Friday, October 30, 2015

The GOLF CART PONCHO Is Here

If you wanted to call your golf cart cover a "golf cart poncho" you may be out of luck. On October 24th, a company based in New Hampshire filed a federal trademark application for GOLF CART PONCHO as it relates to "[f]itted covers for motorized golf cart vehicles[.]"
According to the trademark application, the New Hampshire company has been selling these golf cart ponchos since June 2012. If the company is successful in obtaining this registration, they will obtain the exclusive right to use the term GOLF CART PONCHO to describe anything related to covers for golf carts.

My only question about the application is this - how do you get out of the cart when the poncho is on? Also, any descriptiveness issue here?

Thursday, October 29, 2015

Trademark for EMOJI BANDAGES Filed

On October 23rd, a company out of Florida called Kangaroo Manufacturing filed a federal trademark application for EMOJI BANDAGES as it relates to "[a]dhesive bandages; Adhesive for bandages for skin wounds; Bandages for dressings; Bandages for skin wounds[.]"
A couple months ago, I blogged about EMOJI CARDS, a trademark filed for a charades-like card game involving emojis. It looks like Emoji Bandages are next. What a time to be alive.

Unfortunately, Kangaroo Manufacturing filed this trademark on an intent-to-use basis, meaning it is not yet using the mark and therefore we do not have a specimen showing the mark in commerce to see what these bandages might look like.

On another note, does this trademark application have any issues in being "merely descriptive" of the goods offered in conjunction with it? Maybe, if the bandages do in fact display emojis. Kangaroo Manufacturing should pay attention to the EMOJI CARDS application, which will be assigned to an examining attorney relatively soon, to see if an office action get issued by the Trademark Office regarding the potential descriptiveness of that application. If not, Emoji Bandages may be in the clear.

Wednesday, October 28, 2015

BACON FLAVORED BOURBON Trademark Filed...But There's a Problem...Maybe

On October 22nd, Branded Spirits, Ltd. in San Francisco filed a federal trademark application for BACON FLAVORED BOURBON as it relates to "[a]lcoholic beverages, namely, [b]ourbon[.]" 
According to the application, Branded Spirits started selling this flavored bourbon back in August. But unfortunately for the applicant, I believe this application is going to have significant issues in getting registered with the U.S. Patent and Trademark Office.

The problem? Section 2(e)(1) of the Trademark Act prohibits the registration of trademarks that "merely describe" the related goods or services. The U.S. Patent and 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." 

In this case, the goods are bourbon. "Bacon flavored bourbon" certainly describes a quality or ingredient of these goods. Therefore, when an examining attorney at the Trademark Office reviews this application in approximately three months, he or she will almost certainly issue an office action refusing to register this mark pursuant to Section 2(e)(1).

Why can't someone register a merely descriptive trademark? This application is the perfect example. If Branded Spirits could obtain a federal trademark over BACON FLAVORED BOURBON, it would have the exclusive, nationwide right to use that term to describe bourbon. No one person or company could make bourbon and describe it as "bacon flavored bourbon" without risking liability for trademark infringement. Such a result would stifle commerce and is simply unfair. Congress believed every person should be able to use descriptive terms to describe features of their goods. This is the reason it enacted Section 2(e)(1) and the reason why merely descriptive trademarks should be avoided whenever possible.

UPDATE - this applicant sought registration on the Supplemental Register, which does not offer all the benefits of a full registration on the Principal Register, but will permit a merely descriptive trademark to register there until it "acquires distinctiveness" and becomes capable of registration on the Principal Register. However, a generic trademark is never capable of registration on either Register. 

The USPTO uses a two part test to determine whether a trademark is generic:  (1) What is the genus of goods or services at issue? and (2) Does the relevant public understand the designation primarily to refer to that genus of goods or services? What do you think? Is BACON FLAVORED BOURBON merely descriptive (and capable of residing on the Supplemental Register) or generic (and incapable of any type of registration)?

Tuesday, October 27, 2015

Viacom Files Trademark for THE SPONGEBOB MUSICAL

A couple months ago, a variety of outfits reported on the announcement of a SpongeBob SquarePants Broadway musical. Viacom took another step towards making this musical a reality by filing a federal trademark application for the musical's name on October 21st.
Viacom filed the application as an intent-to-use application (which makes sense considering the musical isn't set to premier until June/July 2016) for "[e]ntertainment, namely, live entertainment performances in the nature of live instrumental, musical, live comedy and live drama, live musical variety and dance performances; organization of exhibitions for educational and cultural purposes; production and provision of entertainment news, and entertainment information via communication and computer networks[.]"

