Wednesday, March 30, 2016

Did Taylor Swift File These Trademark Applications for SWIFTSEND, THE SWIFTLIFE and Several Others?

On March 25th, a Delaware limited liability company called Cobalt Canyon, LLC filed 20 federal trademark applications for a variety of trademarks that seem to be associated with the signer Taylor Swift.
The marks are seen above and include filings for SWIFTSEND, TAYPLAY, TAY, and THE SWIFTLIFE. The applicant filed each mark in both Class 041 and Class 035 (which is why each mark appears twice) for a variety of services. Those services include "[e]ntertainment services in the nature of life musical performances," "[e]ntertainment, namely, live music concerts," "[e]ntertainment services, namely, public appearances by a muscial artist and entertainer," "fan club services," and "computerized on-line ordering services featuring a wide variety of products related to a musical artist and an entertainer." Seems suggestive of a popular musical artist that uses variations of Swift- and Tay-, no?

In the past, Taylor Swift has filed trademark applications under her own name and under her IP management and holding company, TAS Rights Management, LLC (as I've blogged about before). However, a quick search of the U.S. Trademark Office's database does not show any previous filings for Taylor Swift-related trademarks by Cobalt Canyon, LLC.

The nature of Cobalt Canyon, LLC's relationship with Taylor Swift, if any, is unclear. Although the LLC was legally organized in Delaware, the address listed on the trademark applications corresponds to the New York City office of the law firm McGuire Woods.

Whoever is behind these trademark applications spent a significant amount of time and money getting them filed. If these applications were not filed by Taylor Swift, the similarity of the marks and the relatedness of the services with those provided by the singer mean these marks border on the lines of infringement (and many of them probably do infringe Taylor's marks). That being said, and given that Taylor Swift is especially protective of her brand, I find it unlikely that anyone other than her would file these trademark applications.

Monday, March 28, 2016

PGA Tour Files Trademark Application For...Goat?

On the day the 2016 World Golf Championships - Dell Match Play began, the PGA Tour, Inc. filed three trademark applications. Two related to the President's Cup but the third related to something a little different...a goat.

That's right. On March 23rd, the PGA Tour, Inc. filed a federal trademark application for the goat silhouette seen below.
What does the PGA intend to use this goat trademark on? The goods and services listed on the application provide some insight. 

The goods and services listed are "wine and beer glasses, wine openers, and bottle openers" in Class 021, "[m]en's and women's clothing, namely shirts, sweaters, jackets, pants, shorts, and headwear" in Class 025, "[s]porting goods, namely, golf clubs, golf bags, golf bag tags, golf club head covers, golf balls, ball markers, and divot tools" in Class 028, and "[e]ntertainment services, namely in the nature of gold tournaments" in Class 041. This application was filed on an intent-to-use basis so a specimen showing use of the mark in commerce is not yet available.

What does this goat have to do with the PGA Tour? I have no idea. However, one day before the PGA Tour filed this trademark application, it did post a video of Divot the Goat picking his winner of the Dell Match Play tournament. Maybe that silhouette is Divot?

Friday, March 25, 2016

Guest Post - 3 Tips For Registering a Hashtag as a Trademark

As I search the U.S. Patent and Trademark Office's database on almost a daily basis, I often run across trademark applications or registrations for hashtag marks. These marks have been increasingly popular over the last couple years as companies attempt to develop a presence on social media.

But can these hashtags be registered as trademarks? Yes, they can, but only under certain circumstances. Cheryl Hodgson of Hodgson Legal wrote an excellent article on her Brandaide blog about the use of hashtags as trademarks and, more specifically, three tips for registering a hashtag as a trademark. To read the article, check out the article at the following link:

How To Trademark A Hashtag [Brandaide Blog]

Thursday, March 24, 2016

COTTON CANDY Trademark Highlights Difference Between Descriptive, Arbitrary Marks

On March 20th, a corporation in New York filed a federal trademark application for COTTON CANDY. At first glance, one might think this trademark is merely descriptive and not capable of protection. But it's all about the related goods or services.
A merely descriptive mark "describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services." TMEP 1209.01(b). Merely descriptive marks are weak trademarks. They cannot be registered on the Principal Register (where you want to be) at the U.S. Patent and Trademark Office until a showing of "acquired distinctiveness" (which is not easy). TMEP 1209.01. See TMEP 1212 for more information on acquired distinctiveness.

