production company behind Wicked Tuna and The Ultimate Fighter, filed a trademark application for CELEBRITY DECATHLON as it relates to
Entertainment services, namely, an ongoing television series featuring a competition-based program and companion variety programs in the field of sports; entertainment services in the nature of a television program featuring live action, comedy and/or drama; entertainment services in the nature of a television program providing a virtual environment in which users can interact through social networking, global network, mobile telephone or other communication network; entertainment services in the nature of providing a website portal in the field of entertainment, news, sports and information via a global computer network[.]
This "intent to use" filing appears to be a preliminary step towards a celebrity decathlon reality show with some sort of viewer involvement through social media. Voting, perhaps? Keep an eye out.

Thursday, July 23, 2015

Kris Jenner Files Trademark For Cosmetic Line

On July 16th, Jenner Communications, Inc. (the management/production company for the Kardashian, Jenner, and Disick families) filed a trademark application with the U.S. Patent and Trademark Office for KRIS JENNER as it relates to:
Fragrances; eau de parfum; eau de toilette; perfumes; hair care preparations; hair styling preparations; skin soap; bath and shower gels; bubble bath; body powders; body lotions; face lotions; body creams; body milks; skin toners; skin cleansers; beauty masks; body scrubs; facial scrubs; body oils; deodorant for personal use; lip balm; lip gloss; cosmetics; cosmetic preparations; nail polish; nail polish remover; and nail care preparations[.]
Kris Jenner's consent to register her name as a trademark (below) was submitted with the application as required by Section 2(c) of the Trademark Act.

The "intent to use" basis of the application means that Jenner Communications is not yet using Kris Jenner's name as a trademark on the listed goods but has a bona fide intention to do so in the near future. This exact same application was filed by Jenner Communications in December 2011 under an "intent to use" basis but, after requesting five extensions from the Trademark Office to file the form showing actual use of this mark in commerce (which is the maximum allowable), Jenner Communications apparently ran out of time to complete that application.

Kris appears to be joining Kim Kardashian, Kendell Jenner, and Kylie Jenner in the field of cosmetics. Kim obtained a federal trademark registration over her own name in the cosmetic field in 2011. Kris, Kim, Kendell, and Kylie appear to be the only Kardashians/Jenners who have actually filed a federal trademark for their own name in the cosmetic field.

Wednesday, July 22, 2015

Today's Tip - Avoid Geographically Descriptive and Misdescriptive Marks

On July 15th, an individual from Hawaii spent $2,475 in filing fees filing eleven trademark applications for the following marks:
  1. Hollwood Yoga Mats
  2. Los Angeles Yoga Mats
  3. Huntington Beach Yoga Mats
  4. Pacific Beach Yoga Mats
  5. Big Sur Yoga Mats
  6. California Yoga Mats
  7. San Diego Yoga Mats
  8. Laguna Beach Yoga Mats
  9. Orange County Yoga Mats
  10. Newport Beach Yoga Mats
The applicant filed all of these applications on an "intent to use" basis.

Unfortunately, Section 2(e)(2) of the Trademark Act prohibits the registration of marks that are primarily geographically descriptive and Section 2(e)(3) prohibits registration of marks that are primarily geographically deceptively misdescriptive. With limited exceptions, only marks that are primarily geographically descriptive may be salvaged on the Supplemental Register (which I call the minor leagues of trademark registrations) unless and until they obtain "acquired distinctiveness."

The test for whether a mark is primarily geographically descriptive is as follows (TMEP 1210.01(a)):
  1. the primary significance of the mark is a generally known geographic location;
  2. the goods or services originate in the place identified in the mark; and
  3. purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark.
A mark is primarily geographically deceptively misdescriptive if (TMEP 1210.01(b)):
  1. the primary significance of the mark is a generally known geographic location;
  2. the goods or services do not originate in the place identified in the mark;
  3. purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark; and
  4. the misrepresentation is a material factor in a significant portion of the relevant consumer’s decision to buy the goods or use the services.
I'm from Ohio, have never been to California, and have heard of each one of those locations listed in the applicant's trademark registrations. Thus, these marks probably incorporate generally known geographic locations. Unfortunately, that means whether these yoga mats originate from the places identified in the marks is irrelevant to whether the examining attorney at the Trademark Office will issue a refusal to register these marks. These marks are either primarily geographically descriptive or deceptively misdescriptive and thus ineligible for registration at this time.