This particular trademark application is for the "stacked format" of the title, which suggests this design is how the title will appear on marketing materials.

According to Variety.com, "'The SpongeBob Musical' begins previews at Chicago’s Oriental Theater June 7, 2016, for a limited engagement that runs July 3."

Friday, October 23, 2015

Today's Tip for Saving Your Trademark Filing Fee - Don't File an NFL-like Logo

Any trademark attorney will advise you to avoid filing or using any trademark that resembles a professional sports team's colors, name, and/or logo. These leagues and teams are aggressive about policing their intellectual property and typically have trademark registrations for a variety of goods and services.

Unfortunately the applicant that recently filed a LOS ANGELES CHARGERS design mark did not appear to work with an attorney.

On October 17th, an individual in California filed a federal trademark application for the logo below as it relates to "[e]ducation and entertainment services, namely, production and distribution of ongoing television programs in the field of family management and relationships; Educational and entertainment services, namely, a continuing program about football games accessible by means of radio, television, satellite, audio, video, web-based applications, mobile phone applications, computer networks, etc."
I'm not even a big football guy and immediately recognized this logo as almost exactly resembling the San Diego Charger's logo. Undoubtedly the team and NFL will take notice as well, especially considering that the specified services are related to entertainment and football.

When this application is assigned to an examining attorney at the Trademark Office in approximately three months, that attorney will almost certainly issue an office action refusing to register the above mark due to its similarity with a previously filed San Diego Charger's mark. 

If for some incredible reason this application slips past the examining attorney, you can be sure the NFL will file an opposition or otherwise fight this attempted registration. Unfortunately for the applicant, this means his $275 nonrefundable filing fee, and any other money he spent on designing and marketing this logo, is almost certainly lost. This is another instance in which the applicant could have benefited from working with an experienced trademark attorney who would have recognized these issues right away and advised against this application.

Thursday, October 22, 2015

Target Files 20 Trademark Applications For Possible New House Brand

On October 16th, Target Brands, Inc. filed twenty different trademark applications for the phrase MADE BY DESIGN. Target filed each application in a separate class of goods, which accounts for the large number of applications.
Some of the products filed in the twenty different classes include fresh fruit, nuts, and vegetables, jewelry, stationary, baked goods, clothing, bed, kitchen, and bath linens, furniture, carrying bags, kitchen utensils, and cosmetics.  

Is this a new house brand by Target? Maybe. Target filed all of the applications on an intent-to-use basis, which means the company is not yet using the trademark in commerce but has a bona fide intention to do so in the near future. While this might signal Target is going to release a line of products under this trademark, it also might only signal that it is one of the brand names the company is considering. Regardless, a new house brand by Target may be hitting stores soon.

Wednesday, October 21, 2015

CAP'N CRUNCH Files Sweet Trademark

The Quaker Oats Company, the division of PepsiCo that owns the CAP'N CRUNCH brand, recently filed a trademark for a sweet new take on the classic breakfast cereal. On October 15th, the company filed a federal trademark application for CAP'N CRUNCH DELIGHTS.
According to the trademark application, the Quaker Oats Company started selling these "delights" in July 2015. The application describes the product as " [s]weet dough-enrobed foods consisting of balls of dough with sweet fillings[.]" Look for them in a store near you.

Friday, October 16, 2015

Mackinac Island Creamery Attempts to Secure PECAN TURTLE FUDGE For Ice Cream

A Michigan ice cream shop recently filed a delicious trademark application related to ice cream. The Mackinac Island Creamery, which is apparently owned by the General Container Company, LLC, filed a federal trademark application for PECAN TURTLE FUDGE ice cream on October 11th.
Surprisingly, a very quick search did not reveal any other trademark applications containing pecan turtle fudge. Therefore, if the Mackinac Island Creamery successfully registers this trademark, they will essentially be the only company in the U.S. that can sell an ice cream called Pecan Turtle Fudge. According to the trademark application, the Mackinac Island Creamery has been selling Pecan Turtle Fudge since 2007. If you're in the area, check it out.

