Friday, January 29, 2016

DJ Khaled Files Trademark for WE THE BEST

If you follow DJ Khaled on Snapchat (and maybe I do) you already know they don't want him to have a federal trademark registration. But he filed an application anyway. Two applications, actually.

On January 25th, Khaled M. Khaled, through Sedlmayr & Associates (who has an impressive list of rap clients), filed a federal trademark application for DJ KHALED and WE THE BEST.
Sedlmayr filed the DJ KHALED trademark application in Class 009 for music recordings and Class 041 for entertainment services related to disk jockeying, live musical entertainment, and the hosting of nightclub parties. The WE THE BEST trademark was also filed in Class 009 and 041 for the same services, but included a listing in Class 025 for various clothing items (likely related to his We The Best Store).

Both of these applications indicated DJ Khaled is already using these trademarks in commerce, and those of you who are fans know this to be true. If these trademarks register (which they likely will), DJ Khaled will obtain the exclusive, nationwide rights to use DJ KHALED and WE THE BEST in conjunction with the goods and services listed on the applications (and on anything related to those goods or services). Major key.

Thursday, January 28, 2016

MACKI GNAWS Trademark Filed For Dog Treats

If you sell or planned on selling dogs treats on Mackinac Island in Michigan, the most creative name for your product just got taken. On January 23rd and 24th, a quaint business known as Marc's Double Oven Bakery filed federal word and design trademark applications, respectively, for MACKI GNAWS in Class 031 for "dog treats."

The applicant smartly used an attorney to file these applications and I do not see any issues with either. Unless there is an existing registration for a mark similar to MACKI GNAWS (unlikely given the creativity behind the name) being used on goods related to dog treats, this mark should have no problem registering. When it does, this little business on Mackinac Island will obtain the exclusive right to use the term MACKI GNAWS on dog treats across the United States.

Wednesday, January 27, 2016

Fox Files Trademarks For Much Anticipated 24: Legacy

Just days before Fox announced Straight Out of Compton actor Corey Hawkins landed the starring role in 24: Legacy, the much anticipated reboot of Jack Bauer's 24, it filed two federal trademark applications for the show's title.

On January 22nd, Twentieth Century Fox Film Corporation filed the standard character mark 24: LEGACY in Class 041 for a variety of entertainment services related to a television show and in Class 009 for DVDs, downloadable versions of the show, and related software.
Fox filed both applications on an intent-to-use basis, obviously, because the show is not yet on the air. The company only announced the new show a week and a half ago, and within a week had filed these trademark applications.

The storyline on IMDB.com states "[a]ccording to Fox, the project will center on a military hero who encounters a troubled return to the U.S., compelling him to ask CTU for help in saving his life, and stopping what potentially could be one of the largest-scale terror attacks on American soil." 24: Legacy is slated for 12 episodes and has an estimated budget of $35,000,000.00.

Tuesday, January 26, 2016

What is Paramount's Alphaworld?

Is Paramount Pictures Corporation planning a large retail center and theme park? A federal trademark application filed by the company on January 21st suggest it might be. And the name would be ALPHAWORLD.
Paramount filed this trademark application in three different classes for:
  1. Retail store and shop services featuring gifts (Class 035);
  2. Leasing of shopping mall space within or adjacent to a theme park, namely, restaurants, nightclubs, retail shops, boutiques and movie theaters (Class 036); and
  3. Amusement park and theme park services; Entertainment in the nature of an amusement park ride; Entertainment services in the nature of an amusement park attraction, namely, a themed area; Entertainment services in the nature of an amusement park show; Entertainment services, namely, arranging and conducting special events at an amusement park; Entertainment services, namely, arranging for ticket reservations for amusement park attractions; Provision of information relating to amusement park shows (Class 041).
Sounds like a Disney World or Universal Studios to me. According to Wikipedia, Paramount Parks once owned and operated five theme parks in North America, including the popular King's Island near me in Cincinnati. Currently, the company has proposed theme parks in Spain, South Korea, and the UK, but nothing in the United States (but maybe this application indicates otherwise).

