Monday, November 30, 2015

GRONKIN' GONUTS Trademark Application Is Out of Bounds

On November 24, a man from New Hampshire (who I assume is a big Patriots fan) filed a federal trademark application for the mark below as it relates to "[h]ats; [h]ooded sweatshirts; [s]hirts; [s]weatshirts[.]"
Unfortunately for the applicant, he did not appear to work with an attorney and his nonrefundable filing fee for this application is lost.

Why? First, this application is clearly based on the DUNKIN' DONUTS logo, slogan, and business name. The main purpose of trademark laws is to prevent others from confusing customers as to the source of a good or service and to prevent others from riding off the goodwill of more established companies. Specific to trademark registrations, Section 2(d) of the Trademark Act prohibits the registration of a mark that "[c]onsists of or comprises a mark which so resembles a mark [previously] to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive..."

Dunkin' Donuts owns several trademark registrations, some of which fall within the same class of goods listed on this GRONKIN' GONUTS application. Given the similarity of this application to those DUNKIN' DONUTS applications, the Trademark Office will issue an office action refusing to register this mark due to that likelihood of confusion.

But that is not the applicant's only problem. The mark also clearly incorporates Rob Gronkowski's likeness. Whenever a trademark application incorporates the "name, portrait, or signature...[of] a particular living individual..." that person's consent must be of record with the Trademark Office. 15 U.S.C. 1052(c). This applies to stage names and nicknames as well. TMEP 1206.03. The purpose of this requirement is to "protect rights of privacy and publicity that living persons have in the designations that identify them." TMEP 1206. This applicant did not file Rob Gronkowski's consent to registration this mark, so the Trademark Office will also refuse to register it for that reason.

This application highlights the complexities of filing a federal trademark application and demonstrates the importance of working with a trademark attorney. Any qualified trademark attorney would have told this applicant right away that this particular trademark could not be registered for the reasons stated above. Luckily, this application was filed on an intent-to-use basis, which means the applicant is not actually selling anything containing this mark yet. If he was doing so, any money he spent on marketing and producing the goods would also be lost, and the actual sale of these items could have opened him up to further liability.

Monday, November 23, 2015

New Restaurant From Dogfish Head Brewery?

On November 18, Dogfish Head Marketing, LLC (an entity with the same address as the Dogfish Head Brewery) filed a federal trademark application for CHESAPEAKE & MAINE in class 43 for "[r]estaurant and bar services; Serving food and drinks[.]"
According to Dogfish Head's website, the company does serve food at its brewery and operates three Dogfish Head Alehouses around the Washington, D.C. area. However, the website does not mention a Chesapeake & Maine restaurant, which this trademark application clearly seems to indicate. Given that Dogfish Head filed the trademark application on an intent-to-use basis, this makes sense (it means Dogfish Head is not using the trademark in commerce yet). It appears this Chesapeake & Maine restaurant may be in the early stages of development but is not yet open. Keep an eye out for a possible new restaurant announcement from Dogfish Head within the next year or so.

Friday, November 20, 2015

How to Lose Your Trademark Filing Fee - File IPHONE mark

In another lesson on what not to do, an individual in Texas (without the help of an attorney, it seems), filed a federal trademark application for IPHONE AIR as it relates to cell phones, cell phone software, cell phone accessories, and a variety of other related products. This application is in serious trouble considering when I first clicked on it, I thought Apple was in the process of developing an "Air" version of the iPhone, only to find out this application was not filed by Apple, Inc. (this is the kind of confusion trademarks laws are designed to prevent).
It goes without saying that Apple, Inc. holds many, many trademark applications or registrations for both iPhone and the iPad Air and that the above application clearly conflicts with Apple's previous registrations. Given that Section 2(d) of the Trademark Act prohibits the registration of any mark that so resembles a previously registered mark that it is likely to cause confusion among consumers, the Trademark Office will surely issue the above application an Office Action refusing to register it on those grounds.

Even if the Trademark Office did not issue an office action (which is impossible), Apple would file an opposition to this mark during the publication phase at the end of the registration process. During this phase, a pending trademark application is published in the Trademark Office's Official Gazette for 30 days. During that time, anyone who feels they may be damaged by the registration is allowed to file an opposition to the application. Filing this opposition will initiate a lawsuit-like proceeding in front of the Trademark Trial and Appeal Board (TTAB).

The lesson? Work with a trademark attorney who can help you identify issues like the above. At the very least, an attorney can help you reduce the risk of losing your nonrefundable filing fee like the applicant above. His $225 fee is all but lost.