Thursday, October 15, 2015

Today's Tip For Saving Your Trademark Filing Fee - Don't File Trademark for BURGER QUEEN

In questionable move, an individual in Puerto Rico filed a federal trademark application on October 9th for BURGER QUEEN as it relates to "[b]eef patties; [f]rench fried potatoes; [f]ried meat; [and] [b]urgers contained in bread rolls[.]" The applicant filed the application on an intent-to-use basis.
Does BURGER QUEEN remind you of another entity selling burgers and fries? If so, this trademark application is in serious trouble. 

Trademark laws are designed to prevent customer confusion regarding the source of a product and to prevent junior users from riding off the goodwill of more established senior users. To that end, Section 2(d) of the Trademark Act prohibits the U.S. Patent and Trademark Office from registering any mark that is confusingly similar to a previously filed mark. Although several factors are considered when determining whether two marks are confusingly similar, the analysis generally boils down to (1) the similarity between the marks and (2) the relatedness of the goods and services.

In this case, BURGER QUEEN is very, very similar to BURGER KING and the goods are exactly the same. Also, by last count there are approximately 88 previously filed trademark applications containing BURGER KING owned by the Burger King corporation. When the BURGER QUEEN trademark application is assigned to an Examining Attorney in approximately three months, that attorney will almost certainly issue an Office Action refusing to register this mark due to the many previously filed BURGER KING applications.

Surprisingly, the applicant used an attorney to file this application. Because trademark filing fees are nonrefundable (and due to infringement issues), an attorney should always conduct a clearance search before filing an application to account for issues like the above. Whether a search was done in this case is unclear, but it is clear that the applicant's $450 filing fee (and whatever fee it paid its attorney) has been wasted.

Wednesday, October 14, 2015

New Freddie Mac Logo? Mortgage Giant Files Design Trademarks

Mortgage giant Freddie Mac may be in the processing of implementing a new logo based on a recent trademark applications filed by the organization. On October 8th, the Federal Home Loan Mortgage Corporation filed a federal trademark application for the design below as it relates to "financial and real estate services in the field of mortgage loans and mortgage-backed or mortgage related securities[.]" 
Although the color scheme is similar, this mark is a departure from the current logo displayed on Freddie Mac's website
The mark above was also filed by Freddie Mac on the same day for the same services. The intent-to-use basis of these applications (meaning Freddie Mac isn't using them yet), and the fact that I could not find these designs anywhere on the internet, signals that Freddie Mac is in the process of re-branding.

Freddie Mac's strategic use of intent-to-use based trademark applications allows the organization to secure priority in mark before it is even being used. These applications are permissible and lawful as long as Freddie Mac had a bona fide intention to use the marks in the near future prior to filing. Keep an eye out for a logo change by Freddie Mac soon.

Monday, October 12, 2015

St. Louis Blues File Trademark for HEARTLAND OF HOCKEY

According to the St. Louis Blues, the Heartland of Hockey is located in St. Louis, Missouri. On October 7th, the NHL team filed a federal trademark application to maximize its legal rights in that phrase.
The team filed this intent-to-use trademark for professional hockey services and a variety of hockey related merchandise. If this application matures to a federal registration, the St. Louis Blues will be the only hockey team that can use the HEARTLAND OF HOCKEY phrase. Because this application is an intent-to-use application, the Blues will need to file a Statement or Allegation of Use showing use of this trademark in commerce before a registration can be issued by the U.S. Patent and Trademark Office.

That Allegation of Use might be coming sooner rather than later, however. The team is already putting the phrase out there as part of its push to host the 2018 World Juniors Championships. This trademark application follows an announcement in mid-September that St. Louis is one of the three finalists to host the World Juniors Championships. Buffalo and Pittsburgh are also still in the running.

Friday, October 9, 2015

Today's Tip - Don't File LIVEMOMSTRONG for Apparel

In the case of another unfortunate pro se trademark applicant, a women in California filed a federal trademark application for the mark LIVEMOMSTRONG! as it relates to "[s]hirts; [s]horts; [and][w]ristbands[.]" These goods are in class 25.
Unfortunately, as most of you know, there is another very popular trademark for LIVESTRONG owned by the LiveStrong Foundation. The LiveStrong Foundation is the owner of two trademark applications in class 25 and many others in various other classes (see below for examples of LIVESTRONG apparel).
Because these marks are for the same types of goods, and are extremely similar, the LIVEMOMSTRONG! application will almost certainly receive an Office Action refusing to register the LIVEMOMSTRONG! mark pursuant to Section 2(d) of the Trademark Act. This section prevents the registration of any mark that is confusingly similar to a previously registered mark.