The applicant could amend any marks found to be primarily geographically descriptive to the Supplemental Register, but cannot do so until she actually starts using the trademarks in commerce (she only has an "intent to use" now). Any marks founds to be primarily geographically misdescriptive are ineligible for registration on the Principal or Supplement Register and will likely be lost.

In other words, the $2,475 nonrefundable filing fee fronted by the applicant is now in serious jeopardy. This scenario demonstrates the value of working with a trademark attorney who can help you identify and avoid bars to registration like those listed above.

Tuesday, July 21, 2015

Cinnabon Vodka Coming Soon?

On July 14th, Cinnabon, Inc. filed a trademark application for CINNABON as it relates to liqueur and vodka. The "intent to use" basis of the application means Cinnabon is not using the mark CINNABON in relation to liqueur or vodka yet but has a bona fide intention to do so in the near future.
Does this mean a line of Cinnabon flavored vodka is on the way? Will your local Cinnabon start selling liqueur? You be the judge.

Unfortunately for beer drinkers, Cinnabon filed this application in a class of goods (Class 33) that includes all alcoholic beverages except beer (which is in Class 32). Those hoping for a Cinnabon flavored beer will just have to wait.

Monday, July 20, 2015

Steve Erwin Theme Park Coming to U.S.?

On July 13th, Australia Zoo Pty Ltd. filed a trademark application for STEVE IRWIN'S AUSTRALIA with the U.S. Patent and Trademark Office. 

The services listed in the application are
Entertainment, theme park, and amusement park services including providing amusement rides; amusement and entertainment services in the nature of amusement park shows; educational and cultural programs in the fields of nature, animals, wildlife, animal habitats, biology, biological diversity, wildlife preservation, habitat preservation, ecology, the environment, sustainability, rehabilitation, zoology and botany; providing facilities for recreational activities relating to theme parks and amusement parks facilities; live performances by entertainers and animals at wildlife and theme parks, live singing and dancing performances, live animal shows and animal feeding demonstrations[.]
Australia Zoo Pty Ltd. appears to own and operate the Australia Zoo in Beerwah, Australia, which apparently is owned by Steve Erwin's wife.

This is an "intent to use" application, meaning the Zoo is not operating a theme/amusement park in the United States currently, but has a bona fide intention to do so in the near future.

Will a Steve Irwin themed amusement park be coming to the United States sometime soon? Does the California law firm that filed the trademark application hint at the park's future location? We shall see.

Friday, July 17, 2015

CHORIZO DOG: Delicious But Descriptive?

On July 11th, Carmelita Provision Company, Inc. filed a trademark application for CHORIZO DOG as it relates to "[p]reserved meats and sausages."
Unfortunately, Section 2(e)(1) of the Trademark Act (15 USC 1052(e)(1)) prevents registration on the principal register of marks that "when used on or in connection with the goods of the applicant is merely descriptive..." Section 1209.01(b) of the Trademark Manual of Examining Procedure (TMEP) provides further that "[a] mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services."

Does CHORIZO (a meat) DOG (common way to refer to preserved meats) describe an ingredient or characteristic of preserved meats and sausages? I think so. Sometimes this bar to registration can be overcome by a showing of "acquired distinctiveness" (meaning the applicant has been using the mark so long that customers have started to view the mark as a trademark rather than a descriptive term), but Carmelita cited a "first use" date of only July 11, 2015. I have a feel the examining attorney will issue an office action refusing to register this mark because it is merely descriptive (although the applicant may amend to the supplemental register).

On a side note, Carmelita's specimen (below) does not match the drawing (above) or show the proposed mark being used in commerce. According to 37 CFR 2.51(a) and TMEP 807.12(a), a "drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods/services, as shown by the specimen." Carmelita will need to address this issue as well. It is noteworthy to mention that Carmelita did not appear to enlist the help of an attorney to file this application (which may have prevented these issues).

Thursday, July 16, 2015

James Bond: The Musical? Not So Fast...

On July 10th, two individuals (without the help of an attorney) jointly filed a trademark application for JAMES BOND: THE MUSICAL related to "[e]ntertainment services in the nature of live visual and audio performances, namely, musical, variety, news and comedy shows[.]" The applicants filed under an "intent to use" basis.