Thursday, November 19, 2015

Lionsgate Files 16 Trademarks For Comedy Featuring YouTube Stars

On November 14, Lionsgate Entertainment filed 16 different federal trademark applications for Dirty Thirty and Dirty 30 [necessary? - ed.]. As often precedes the release of a new show or movie, these trademark applications cover not only the "[p]roduction and distribution of motion pictures" but also a variety of products used to promote the show/movie (i.e. clothing, bags, post cards, books, even nail polish).
According to, DIRTY THIRTY is a comedy featuring YouTube stars Grace Helbig, Mamrie Hart, and Hannah Hart. It appears this will be a film "about a birthday party that goes off the rails." 

By filing these trademarks, Lionsgate is establishing a wide net of legal protection for the film's name and related accessories (which it can also license if it desires). 

Wednesday, November 18, 2015

How To Lose Your Trademark Filing Fee - File "F*ck"

I've blogged about trademark applications containing the word "fuck" on multiple occasions. My most recent post is here. Nevertheless, every few weeks I run across a trademark application containing the term. Most recently, an individual in Indiana filed a design mark application for the graphic shown below.
This guy sounds like he's pretty frustrated in the dating world, but he's going to be even more frustrated when he finds out the Trademark Office will not register this mark and his $225 nonrefundable filing fee is lost.

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.
Not only will this application be refused under Section 2(a) for being scandalous, but the applicant appears to be only using his term as decorative, ornamental use and not as a trademark given the specimen submitted above. As previously blogged about here, a slogan plastered across the front of clothing rarely functions as a trademark and causes issues in the registration process.

This application again demonstrates the importance of working with a qualified trademark attorney. Any good attorney would have told him right away that he had no chance of obtaining a registration for his phrase had the applicant contacted an attorney (and probably free of charge too). Since Trademark Office filing fees are almost always nonrefundable, this quick phone call could have saved this applicant $225, which is now lost.

Tuesday, November 17, 2015

Major League Baseball Files New Design Mark

On November 12, Major League Baseball Properties, Inc. filed two trademark applications for the same design, shown below (the goods/services were in two different classes, hence the two applications).
The services listed on the first application are "Entertainment services, namely, baseball games, baseball skills competitions, and baseball exhibitions; Organizing and conducting youth programs in the field of sports; Hosting and conducting events in the nature of awards ceremonies; Providing news and information in the field of youth sports competitions[.]" On the second, the goods are listed as "Clothing, namely, headwear, shirts, jackets, sweatshirts[.]"

The MLB filed both these applications on an intent-to-use basis, meaning it is not using the mark in commerce yet. From the goods/services listed, it appears the MLB plans to use this mark in conjunction with baseball games, including youth games, and on apparel promoting the games. Given the timing, this logo might be making an appearance next season.

Monday, November 16, 2015

WINO WORKOUTS Trademark Filed

On November 11th, an individual in California filed a federal trademark application for WINO WORKOUTS.
The service listed on the application is "[p]roviding on-line videos featuring working out with wine, not downloadable[.]" Unfortunately this is an intent-to-use application so the applicant did not have to submit any evidence showing use of this trademark in commerce yet. It would be interesting to see how these wine workouts are marketed.

If the applicant is successful in obtaining this registration, he will obtain the exclusive, nationwide right to use the term WINO WORKOUTS as it applies to workout videos. However, I have a feeling the Trademark Office will consider this mark "merely descriptive" because the underlying service is essentially described by the trademark itself. Section 2(e)(1) of the Trademark Act prohibits the registration of a term that merely describes the underlying goods or services.

This mark may need to be amended to the Supplemental Register, where merely descriptive marks are allowed to hang out as they acquire distinctiveness in the marketplace. We will see in approximately three months when this application is assigned to an Examining Attorney at the Trademark Office.

Thursday, November 12, 2015

NOT CHOCOLATE Not Merely Descriptive?

On November 8th, a Chilean-based business called The Not Company filed five different federal trademark applications in the U.S. for a variety of goods that are "not" what they appear. Those applications are:
The applications are for the respective design show below.
All these applications are on the Principal Register. As such, they cannot be merely descriptive if they are going to be fully registered. As I've blogged about many times before, the Trademark Office considers a mark merely descriptive if "it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services." TMEP 1209.01(b).

For example, in July I blogged about a trademark for CHORIZO DOG that was filed for preserved meats and sausages. As I predicted, this mark received an office action for being merely descriptive.

