Friday, May 27, 2016

Physician Files Trademark Application for WEB MD, But That's Not The Only Issue

Every so often I find a trademark application that provides a great learning experience for applicants and demonstrates that importance of working with a qualified trademark attorney. An application for WEB MD filed by a physician in Mississippi on May 26th is one of those applications.
First, the obvious. The applicant's services listed in this application are in Class 044 for "[u]rology medical care services." You may have heard of a popular website called WebMD. That website has a trademark registration in a variety of classes related to healthcare, including a registration in Class 044 for "Consulting and counseling services in the field of preventative health care..." Given the similarity of the marks and the relatedness of the services, I believe the Trademark Office will refuse to register applicant's application, in part, for a likelihood of confusion with the pre-existing WebMD registration.

While it's true the services listed in the applicant's WEB MD application are not exactly the same as the services listed in the WebMD website registrations, they are in the same class and are related. See TMEP 1207.01(a)(i) ("...the goods and/or services do not have to be identical or even competitive in order to find that there is a likelihood of confusion."). 

Additionally, the WebMD website's services in Class 044 are worded broadly and could encompass the applicant's narrowly identified urology medical care services. See TMEP 1207.01(a)(iii) ("if the cited registration has a broad identification of goods or services, an applicant does not avoid likelihood of confusion merely by more narrowly identifying its related goods."). Finally, since the marks are identical, a likelihood of confusion can be found even if the services are not closely related. See TMEP 1207.01(a) ("... the more similar the marks at issue, the less similar the goods or services need to be to support a finding of likelihood of confusion.").

There are several other issues with this application, including:
  • The applicant filed the application on a 1(a) basis but the specimen submitted is a letter to the examining attorney arguing against a likelihood of confusion refusal;
  • Applicant added a translation statement stating "the English translation of MD in the mark is physician," but MD is not a word in a foreign language;
  • Applicant filed an unnecessary 2(f) claim (and a 2(f) claim would not be available anyway given the limited use of the mark);
  • Applicant addressed the unnecessary letter submitted with the application as "letter to patent attorney";
  • Applicant invited examining attorney to text her.
In sum, this application is riddled with issues that could have been easily addressed by a trademark attorney. Unfortunately for the applicant, this means her $225 nonrefundable filing fee is all but lost.

Tuesday, May 24, 2016

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

There are many reasons why the U.S. Patent and Trademark Office might refuse to register a trademark. Most commonly, applications are refused registration under Section 2(d) of the Trademark Act for a likelihood of confusion with a previously filed mark or under Section 2(e)(1) for being merely descriptive. Probably not as common, but still occurring frequently, are refusals under Section 2(e)(2) for marks that are primarily geographically descriptive.
A good example of a mark that is potentially geographically descriptive is a mark filed on May 19th for LAS VEGAS BREWING COMPANY as it relates to "[b]eer, ale, lager, stout and porter" (Class 032) and "[r]estaurant services including sit-down and take-out services; bar services; serving beer; catering services" (Class 043).

A trademark is considered to be primarily geographically descriptive if:
  1. (1) the primary significance of the mark is a generally known geographic location;
  2. (2) the goods or services originate in the place identified in the mark; and
  3. (3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark. TMEP 1210.01(a).
Is Las Vegas a "generally known geographic location"? I think that's a given.  Would purchasers believe a brewery called Las Vegas Brewing Company is located in Las Vegas? Most likely. Do the goods or services originate from Las Vegas? That's unknown. The applicant's address is listed in San Diego, California but that does not necessarily mean it is not opening a brewery in Las Vegas. If the goods and services listed on this application do originate from Las Vegas, there is a significant risk that the Trademark Office will deem this mark primarily geographically descriptive.

Note - if the goods and services in this application do not originate in Las Vegas, the applicant still might receive an Office Action under Section 2(e)(3) or Section 2(a) of the Trademark Act. Those sections prohibit the registration of marks that are primarily geographically deceptively misdescriptive and marks that are deceptive, respectively. The tests under Section 2(e)(3) and Section 2(a) are similar to the test above, except that the goods or services do not originate in the place identified in the mark and the misrepresentation is a material factor in a significant portion of the relevant consumer's decision to buy the goods or use the services.