Paramount Pictures Corporation filed this trademark application on an intent-to-use basis, so there is no guarantee Paramount's Alphaworld will open in this country. However, that basis does indicate the company has a bona fide intention to open such a park and is taking tangible steps in that direction (creating a business plan, looking for sites, speaking with developers and vendors, etc.).

This is the second theme park application I have blogged about, with Steve Erwin's Australia being the other. That trademark application, filed in July 2015, is still alive.

Monday, January 25, 2016

LIKELIHOOD OF CONFUSION - A Wine For Trademark Attorneys?

A wine club in Los Angeles may be selling the perfect wine for trademark attorneys based on a recent filing with the United States Patent and Trademark Office. Club W, Inc. filed a federal trademark application for LIKELIHOOD OF CONFUSION in Class 033 for "wine" on January 20th.
According to the application, the company is currently selling this wine and has been doing so since October 2015. The specimen submitted with the application indicates the wine is a 2013 Zinfandel from Sierra Foothills, California.

Is this the perfect wine for trademark attorneys? Not only is the name more than fitting, but the wine apparently "packs a titanic punch with 16% alcohol." A perfect wine for trademark attorneys indeed...

Friday, January 22, 2016

Is Pan Am Coming Back?

Is the vintage Pan American World Airways making a return? Maybe, according to recent trademark applications filed with the United States Patent and Trademark Office. Pan Am Airways, LLC, a Delaware limited liability company, recently filed two federal trademark applications for the stylized Pan Am trademarks shown below.

The company filed the top design on January 15th and the bottom on January 18th. Both applications were filed in Class 039 for "Air transport; Air transport and storage of goods; Air transport services; Air transportation; Airline ticket reservation service."

Does this mean the Pan Am airline will soon be operating again? Both applications were filed on an intent-to-use basis, which means the company is not using these trademarks in commerce yet but has a bona fide intention to do so in the near future. Thus, it's not a certainty but it does mean this company is making some sort of plan to use these trademarks in conjunction with air transport services sometime soon.

However, it appears the company used trademark411.com to file these applications without an attorney. That's a bit strange for a sophisticated airline.

Interestingly, another company, Pan Am World Airways, Inc., filed an application for a similar mark (shown below) with an attorney. That mark was also filed in Class 039 for "Air transportation of passengers and freight" and was filed in February 2010 on an intent-to-use basis. The applicant has requested and received multiple extensions to file the final Statement of Use form showing the mark actually being used in commerce (which is required before the mark can actually register).
This applicant owns two other registrations for PAN AM as it relates to transportation by rail. Unfortunately for Pan Am Airways, LLC, there will be a conflict between the applications it just filed and this application due to the similarity of the marks and the use on the exact same services. Since Pan Am World Airways, Inc. filed its application well before Pan Am Airways, LLC, it has priority and the Trademark Office will not register Pan Am Airways, LLC's marks due to that conflict. The relationship between these two entities (if any) is unknown.

Thursday, January 21, 2016

Metropolitan Washington Airports Authority Files 7 Trademark Applications

On January 17th, the Metropolitan Washington Airports Authority (MWAA) filed seven different federal trademark applications related to the Dulles and Reagan Airports. Those applications are seen below. The blank represents a logo design, which is also seen below.

The MWAA filed each trademark application in Class 039 for "airport services." All these applications are based on actual use in commerce, with the date of first use varying depending on the mark. For example, the date of first use for REAGAN NATIONAL is listed as February 6, 1998, which is the same date President Clinton signed legislation changing the airport's name. The date of first use for the logo seen above, on the other hand, is November 17, 2015.

According to the MWAA's website, "[t]he Authority's mission is to develop, promote, and operate safely Reagan National and Dulles International airports, continually striving to improve our efficiency, customer orientation, and the level of air service offered at National and Dulles." That mission apparently involves obtaining maximum legal protection for the airports' trademarks as well.