Is a mark like NOT CHOCOLATE merely descriptive of a chocolate substitute that is not actually chocolate? Maybe. We will find out in approximately three months when an examining attorney at the Trademark Offices looks over this application.

Wednesday, November 11, 2015

Lawyer's Rejoice - LOVE YOUR LAWYER DAY Trademark Filed

Last Friday, my girlfriend sent me an article about November 6th being "Love Your Lawyer Day." That was news to me. Apparently, a lawyer-marketer in Florida created the "holiday" to help offset the negative views of attorneys generally held by the public.
On that same day, the American Lawyers Public Image Association (ALPIA), the association created by the lawyer-marketer, filed a federal trademark application for LOVE YOUR LAWYER DAY and listed "[p]ublic relations" as the services offered under the mark. The application indicates the ALPIA first started marketing this "holiday" on October 22, 2015.
Ironically, for an application filed by a lawyer, for lawyers, by a lawyer marketing association, for a LOVE YOUR LAWYER DAY mark, the application has a glaring deficiency. The specimen for this application (which is supposed to show the mark being used in commerce on the associated goods or services) is shown above but is not sufficient.

According to TMEP 1301.04, a specimen for a service mark "must show proper use in commerce of the mark, which may be established by (1) showing the mark used or displayed as a service mark in the sale of the services, which includes use in the course of rendering or performing the services, or (2) showing the mark used or displayed in advertising the services, which encompasses marketing and promotional materials."

A textual display of the mark with nothing more may be sufficient for the drawing, but not the specimen. This application will get an Office Action in approximately three months when it is assigned to an examining attorney at the Trademark Office. That Office Action will request a substitute specimen that actually shows the mark being used in commerce in relation to public relations services. Fortunately, from the looks of the ALPIA's website, it has some decent specimen material it can submit as a substitute, although it should have just submitted those materials with the application in the first place.

Tuesday, November 10, 2015

Fox May Be Planning Live Ice Age Show

The popular children's movie Ice Age (and all its sequels) may be getting a live show in the near future if a recent trademark application by Twentieth Century Fox is any indication. On November 5th, the company filed a federal trademark application for ICE AGE LIVE!
The goods listed on the application are numerous:
Presentation of live show performances related to motion picture films; providing on-line information in the field of motion picture film and video entertainment and live show performances related to motion picture films via the Internet; entertainment services in the nature of non-downloadable videos and images featuring motion picture film and live show performances related to motion picture films transmitted via the Internet and wireless communication networks; on-line journals, namely, blogs featuring personal opinions in the field of adventure, comedy and family entertainment; entertainment amusement park and theme park services related to motion picture films; entertainment services in the nature of musical, comedy and dramatic performances related to motion picture films[.]
Fox filed this application on an intent-to-use basis, which means the company is not currently using this trademark but has a bona fide intention to do so in the near future. In other words, it may be in talks to create a live Ice Age show. If you're an Ice Age fan, pay attention to this application.

Friday, November 6, 2015


Recently, I blogged about a trademark filing for DOLLAR TOOTHBRUSH CLUB for a subscription based toothbrush service. Only a couple days later on, November 2nd, a couple guys in Florida filed a federal trademark application for DOLLAR TAPE CLUB as it relates to "[s]ubscription-based order fulfillment services in the field of Hockey sporting goods, namely, adhesive tape for hockey stick and uniform support, as well as skate laces, stick tape, hockey pucks and stick wax[.]"
As mentioned in my previous post on DOLLAR TOOTHBRUSH CLUB, the Dollar Beard Club trademark application received an office action for being confusingly similar to the previously filed Dollar Shave Club trademark. I mentioned DOLLAR TOOTHBRUSH CLUB may suffer a similar fate if the Trademark Office thinks toothbrushes are related to shave products.

In the case of DOLLAR TAPE CLUB, hockey products are probably so unrelated to toothbrush and shave products that this application will not receive an office action for being confusingly similar. However, this application will get an office action because the specimen (shown above) does not match the mark filed (DOLLAR TAPE CLUB). If the specimen does not show the applied for mark being used on the goods, there is no evidence that the mark is being used in commerce. TMEP 904.07(a). However, if the applicant submits a better picture of the above specimen showing "Dollar Tape Club" rather than DSC, they can easily overcome this office action.

On an unrelated note - what a great idea. As a former hockey player, maintaining a supply of hockey tape, wax, and laces was always a task. This could be a hit in the hockey market.