Unfortunately for these applicants, Danjaq, LLC owns the trademark rights to JAMES BOND and has several previous registrations related to the term, including a registration in the class of entertainment services.

When this application is assigned to an examining attorney in approximately three months, a likelihood of confusion office action will be issued (at the very least). If this application magically makes it past the examining attorney, it would certainly revoke a strong response from Danjaq, LLC (if it has not already). In other words, these applicants will not be using this trademark without a license. Bad news for anyone hoping for a James Bond Musical

This is a perfect example of the importance of working with a trademark attorney when registering a trademark. An attorney with even the slightest understanding of trademark law would have advised against this filing. In this case, the applicants' $225 nonrefundable filing fee is almost certainly lost.

Wednesday, July 15, 2015

Trademark for New Home of Atlanta Braves Filed

Major League Baseball® hosted the 2015 All-Star Game® in my city of Cincinnati last night, so in honor of that event today's post is baseball themed.

On July 9th, SunTrust Banks, Inc. filed a trademark application for SUNTRUST PARK as it relates to "[s]tadium facility services, namely, providing stadium facilities for the presentation of entertainment events, namely, sports events, musical concerts and variety shows[.]" This application seeks legal protection for the name of the Atlanta Braves' new stadium, which is currently under construction (and looks pretty cool). The Braves are set to start playing in this stadium in 2017. 

Interestingly, despite the stadium being under construction and not yet open, SunTrust Banks filed this trademark under a 1(a) basis, meaning it claims to be using this mark in commerce already. The date of first use is listed as September 16, 2014.

Section 45 of the Trademark Act, 15 U.S.C. 1127, states that a service mark is used in commerce when "it is used or displayed in the sale or advertising of services and the services are rendered in commerce..." Are the services listed in SunTrust Banks' application being rendered here? 

Section 1301.03(a) of the Trademark Manual of Examining Procedure provides examples of when a service mark is being used in commerce and generally states that an announcement of a future service is not sufficient to constitute use of the mark in commerce. For example, in In re Cedar Point, Inc., 220 USPQ 533 (TTAB 1983) the TTAB held that the advertising of a marine entertainment park, which was not yet open, was not a valid basis for registration.

What do you think? Will SunTrust Banks need to amend this application to an "intent to use" basis until the new stadium is finished?

Tuesday, July 14, 2015

New Movie from Universal? Eight Trademark Applications for Stylized Guinea Pig Filed

On July 8th, Universal City Studios, LLC filed eight different trademark applications for a stylized guinea pig. These applications cover everything from entertainment services in the form of television shows and movies, comic books, theme parks, toys, games, and playthings, computer games and software, markers, pens, erasers, various clothing items, a variety of food items (including cereal, ice cream, and sandwiches), beach bags, key chains, and back packs.

The "intent to use" basis of the applications mean Universal is not yet using this stylized guinea pig in conjunction with any of these services but has a bona fide intention to do so in the near future. Additionally, the black and white nature of the specimen means the applicant is not claiming a particular color scheme. In other words, Universal will enjoy protection in this design regardless of how it is colored in the future (assuming a registration is issued).

On July 7th, Universal City Studios, LLC filed multiple applications related to the Jurassic World logo for similar items. Does this guinea pig mark represent a new movie or show on the horizon from Universal?

Monday, July 13, 2015

Victoria Secret Seeks Protection of Facebook Page with Trademark Registration

On July 6th, Victoria Secret Stores Brand Management, Inc. filed a trademark application for VICTORIA SECRET SPORT as it relates to "[o]nline social networking services in the field of athletic apparel, fitness and sports[.]" Victoria Secret submitted a picture of the brand's Facebook page as a specimen of use, which Victoria Secret claimed to be using since August of 2011.

Although Victoria Secret likely had strong legal protection for its mark even without the registration for VICTORIA SECRET SPORT as it relates to online social networking, applications like this show the extent many brands take to fully protect, as much as possible, their valuable brand name (the amount of money they make, of course, contributes to the number of trademark applications they file).

While not every use of "Victoria Secret Sport" in conjunction with an online network site will lead to liability, be wary of using this term as the title of an online social networking page or handle. Even with a defense, a trademark dispute with a large company (especially one with a pending trademark registration), is not something with which you want to be involved.