As I've blogged about before, this application demonstrates that government entities are entitled to obtain federal trademark registrations just like private businesses. There is one improve caveat, however. Nobody, not even a government entity, can obtain a federal trademark registration for a "flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof." See Section 2(b) of the Trademark Act (15 U.S.C. 1052(b)). This is true "regardless of the identity of the applicant, that is, the statutory prohibition allows no exception even when the applicant is a government entity seeking to register its own flag, coat of arms, or other insignia." See TMEP 1204 and In re City of Houston, 731 F.3d 1326, 108 USPQ2d 1226 (Fed. Cir. 2013).

Wednesday, January 20, 2016

JAY LENO Trademark Filed For Television and Entertainment Services

On January 15th, Big Dog Productions, Inc. (the company that produced The Tonight Show With Jay Leno) filed a federal trademark application for the mark seen below.
The company filed the trademark application in Class 041 for a variety of entertainment services, including a television show, blogs, and websites, related to automobiles and motorcycles. The date of first use for this trademark is listed as December 1, 1996.

The specimen for the trademark application, seen above, shows this mark being used in commerce. With the Tonight Show With Jay Leno off the air, it appears this mark is being used in conjunction with the television show Jay Leno's Garage. The application is broad enough to cover future shows related to automobiles as well.
If you're wondering how a production company can file a trademark application containing Jay Leno's signature, the answer is above. Section 2(c) of the Trademark Act prohibits the registration of "a name, portrait, or signature identifying a particular living individual except by his written consent..." Under TMEP 1206.04(a), a written consent to register a trademark bearing this information must be signed by the person whose likeness is being used. That consent, along with Jay Leno's signature, is seen above.

Tuesday, January 19, 2016

Chargers Football Company Files Trademark Apps For LA CHARGERS

If you haven't heard, the St. Louis Rams are moving to Los Angeles and the San Diego Chargers may join them. Although the Chargers are still in discussions about the move, and specifically where they would play, the team is already taking steps to protect its intellectual property rights in the potential new name. On January 14th, Chargers Football Company, LLC filed two federal trademark applications for LA CHARGERS and LOS ANGELES CHARGERS.
The team filed both applications in a variety of classes (typically seen in professional sports-related applications), which cover a variety of goods and services, including "live shows featuring football games...toys and sporting goods...clothing...posters, calendars, trading cards...[and] mobile applications for displaying information relating to football exhibitions..." The team filed both applications on an intent-to-use basis because, obviously, the team is not yet using these marks in commerce. However, the nature of an intent-to-use application means the team has a bona fide intention to use the marks in commerce in the near future.

The St. Louis Rams, LLC also filed similar applications for the LA RAMS and the LOS ANGELES RAMS on January 13th. 
The original LA Rams logo, seen above, was registered as a federal trademark on February 25, 1992. On September 1, 1998, it was cancelled by the team.

Expect to see more trademark applications filed by these teams for even more goods and services as (or if) they finalize their moves.

Friday, January 15, 2016

Ford Files Trademark Application For New FORDPASS App

On January 11, as it was being announced to the public, Ford Motor Company, Inc. filed a federal trademark application for FORDPASS.
Ford filed the application in a variety of classes, but the most interesting services are the "Online services" listed in Class 039. Some highlights of services listed in that class include:
  • vehicle routing by computer on data networks responsive to monitored pollution data to reduce exposure of persons to pollution;
  • vehicle routing by computer on data networks to avoid traffic and weather conditions or to find prompt access to medical care;
  • vehicle routing by computer on data networks to available parking spaces; and
  • routing of vehicles to avoid traffic.
The services listed give us a glimpse into some of the features available in the application. It looks like the application, which is available to both Ford owners and non-Ford owners, is a push by Ford to become a mobility company in addition to an automaker. Based on the 44(d) filing basis for this application, Ford has filed trademark applications for FORDPASS in other countries as well. According to Forbes, the application is set to launch in the U.S. in April 2016.