Monday, May 23, 2016

Minnesota Vikings File 48 Trademark Applications

It looks like the Vikings' legal team is doing some off-season strength building in expanding its trademark portfolio. On May 18th, Minnesota Vikings Football, LLC filed 48 federal trademark applications with the U.S. Patent and Trademark Office. Although the team filed 48 different applications, the applications cover only three marks - SKOL VIKINGS, SKOL SERVICE, and SKOL.
Why so many applications for only three marks? Because each application is filed in a different class of goods or services. For example, the team filed SKOL VIKINGS for "[o]nline social networking services" (Class 045), "[r]eal estate development" (Class 037), "toys and sporting goods" (Class 028), and several other goods and services. The applications for SKOL and SKOL SERVICE cover similar goods and services. All the applications include entertainment services in the nature of professional football games and a variety of merchandise. The team filed each application on an intent-to-use basis.

Thursday, May 19, 2016

Today's Tip for Saving Your Trademark Filing Fee - Avoid Descriptive Marks

I've blogged about it many times before. Here, and here, and here. But applicants continue to filing merely descriptive trademarks (typically without the help of an attorney).

What is wrong with a merely descriptive trademark? For one, Section 2(e)(1) of the Trademark Act prohibits the U.S. Patent and Trademark Office from registering such a mark. Also, since the mark is compromised of a descriptive term that many others are probably using, it often fails to distinguish one's goods or services in the marketplace.

What is considered a merely descriptive? 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).
Take a look at the trademark above. A federal application for this mark was filed by an individual in Florida on May 14th. The related goods are in Class 029 for "uncooked hamburger patties."

Is this trademark merely descriptive of "uncooked hamburger patties"? I think so. It certainly describes an ingredient and quality of the underlying goods. The fact that this mark is compromised of a design element in addition to descriptive words does not change this analysis. See TMEP 1209.03(f) ("...when a mark is comprised of wording that is descriptive under §2(e)(1) and a design element that is a pictorial representation of the goods, or that reinforces the descriptive meaning of the wording, the entire mark is merely descriptive.").

Unfortunately for the applicant, this means the Trademark Office will probably issue an Office Action refusing to register his mark because it is merely descriptive and his $325 filing fee is lost.

Note - the applicant could have opted for a TEAS Plus application and a $225 filing fee but instead opted for a TEAS Regular application for an unknown reason.

Monday, May 16, 2016

Trademark Applications for New Instagram Logo Filed

Five day ago, Instagram, LLC released an update to its popular social networking application that changed, among other things, the application's logo. People were not happy with the look (seen below).
I wondered how long it would take Instagram to file federal trademark applications for the new look. A search of the U.S. Patent and Trademark Office's database on May 11th did not reveal any filings (although a search on that date was current only as of May 6th due to a typical five day lag between the time a trademark application is filed and the time it appears in the database).

As of today, the trademark filings from May 11th are uploaded and it turns out Instagram did file eight federal trademark applications for the new logo on the date the update was released to the public.
Instagram filed the applications in eight different classes of goods and services, with each class listed on a separate application (hence the eight applications). As I've blogged about before, this was probably a strategic move.

The goods and services listed on the applications range from social networking services (Class 045), to design and development of computer software (Class 042), photo sharing and video sharing services (Class 038), promoting the goods and services of others via computer and communication networks (Class 035), and downloadable computer software (009).

The other three applications are for the company's Layout, Boomerang, and Hyperlapse logos (seen to the right of the new logo below). These applications were filed in Class 009 for computer software.
Interesting note - Instagram filed foreign trademark applications for the new logo in Jamaica on November 25, 2015 and is relying on that date as its priority date under Section 44(d) of the Lanham Act.