On the other hand, arbitrary marks are very strong trademarks. They can be registered on the Principal Register without a showing of acquired distinctiveness. An arbitrary mark is one "comprise[d] [of] words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality, or characteristic of the goods or services (e.g., APPLE for computers; OLD CROW for whiskey)." TMEP 1209.01(a).

In plain English, merely descriptive trademarks are difficult to protect and register because the law is designed to prevent one party from claiming a monopoly over a term that is used by many to describe certain goods or services. As a cotton candy vendor, imagine how difficult it would be to describe your product if you could not use the term "cotton candy." Arbitrary marks, on the other hand, are unique and stand out because they are typically used on unrelated goods or services.

In the case of the COTTON CANDY mark above, the applicant listed "[t]owels" in Class 024 as the related goods. Cotton candy is completely unrelated to towels, making this trademark arbitrary (and strong). 

This mark demonstrates the importance of considering the goods or services offered in conjunction with a trademark. If this corporation offered cotton candy (or arguably any candy) under this trademark, it would probably be merely descriptive. Offering towels transforms it into an arbitrary mark.

Note - it is also possible the COTTON CANDY mark is suggestive. A suggestive mark "when applied to the goods or services at issue, require[s] imagination, thought, or perception to reach a conclusion as to the nature of those goods or services." TMEP 1209.01(a). Use of these towels may provoke warm, fuzzy feelings like eating cotton candy. In that case, the mark could be suggestive. As far as registering this trademark with the USPTO, the distinction does not make much of a difference. Suggestive marks are also strong trademarks and can be registered without a showing of acquired distinctiveness.

Monday, March 21, 2016

SoulCycle Files Trademark Application for Yellow Wheel Design

On March 16th, the popular spinning franchise SoulCycle filed a federal trademark application for the yellow wheel seen below (they did claim yellow as a feature of the mark).
The services listed on the application are too numerous to cleanly list, but are all in Class 041 for a variety of fitness and entertainment services. Examples include "[p]hysical fitness training services...physical fitness conditioning classes...providing podcasts via video and audio in the fields of exercise..[and] the production and distribution of a television channel, in the fields of exercise fitness, wellness and personal development." The company also filed trademark applications for the same design related to a variety of fitness software in Class 009 and clothing in Class 025 on the same day.
The application lists a first use date of May 2006 [I had no idea SoulCycle has been around so long - ed.]. According to my two minute Google research, the yellow wheel adorns SoulCycle spinning bikes, storefronts, and the company's website.

Another quick search of the United States Patent and Trademark Office's website revealed the company holds 59 live trademark applications or registrations for mainly a variety of SOUL- and bike wheel related marks.

Friday, March 18, 2016

Seattle Seahawks File Trademark Application for BLUE THUNDER Drumline

Apparently seeking to maximize legal protection for the team's drumline, the Seattle Seahawks (Football Northwest, LLC technically) filed a federal trademark application for BLUE THUNDER on March 14th.

The application was filed in Class 041 for "[e]ntertainment services, namely, live musical performances by a marching band." The specimen submitted with the application (showing use of the mark in commerce) is seen below.
According to the application, the team has been using the mark at least as early as August 2004. According to the specimen, BLUE THUNDER is "not your typical drumline" and "uses a variety of rhythms and visuals, incorporating rock and roll drumming alongside drum corps style." Apparently the band does parades, parties, and corporate events as well.

If the Seahawks are successful in registering this mark, the team will obtain the exclusive, nationwide right to use the term BLUE THUNDER in relation to the services listed on the application (with few exceptions).

Thursday, March 17, 2016

Today's Tip For Saving Your Trademark Filing Fee - Avoid Descriptive Trademarks

If you want to successfully obtain a federal trademark registration, you must avoid trademarks that are generic or highly descriptive of your goods or services. With few exceptions, these terms are incapable of serving as trademarks and cannot be registered with the United States Patent and Trademark Office (USPTO).
An example of a trademark that is highly descriptive is the recently filed mark above. The applicant filed this application in Class 032 for "[l]emonade" on March 13, 2016.