Trademark Office filing fees are almost always nonrefundable, so this applicant's $225 filing fee is all but lost.

This case demonstrates the importance of conducting a proper clearance search before filing a trademark application. By working with a trademark attorney, you can avoid Section 2(d) Office Actions and maximize your chances of receiving a federal trademark registration.

Wednesday, October 7, 2015

SOUTHERN TIER BREWING Trademark Filed For Cornhole Boards

On October 1st, the Southern Tier Brewing Company, LLC filed a federal trademark application for the stylized SOUTHERN TIER BREWING COMPANY logo seen below as it relates "[e]quiment sold as a unit for playing tossing games" (aka cornhole).
Why does the Southern Tier Brewing Company feel the need to file a trademark application specifically for cornhole boards? The move is probably designed to give them a leg up in fighting any unauthorized distributors of cornhole boards that bear the company's trademark. 
While Southern Tier would have some legal rights to prevent such unauthorized use even without this registration, the registration will act as an extremely persuasive deterrent if attached to a cease and desist letter. Additionally, the Trademark Office will use this application as a basis for denying the registration of any similar names and logos if used on anything related to cornhole boards (because Section 2(d) of the Trademark Act prohibits the registration of a trademark that is confusingly similar to a previously filed mark).

This trademark filing is also an important warning to individuals and companies that create cornhole boards, apparel, or other items bearing the trademarks of others. Most companies are very aggressive in protecting their brand and will go after sellers of unauthorized products. Such sales can even result in criminal liability. Do not create items bearing the trademarks of others without seeking a license from the trademark owner (or at least speaking with a trademark attorney first).

Tuesday, October 6, 2015

Kansas Bank Files Trademark for FRAT CARD

For some reason, the Bank of Prairie Village in Prairie Village, Kansas has apparently decided to develop a line of debit cards directed at fraternity men and sorority women. The Bank filed four different federal trademark applications on October 1st for the following marks: FRAT CARD, FRATERNITY MAN CARD, SORORITY GIRL CARD, and SORORITY CARD.
All of these applications are intent-to-use applications (which means the bank is not selling these cards yet but has a plan to do so in the near future) and are related to "Banking services; Debit card services[.]"

Is Prairie Village even near a campus? Are these cards available to all college students or is a fraternity membership card required? What about alumni? Does the front of the card depict a game of beer pong? 

Many questions surround this card but they start to make sense when one see the picture of the Bank's office on St. Patrick's Day - they are definitely fraternity men (as a fraternity man myself it is acceptable to make these judgments). I wouldn't be surprised to see a trademark application for FRAT BANK follow the trademarks above.

Monday, October 5, 2015

ED HARDY Water?

Remember that Ed Hardy apparel brand that was popular for about six months in 2009 (thanks Jersey Shore)? The brand featured gaudy tattoo-like patterns inspired by its creator, Don Ed Hardy, and his California tattoo shop.

For better or for worst, a recent trademark filing for ED HARDY at the U.S. Trademark Office suggests that the brand is still alive and moving into different areas...into the areas of "nutritionally fortified water, energy drinks, mineral waters, aerated waters, flavored waters and soft drinks." Hardy Way, LLC filed this ED HARDY trademark application on September 30th and made Don Ed Hardy's signature of record, which is required when a trademark identifies a living individual.
Ed Hardy water? It may be coming soon. Hardy Way, LLC filed this trademark application on an intent-to-use basis, which means they are not yet using this trademark in commerce but have a bona fide intention to do so soon. 

I am picturing a gaudy, rhinestone covered water bottle selling for $19. We will find out if I'm right in the next year or so when it comes time for Hardy Way, LLC to file their Allegation or Statement of Use showing the trademark being used in commerce.

Friday, October 2, 2015

PEEPLE v. PEEPPL - Trademark for Controversial Peeple App in Serious Jeopardy

Yesterday the Internet was in an uproar about a new app called Peeple, which is set to hit Apple's App Store this November. The Canadian based app has been dubbed a "creepy, Yelp-like app that lets you rate people like restaurants." That screams lawsuit to me.
However, the controversy surrounding the ethics of the app isn't the only issue currently facing the developers. The company's U.S. trademark applications are also in serious jeopardy. The U.S. Patent and Trademark Office suspended the applications due to a previously filed, conflicting application. Such a suspension indicates another company may have priority in the name, which will prevent PEEPLE from obtaining a federal trademark registration and potentially result in liability for trademark infringement. 