Thursday, May 12, 2016

DC Comics Files 11% of All Trademarks Filed With USPTO Last Saturday

On May 7th, 288 trademark applications were filed with the U.S. Patent and Trademark Office. Such volume is typical for a Saturday. What's a little atypical is that DC Comics filed 33 of those 288 applications.
DC Comics filed trademarks applications for WONDER WOMAN, SUICIDE SQUAD, and HARLEY QUINN in a variety of classes (with each class listed on a separate application, hence the large number of applications). Those classes included: Class 041 (various entertainment services), Class 009 (motion pictures and videos), Class 032 (various drinks like vegetable juice), Class 030 (various grocery items like cookies and candy), Class 029 (various canned or jarred goods), Class 028 (various toys), Class 024 (linens), Class 021 (various home goods), Class 020 (random home goods like sleeping bags and deck chairs), Class 018 (bags and backpacks), Class 016 (various printed materials like books), Class 014 (clocks and watches), and Class 005 (vitamins).

It is not uncommon to see an entertainment company file trademark applications for such a broad variety of goods and services. These filings give the company protection over the core services (i.e. motion pictures and entertainment) while also protecting a wide range of merchandise.

Why file a separate application for each class of goods or services when it's possible to list each class on one application (and the filing fee is the same)? It's a strategic move by DC Comics. For example, if the company listed every class of goods and services on one application for HARLEY QUINN, an issue in the registration process related to one class (say, vitamins) could hold up the entire application. If filed separately, every other application can still proceed even if the application for vitamins is held up by the Trademark Office.

In any event, DC Comics just significantly increased its trademark portfolio. Back in February 2016, I blogged about ten other trademark applications filed by the company for the Wonder Woman logo (presumably filed in preparation for the Wonder Woman movie).

Tuesday, May 10, 2016

Buzzfeed Files Trademark Application for Video App Icon

A mobile application's icon is the first thing one typically notices about an app when an app is downloaded or a phone opened. The distinctive little square, full of color and shapes, is extremely important to a company's branding. Therefore, it's no surprise to see many companies filing federal trademark applications to protect the look of these icons.

For example, on May 5th BuzzFeed, Inc. filed a federal trademark application for the leaping dog silhouette seen below.
BuzzFeed filed this application in Class 041 for "[e]ntertainment media production and distribution services for motion pictures, television and internet media content." The application lists a first use date of October 2, 2014.
According to the specimen submitted with the application (seen above), this dog silhouette is used with company's BuzzFeed Video mobile application.

This is not the first trademark application for a mobile application icon that's been featured on this blog. Back in August 2015, days before the special event where Apple announced the iPhone 6S and iPhone 6S Plus, Apple filed a federal trademark application for its "Activity" app icon.

Given the popularity and importance of mobile apps, expect to see more and more companies file trademark applications for their icons in the future.

Friday, May 6, 2016


On May 2, the Active 20-30 Club of Redding Foundation, Inc. d/b/a Sundial Film Festival filed a federal trademark application for SUNDIAL FILM FESTIVAL. The applicant filed the application in Class 041 for "[e]ntertainment services, namely, planning and conducting a series of film festivals[.]"
According to the Applicant's website, the Sundial Film Festival is a California-based film festival in its eighth year. This coincides with the April 7, 2008 first use date listed on the trademark application.

However, there is a pre-existing registration for the well-known SUNDANCE FILM FESTIVAL, which was filed in 1996 and registered in 1998. The services listed on the Sundance registration are also in Class 041 for "entertainment services, namely, planning, managing, and conducting an international film festival."

It's well known that Section 2(d) of the Trademark Act prohibits the registration of a mark that is confusingly similar to a previously filed mark that matures to a registration. In determining whether two marks are confusingly similar, the Trademark Office will consider several factors, known as the du Pont factors. Those factors are:
  • The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression;
  • The relatedness of the goods or services as described in the application and registration(s);
  • The similarity or dissimilarity of established, likely-to-continue trade channels;
  • The conditions under which and buyers to whom sales are made, i.e., "impulse" vs. careful, sophisticated purchasing;
  • The number and nature of similar marks in use on similar goods;
  • The existence of a valid consent agreement between the applicant and the owner of the previously registered mark. See TMEP 1207.01.
The first two factors - the similarity of the marks and relatedness of the goods or services - are considered the most important. The more similar the marks at issue are, the less similar the goods or services need to be to support a finding of likelihood of confusion, and vice versa. TMEP 1207.01(a).

Will the Trademark Office refuse to register SUNDIAL FILM FESTIVAL due to a likelihood of confusion with SUNDANCE FILM FESTIVAL? Probably. Not only are the marks almost exactly the same, differing only in the last few letters of SUN-, but the services are in the same class and nearly identical. 

