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.

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