Friday, July 10, 2015

Today's Tip for Saving Your Trademark Filing Fees - Descriptive or Generic Trademarks

Applicants only filed 132 trademark applications with the USPTO on July 4th (understandably), so I am going to use this post to describe a common issue that will cause the USPTO to reject an application (and thus a loss of filing fees for thee applicant) - filing a generic or merely descriptive trademark.

Generic terms are per se ineligible for trademark protection. Think of CAR DEALER for a car dealer, CAR WASH for a car wash, and GROCERY STORE for a grocery store. Can you see why generic terms are ineligible for trademark protection? They do not distinguish one's goods or services from others. Additionally, to give any one person or business a monopoly over a generic term would make it impossible for others to use that term to describe its services.

Similarly, Section 2(e)(1) of the Trademark Act (15 U.S.C. 1052(e)(1)) prevents registration of a mark that is merely descriptive of the goods or services identified in the application until that mark becomes associated with the applicant. Think of QUICK AND CLEAN as it relates to car wash services. These marks can only be registered after they obtain "acquired distinctiveness," meaning that the applicant has been using the mark long enough that consumers view it as associated with the applicant's goods or services rather than as a general, descriptive term.

While browsing the July 4th filings, I noticed that an individual in Iowa filed an application for TRAUMA-SENSITIVE YOGA AND RESILIENCY TRAINING FOR FIRST RESPONDERS as it relates to - you guessed it - trauma-sensitive yoga and resiliency training for first responders. The applicant went so far as to use the mark in the actual description of the services. I predict an office action citing a Section 2(e)(1) merely descriptive refusal when this application is assigned to an examining attorney within the next three months.

The above trademark, which was filed by an individual, also demonstrates the importance of consulting with an attorney prior to filing a trademark application. In this case, working with an attorney would have saved the applicant's $275 filing fee, which is probably lost now.

Thursday, July 9, 2015

Ubisoft Preparing for Rainbow Six Siege Release - RAINBOW SIX Trademark for Toys Filed

On July 3rd, Ubisoft Entertainment, Inc. filed a trademark application for RAINBOW SIX covering the following goods: toys and playthings, namely dolls, toy action figures, toy vehicles and accessories thereof; plush toys; playsets for dolls and toy action figures; hand held units for playing electronic games; collectable toy figures; board games; toy weapons; playing cards and card games; trading card games.

This is an "intent to use" application, meaning Ubisoft is not yet selling these items but plans to do so in the near future. Given the October 13, 2015 scheduled release of the new Rainbow Six Siege video game, this application comes as no surprise. Expect to see a line of toys and action figures coincide with the game's release.

Wednesday, July 8, 2015

Tasty New Beer from 21st Amendment Brewery? TOASTER PASTRY Application Filed.

A delicious new beer may be in the works at 21st Amendment Brewery. On July 2nd, 21st Amendment Brewery Cafe, LLC filed an "intent to use" trademark application for TOASTER PASTRY. The application listed the associated goods as, very simply, "beer."

The "intent to use" basis of the application means 21st Amendment Brewery Cafe, LLC is not yet using this trademark in commerce, but has a bona fide intention to do so in the near future and wants to secure priority in this name as it relates to beer.

Any thoughts on how a TOASTER PASTRY named beer would taste?

Tuesday, July 7, 2015


On July 1st, Amblin Entertainment, Inc. and Universal City Studios, LLC filed 12 trademark applications for both the JURASSIC WORLD word mark and design. These applications covered everything from energy drinks and flavored waters, to a variety of grocery items (including bakery desserts, ketchup, licorice, marshmallows, and potato salad), to textiles (including bedding, sheets, washcloths and bedskirts), to dental floss, cups and mugs, lunch boxes, toothbrushes, beach bags, key chains, backpacks, and wallets.

Amblin Entertainment and Universal filed all these applications on a 1(b) (or "intent to use") basis, meaning they are not yet selling these items but have a bona fide intention to do so in the near future. Given the overwhelming success of the movie, I am not surprised that Amblin and Universal are seeking to cast a wide net of legal protection by filing these applications over so many different items (although given the relative fame of this mark, they likely had protection anyway).

Expect to see the JURASSIC WORLD line of products expand very soon.