Note - it's interesting the Sundial Film Festival has been around for 8 years while the Sundance Film Festival has held a federal trademark registration for almost twenty. Sundance may not be opposed to Sundial. If that is the case, Sundial might use a consent agreement with Sundance to overcome a Section 2(d) refusal. See TMEP 1207.01(d)(viii). However, the record does not reflect such a consent agreement at this time.

Wednesday, May 4, 2016

Hershey Hints At New Candy With Recent Trademark Filings

Recent trademark filings at the USPTO suggest that Hershey is playing around with names for a potentially new candy. On April 29th, Hershey Chocolate & Confectionery Corporation filed the six federal trademark applications seen below. Hershey Canada, Inc. also filed a trademark application for DREAMBURSTS.
Hershey filed the Reese's applications in Class 030 for "Candy; Chocolate; Chocolate confections; Grain-based snack foods; Chocolate-based snack foods" and in Class 029 for "Nut-based snack foods." It filed the Hershey applications in Class 030 for the same goods. All applications were filed on an intent-to-use basis.

It's not uncommon for a corporation to file several trademark applications for possible brand names on an intent-to-use basis before choosing a final name. These applications provide Hershey some protection while its marketing team makes a final decision (for example, the Trademark Office will not register any subsequent marks that are similar and cover related goods while Hershey's marks are pending). 

Hershey and/or Reese's fans - you might be seeing a new candy soon.

Tuesday, May 3, 2016

John R. Cash Revocable Trust Files 13 Trademark Applications

Something is abuzz at the Johnny Cash estate. On April 28th, the trustee of the John R. Cash Revocable Trust filed 13 federal trademark applications for various Johnny Cash trademarks.
Those trademarks, seen above, range from CASH, to WALK THE LINE, to WHAT WOULD JOHNNY CASH DO? The Trust filed each trademark on an intent-to-use basis so a specimen showing use of the marks in commerce (which helps show how the trademarks will be used) is not available. The purpose behind the trademark filings is unclear. 

The goods and services listed in the applications are broad. The applications cover goods and services in Classes 041, 043, 025, 016, and 020. Some of those goods and services include "entertainment services [in the form of] live performances...television and radio performances by a musical artist," hotel, restaurant, and bar services, clothing items, printed matter including books, magazines, and newspapers, and home goods like pillows, picture frames, and mirrors.

The John R. Cash Revocable Trust has an address at 3941 Woodlawn Drive, Nashville, TN 37205 and is worth up to $300 million by some accounts. These trademark applications undoubtedly add to that value.

Monday, May 2, 2016

Yard House Attempts Register PINT NIGHT as a Trademark

"Pint Night" is a common phrase in the restaurant and bar industry. However, one restaurant is apparently trying to obtain the exclusive, nationwide right to use the term.

On April 27th, Yard House USA, Inc. filed a federal trademark application for the phrase PINT NIGHT. Yard House is part of the Darden group of restaurants, which also owns the Olive Garden, Longhorn Steakhouse, and Seasons 52, among others.
Yard House filed this trademark application in Class 041 for "[e]ntertainment services, namely, beverage tastings" and in Class 043 for "[r]estaurant and bar services." Both classes were filed on an intent-to-use basis.

Restaurant and bar owners - don't panic yet. I have a feeling this attempt to register PINT NIGHT as a trademark will not be successful.

It is well established that "[s]logans and other terms that are merely informational in nature, or common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry, are not registrable." TMEP 1202.04. To make this determination, the Trademark Office will consider the commercial impression the mark makes on the relevant public. "The more commonly a phrase is used in everyday parlance, the less likely the public will use it to identify only one source and the less likely the phrase will be recognized by purchasers as a trademark or service mark." Id.

Is the phrase PINT NIGHT commonly used in restaurant and bar industry? Would the relevant public think PINT NIGHT specifically refers to a Yard House event or would they not associate the term with any specific bar or restaurant? 

Given the popularity of PINT NIGHT in the industry, I think Yard House will have an extremely difficult time attempting to register this phrase (or enforce it). Expect an Office Action to this effect when this application is assigned to an examining attorney within the next three months.