A mark is merely descriptive if "it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services." TMEP 1209.01(b). Additionally, slogans are not registrable with the USPTO if the slogan is "merely informational in nature, or...common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry." TMEP  1209.03(s)

The reason these types of marks are not registrable as federal trademarks is because the law believes everybody should have the opportunity to use descriptive words and phrases to describe their goods or services (rather than give one entity a monopoly over the term).

Is the phrase FRESH SMASHED LEMONADE descriptive of an ingredient, quality, characteristic, or feature of lemonade? Is it informal or a common laudatory phrase ordinarily used by lemonade sellers? Probably, especially if the applicant is offering lemonade that is made by smashing fresh lemons. 

When this application is assigned to an examining attorney at the USPTO in approximately three months, I have a feeling an office action refusing to register this mark for being merely descriptive of the goods offered with it will be issued.

Wednesday, March 16, 2016

Name and Logo For Worcester, MA's New ECHL Team Possibly Revealed in New Trademark Application

Last month, it was announced that Worcester, Massachusetts would be getting an ECHL hockey team. Beyond that, little else has been announced. Speculation surrounded the team's name. Would it be the Worcester Whitehawks? The Railers? The Six?
A federal trademark application filed by ECHL Inc. on March 11, 2016 may provide the answers. On that date, the minor league hockey league filed an application for the logo mark seen above. The league filed the mark in Class 025 for "[c]lothing goods, namely, shirts, hats, jerseys, sweatshirts, jerseys [sic], pants, visors, and t-shirts" and in Class 041 for "[e]ntertainment services, namely professional hockey exhibitions."

Interestingly, Worcester ProHockey, LLC filed a federal trademark application for WORCESTER BLAST on February 22, 2016 for similar services, including "[p]rofessional ice hockey contests."

Which one will be the team's name? Likely the ECHL application, since that league owns the trademarks to every other ECHL team. 

One caveat - both these applications were filed on an intent-to-use basis. While this basis requires a bona fide intention to use the trademark in commerce, it is not a guarantee that the mark will actually be used (or that it is not being used already).

Wednesday, March 9, 2016

What Is This Trademark Filed by Google?

Google, Inc. filed an interesting federal trademark trademark application on March 4th. Is it a new version of the company's logo?
According to the application, this trademark is actually a motion mark. Google describes it as follows:
The nature of the motion is that of the word "Google" appearing from left to right in blue, red, yellow, blue, green and red which dissolves into four small solid colored circles of, from left to right, blue, red, yellow and green which slightly undulate then dissolve into four short vertical lines which are, from left to right, blue, red, yellow and green, forming the image of an equalizer. The vertical lines dissolve back into four small solid colored circles of, from left to right, blue, red, yellow and green which sharply bounce and come to a rest, ending the animation.
Google filed the application on an intent-to-use basis in Classes 009 and 038 for a variety of goods and services that seem to cover many of the well known, existing goods and services offered by the company.

Some of the listed goods and services include:
  • computer software used for the control of voice controlled information and communication devices;
  • computer software for accessing and searching online databases; and
  • computer services, namely, providing a voice-controlled search engine for obtaining data, images, audio and video via a global computer network, namely, providing the following: satellite imagery, street maps, real-time traffic conditions, and route planning information, weather information, business and financial information; information, news and commentary in the fields of entertainment, cultural events, sporting events, popular culture, educational activities and events, recreational events, and technology; music, electronic books, and video clips, language translations, local business location information and recommendations, food and restaurant information.
The fact that Google filed this trademark on an intent-to-use basis indicates that the company is not using this trademark in commerce yet but has plans to do so soon. Keep an eye out for this moving trademark in the near future.

Monday, March 7, 2016

21 Beer Trademarks Filed on Single Day as Craft Beer Industry Continues to Grow

Every time I search the United States Patent and Trademark Office's (USPTO) website I run across multiple trademark applications for beers and breweries. As I've blogged about before, many breweries will file federal trademark applications for their brewery's name and for each new beer they release.

For example, on March 3rd twenty one federal trademark applications related to beer were filed by various breweries. A snapshot of those applications are seen below.
Many breweries take advantage of the intent-to-use application offered under the Trademark Act (15 U.S.C. 1051(b)). As long as an applicant has a bond fide intention to use a trademark in commerce in the near future, it can file this application to reserve priority in a name even before it is being used.