On February 6, 2015, Peep, Inc., the company that owns the app, filed two different federal trademark applications for PEEPLE. The first application is in Class 9 for "[d]ownloadable software, namely, to read, post, recommend, rate and share opinions on referrals relating to individual persons for the purpose of consumer information[.]" The second is in Class 35 for "[p]roviding a website, namely, to read, post, recommend, rate and share opinions on referrals relating to individual person for the purposes of consumer information[.]"

On May 17, 2015, the Trademark Office issued an Office Action suspending both applications due to a conflict with an earlier filed and similar application. The company's attorney submitted arguments claiming a likelihood of confusion with the earlier application did not exist but the Trademark Office issued suspension letters on June 8, 2015 for both applications, indicating it was not persuaded by the attorney's arguments.

Peeple's nemesis in the Trademark Office is PEEPPL (see the similarity?). This trademark, also filed by a Canadian company, lists a number of services that are similar to those offered by PEEPLE and listed on the PEEPLE application. Namely, PEEPPL listed on its application "[i]nternet social networking services...[c]omputer social networking software for uploading, downloading, retrieval, discussing and sharing of information, video, text and other media or multi-media...[d]ata transmission, namely, transmission of e-mails, personal profiles and information via the internet and messaging services via the internet; providing electronic bulletin boards for users to transmit messages, information, videos and text" and various related services.
PEEPPL filed its U.S. trademark application on April 3, 2014 but is basing its priority on a Canadian application filed December 13, 2013. PEEPLE also claimed priority based on a Canadian application, but its Canadian application was filed on December 8, 2014. Both PEEPPL's U.S. filing date and Canadian filing date clearly precede PEEPLE's, which means the PEEPLE trademark is in serious trouble.

The PEEPLE trademark application will remain suspended until the PEEPPL trademark registers. If it does register, Peep, Inc. will need to again try to convince the Trademark Office that a likelihood of confusion between the two marks does not exist. Given the substantial similaiarity between the marks and the relatedness of the goods and services, this will be very difficult. If Peep, Inc. cannot change the Trademark Office's mind, it will not be entitled to a U.S. trademark registration and won't be able to use the PEEPLE mark in the United States without risking liability for trademark infringement.

Peep, Inc.'s saving grace may be that the PEEPPL trademark application is also suspended. Because the PEEPPL trademark's priority is based on a foreign registration, the owner is required to submit the foreign registration to the U.S. Trademark Office. The owners of PEEPPL have until March 28, 2016 to submit ithe foreign registration or the application will be deemed abandoned (unless it states their foreign registration is still pending, in which case it will be given additional time to respond). If the application is abandoned, it will clear the way for the PEEPLE trademark to finally register.

Peeple is currently causing a stir in the United States but the name might not be around long if it cannot maneuver its way around its suspension in the Trademark Office or work out a deal with the owners of the PEEPPL mark.

Thursday, October 1, 2015

Trademark For Beer Pong Washer Filed

The game of beer pong just got more sanitary (note - is that possible?). No more dirty water cups filled with hair, dirt, and everything else on the floor of a college house. THE CLEAN CUP is here.

This trademark application, filed on September 25th by House Rules, LLC, is for "automatic game ball washers; game balls; table tennis balls; portable automatic game ball washers [and] [o]n-line retails store services featuring automatic game ball washers, table tennis balls, portable automatic game ball washers, and game balls."
If House Rules, LLC is successful in obtaining this trademark registration, it will have the exclusive, nationwide right to use THE CLEAN CUP as it relates to the listed services.

Is there a descriptiveness issue under 2(e)(1) of the Trademark Act though? Under that provision of the Act, a trademark that "merely describes" the goods or services listed on the application cannot be registered on the Principal Register. As mentioned in previous posts, 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).

Does THE CLEAN CUP describe an automatic game ball washer? In other words, a cup that cleans game balls? I could see it. If House Rules, LLC gets an Office Action citing Section 2(e)(1), it'll need a strong rebuttal shot to win this registration.