Thursday, January 14, 2016

How To Lose Your Trademark Filings Fees - File For Male Genitalia

I don't even know where to start with this application. On January 10, an individual in Colorado filed a federal trademark application for the mark shown below.
The applicant filed this application in Classes 016 and 025. The goods listed in Class 016 are primarily related to decals and temporary tattoos. The goods listed in Class 025 are for a strange variety of apparel, including beanies, women's underwear, and "[c]lothing for babies, toddlers and children, treated with fire and heat retardants, namely, pajamas, jackets, shirts, pants, jumpers" (what??? - ed.). The applicant filed Class 025 on an intent to use basis but did not specify a basis for Class 016.

There are three glaring deficiencies with this application:
  1. The mark is "scandalous" under Section 2(a) of the Trademark Act and will be refused registration on that basis. See TMEP 1203.01.
  2. The applicant unnecessarily filed a TEAS RF application rather than a TEAS Plus, which would have saved him $100 in filing fees.
  3. The drawing contains extra information (the URL) that is not part of the mark and is therefore unacceptable. See TMEP 807.01 - 807.02.
Section 2(a) of the Trademark Act prohibits the registration of marks that are immoral or scandalous. Much like trademarks that contain the word "F*ck," trademark applications for marks that involve graphic representations of genitalia will also be refused registration. See In re Wilcher Corp., 40 USPQ2d 1929 (TTAB 1996) (holding scandalous a mark for restaurant and bar services consisting of words DICK HEADS positioned directly underneath caricature of a human head composed primarily of graphic and readily recognizable representation of male genitalia, as it would be considered offensive by a substantial portion of the public).

Additionally, an applicant can secure a filing fee of $225 per class rather than $275, $325, or $375 per class if the application meets certain requirements. Typically, if an applicant can find its goods and services already listed in the Trademark Office's database, it can secure the $225/class filing fee. The common goods listed on this applicant's application are in the database, but the applicant paid $275/class anyway.

Finally, the drawing of the mark submitted (above) contains a URL that, according to applicant's comment in the application, "does not always appear in the image." This makes the drawing defective. Drawings must only contain one mark (the URL could be considered a separate trademark) and must only be limited to the mark and not contain extra information.

In sum, there are a number of deficiencies with this application that will result in an inability to register this trademark. Unfortunately for the applicant, this will be a costly learning experience. He paid $550 in nonrefundable filing fees that are all but lost because he did not consult with a trademark attorney. Now that's obscene. 

Wednesday, January 13, 2016

President Obama Prepares for End of Presidency With Recent Trademark Application

President Obama delivered his last State of the Union address last night as he enters the final year of his presidency. As things wind down, the President is also apparently preparing for life after the White House. On January 8th, the Barack Obama Foundation, a non-profit corporation, filed a federal trademark application for THE BARACK OBAMA FOUNDATION as it relates to
charitable fundraising services; philanthropic and charitable monetary services relating to making grants for art, education, and human and social services and to non-profit organizations for art, education, and human and social services; library and museum services; educational services, namely, conducting classes, workshops, seminars, conferences, and programs in the fields of poverty elimination, health security, economic empowerment and investment, leadership development, world governance, climate change, citizen service, and racial, ethnic, and religious reconciliation[.]
Because the Foundation is not yet actively providing those services, this application was filed on an intent-to-use basis. According to the Foundation's website, "[t]he Obama Foundation is where the work we started together will continue, and it begins with the Presidential Center on Chicago's South Side." The Foundation appears to be narrowing down specific sites for the Obama Presidential Center and is currently seeking an architect for the project. For more information on the project, check out the Foundation's FAQ here.

Tuesday, January 12, 2016

How to Lose Your Trademark Filing Fees - File For Unauthorized NFL Apparel

Take a look at the t-shirt design below. Did the combination of the city name and colors immediately bring a professional sports team to mind? Maybe the Pittsburgh Steelers? I'm guessing for most of you it did. That type of association with the goodwill of another, when unauthorized, is exactly the type of harm trademark laws are designed to prevent.
It's also the reason seven trademark applications recently filed in the U.S. Patent and Trademark Office (USPTO) by an individual in Philadelphia are as good as dead. On January 7th, that individual filed six other federal trademark applications for similar t-shirt designs related to other cities and teams as seen below.
The individual filed all these applications in Class 25 for "athletic shirts" and spent $1,575 in filing fees ($225/each). Those filing fees are nonrefundable, even if the applications do not mature into a registration (which is this case is extremely likely).