The large number of beer-related applications also crowds the field of trademarks in the craft beer industry. This makes a trademark search before using a name even more important (although a search should always be done no matter what). 

Imagine undertaking significant marketing efforts to develop and promote a specific beer only to receive a cease and desist letter from another brewery who started using a similar name before you. The costs of re-branding far outweigh the cost of an attorney to perform that initial search.

The best tip for choosing a beer name - make up a new word or choose something that is arbitrary and has nothing to do with beer. Those are the strongest types of trademarks and the easiest to protect.

Friday, March 4, 2016

Big Ten Conference Files Trademark for MARCH IS ON!

The Big Ten Conference appears to be preparing for March Madness with a recent trademark filing in the United States Patent and Trademark Office (USPTO).
On February 29th, The Big Ten Conference, Inc. filed a federal trademark application for MARCH IS ON! The conference filed the trademark in two classes:
  • Class 038 for "[t]elevision transmission services for programming and content relating to sports; streaming of audio and video material on the Internet for programming and content relating to sports"; and
  • Class 041 for "[e]ntertainment services, namely, sponsoring and coordinating the presentation of athletic events and contests; Entertainment services, namely, production and distribution of television programs relating to sports and sports entertainment; providing on-line information in the field of sports, television, video and audio entertainment via global communications network"
The application was filed on an intent-to-use basis, meaning the conference is not yet using this mark in commerce (probably because March Madness has not started) but has a bona fide intention to do so in the near future.

As far as the owner of the actual March Madness trademark, that would be the NCAA. The organization owns 12 live registrations for the term with the USPTO. Those applications protect the use of the phrase "March Madness" on a variety of goods and services, including cups and mugs, carbonated soft drinks and apparel, and [of course] basketball tournaments between college teams.

Wednesday, March 2, 2016

Back At It Again..."Damn Daniel" Meme Creators File More Trademarks

Earlier this week, I blogged about Daniel Lara and Josh Holz filing federal trademark applications for DAMN DANIEL with the United States Patent and Trademark Office. Well, the teens are back at it again.

On February 26th, two days after the DAMN DANIEL filings, the teens filed federal trademark applications for BACK AT IT AGAIN and DAMN DANIEL BACK AT IT AGAIN. These phrases are repeated over and over in the popular internet video released by Josh last month.
The teens filed these trademark applications in Class 025 for "[c]lothing, footwear, headgear" and in Class 041 for "[s]ervices having the basic aim of the entertainment, amusement or recreation of people." The entertainment services in Class 041 list a first use date of February 15, 2016 (the date Josh Holz posted the video to Twitter). According to the applications, the teens are not yet using the trademarks on the apparel listed in Class 025.

As mentioned in my previous post, the teens will obtain the exclusive, nationwide right to use the term BACK AT IT AGAIN and DAMN DANIEL BACK AT IT AGAIN on these goods and services if these applications mature into a federal trademark registration.

Tuesday, March 1, 2016

Is Amazon Getting Into The Language Learning Field?

Recent trademark applications at the United States Patent and Trademark Office indicate Amazon may be getting into the language learning field. On February 25th, Amazon Technologies, Inc. filed federal trademark applications for AMAZON ENGLISH and AMAZON ENGLISH plus design (seen below).
Amazon filed both applications in identical classes and both on an intent-to-use basis (meaning Amazon is not using these trademarks in commerce yet but has a bona fide intention to do so soon).

The goods and services listed on each application are numerous and include filings in Classes 009, 035, 038, 041, and 042. Those goods and services range anywhere from computer hardware, advertising services, streaming services, education services, and to providing platforms as a service. The services that stand out are "education services, namely, language learning services" in Class 041 and "providing a website featuring online non-downloadable software for assisting users with language learning" in Class 042.

Does this mean Amazon is coming out with some sort of language learning platform? That's a strong possibility. These two trademark applications give Amazon a wide range of legal protection - the word mark application protects the phrase AMAZON ENGLISH in a variety of fonts, sizes, and colors. The design application protects the look and feel of the logo. And of course, the large number of goods and services listed in the applications give Amazon protection if other entities use anything similar to AMAZON ENGLISH or the design on any goods or services related to those listed.

Keep a look out for an announcement regarding AMAZON ENGLISH soon.