Thursday, November 5, 2015

BACONARA For Pizza Sauce Filed

Every once and a while I find a delicious trademark filing, and this is one of them. A creative (and hopefully culinary-inclined) individual in Florida filed a federal trademark application for BACONARA on November 1st. The only goods listed on the application are "pizza sauce."
A bacon flavored marinara sauce? Sounds good to me. If this applicant secures a registration for this trademark, he will obtain the exclusive, nationwide right to use the term BACONARA on goods related to pizza sauce.

However, the applicant filed this mark as an intent-to-use application. Section 1(b) of the Trademark Act allows the filing of "a trademark or service mark application based on a bona fide intention to use a mark in commerce 'under circumstances showing the good faith of such person.'" This means an individual can file a trademark for a term they are not yet using as long as that individual has a bona fide intention to use the mark in the near future.

At some point, the applicant will need to file an Allegation or Statement of Use showing the use of this mark in commerce (i.e. him selling BACONARA sauce). If he cannot do this, he will not be awarded a federal registration for his term. This applicant did not work with an attorney, so whether or not BACONARA is completely off the table for sauce makers is yet to be seen.

Wednesday, November 4, 2015


Following the trend of monthly subscription services, an individual in Colorado (hopefully a dentist) filed a federal trademark application for DOLLAR TOOTHBRUSH CLUB on October 30th. The services specified In the application are "online ordering services in the field of oral and dental products; online retail store services in the field of oral and dental products; online retail store services featuring oral and dental products."

According to the specimen submitting with the application (seen above), this service works similar to Dollar Shave Club or Dollar Beard Club in that a customer can receive a new toothbrush every month for a low subscription price. The application indicates this individual has been selling these toothbrushes since May 25, 2015.

However, if the current status of the DOLLAR BEARD CLUB applications are any indication, this application may be at risk of receiving a likelihood of confusion office action from the Trademark Office. The Trademark Office issued an office action refusing to register DOLLAR BEARD CLUB for various beard grooming products due to, among others, a registration for DOLLAR SHAVE CLUB for shaving products. If the Trademark Offices believes oral and dental products are related to shaving products, the DOLLAR TOOTHBRUSH CLUB application will receive a likelihood of confusion office action as well. We will find out in approximately three months when this application gets assigned to an examining attorney.

Tuesday, November 3, 2015

University Of Louisville Claims SOCCERVILLE Trademark...But Ornamental Use?

On October 29th, the University of Louisville filed a federal trademark application for SOCCERVILLE as it applies to shirts. However, obtaining a registration for clothing items can be tricky. Applicants often get an office action refusing to register their mark because the mark is seen as merely ornamentation and not as a functioning trademark. UL may have that problem with this application.
According to the Trademark Office, "[s]ubject matter that is merely a decorative feature does not identify and distinguish the applicant’s goods and, thus, does not function as a trademark." TMEP 1202.03. In determining whether a mark is merely decorative, and thus should be refused registration for being ornamental matter rather than a trademark, the Trademark Office will consider the following factors:

(1) the commercial impression of the proposed mark; 
(2) the relevant practices of the trade; 
(3) secondary source, if applicable; and 
(4) evidence of distinctiveness.

Id. The Trademark Office often finds slogans on apparel to be decorative slogans rather than source identifying trademarks ("[s]logans 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." TMEP 1202.03(f)(i) citing In re Hulting, 107 USPQ2d 1175, 1181 (TTAB 2013)).

In this particular case, the UL may have trouble convincing the Trademark Office that a SOCCERVILLE slogan across the front of a shirt is a source identifying trademark rather than a decorative slogan. If the UL had used this slogan in the tag of the shirt, or if it has other registrations for the SOCCERVILLE mark (and thus can use a "secondary source" argument), it would have a better chance at registration. However, when this particular application is assigned to an Examining Attorney in approximately three months, I predict an office action on the basis of ornamentation under TMEP 1202.03.

Monday, November 2, 2015

Sam Adams Files Trademark for New Beer

Beer companies frequently file federal trademark applications for each beer name they come up with so that they are afforded protection if another company starts using a similar name on beer. Sometimes these applications are filed before the company even starts selling the beer, which gives consumers a sneak peek at potential new beers. In this case, the Boston Beer Corporation (aka Sam Adams) filed a federal trademark application for SAM ADAMS HEAVEN AND HELLES and HEAVEN AND HELLES on October 26th.
The goods listed on each application are simply "beer[.]" The company filed this application on an intent-to-use basis, which means it is not yet being sold but is currently in the works. If you're a fan of helles style beer, keep a look out for this one.