The Pittsburgh Steelers (like every other professional sports team) own a variety of federal trademark registrations. For example, the team owns a federal trademark registration in Class 25 for a black and yellow design on jerseys. The jerseys are so similar to the athletic shirts, which also claim black and yellow as a feature of the mark, filed by the individual in Philadelphia (both are apparel). The USPTO will almost certainly issue a likelihood of confusion office action refusing to register this individual's mark given the previous registrations.

If that does not happen, the NFL or the team will oppose this trademark application and send a cease and desist to the applicant. As most trademark attorneys, including myself, know from personal experience, professional sports teams are incredibly aggressive about protecting their intellectual property. Besides their federal registrations, most teams claim a broad range of common law trademark rights that encompass use of the team's colors in conjunction with the city name (or anything that could be associated with the team like a mascot, nickname, logo, or design).

Of course, selling merchandise of a professional sports team is perfectly legal with a valid license from the team. In this case, however, it does not appear that the individual who filed these applicants has a license. Unfortunately, that means his $1,575 in filing fees will be lost, he will receive a cease and desist from the NFL or the team (which is more likely now that he made himself known with these public filings), will likely be required to destroy any merchandise he ordered, he may need to turn over his profits to the NFL or the team, and he risks personal liability for infringement because he listed himself individually as an owner of the trademarks rather than a business entity.

How do you avoid getting yourself into the same predicament? Obtain a license from the team before selling any merchandise and hire an attorney to assist you. In a brief initial consultation (which probably would have been free), any good attorney would have alerted this applicant that these trademark filings are not advisable and could put himself at significant risk of liability. In other words, a five minute phone call could have saved him $1,575.

Monday, January 11, 2016

Trademark Applications for Craft Beer On the Rise?

Only 158 federal trademarks applications were filed on January 3rd (it was a Sunday, at after) but 11 of those applications related to beer. This follows a trend I've noticed recently as I've monitored trademark application filings at the United States Patent and Trademark Office (USPTO) on an almost daily basis for the past six months. Without fail, I will see multiple applications for beer-related trademarks, especially craft beer trademarks, everyday.
For example, the trademark applications shown above were filed on January 3rd, a relatively slow day at the USPTO, and they all relate to beer (sometimes the name of a beer, sometimes of a brewery, and other times for a bar/restaurant). Some of those applications filed on that date were for the following:
Craft brewers should pay attention to these filings as the craft brewery trademark field gets more and more crowded. For each trademark application that matures into a full registration, that beer or brewery name becomes unavailable nationwide for other breweries (with few exceptions). Use of that trademark by another brewery may then result in cease and desist letters and liability for trademark infringement.

On the other hand, a craft brewery that develops a unique name for its brewery or a particular beer can utilize the USPTO to secure a nationwide monopoly over that name. Unique logos on cans or for the brewery itself can also be protected in a similar manner. In some circumstances, a brewery can even file a trademark application for a name or logo it is not yet using to "reserve" rights in that name when the time comes to put the beer on the market.

I expect to see more and more craft beer-related trademarks filed by breweries across the country throughout 2016 as they continue to develop unique names for themselves and their beer.

Thursday, January 7, 2016

Trademark for THE APP THAT CLEANS YOUR CAR Filed

The United States Patent and Trademark Office received 900 trademark applications on New Year's Eve. One of those applications was filed by Washe, LLC for THE APP THAT CLEANS YOUR CAR. This is the tagline for Washe's downloadable mobile application for car wash services. Washe filed the trademark application in Class 9 (which is the class in which downloadable mobile applications are classified). According to the application, Washe started using this tagline in commerce on December 12, 2015.
According to the company's website, a user downloads the application then signs up for a certain tier of car washing services. Then, with the click of a button, a car washer shows up at the car's location and provides the selected level of car washing service.

If Washe is successful in obtaining this application, they will secure the nationwide right to use the term THE APP THAT CLEANS YOUR CAR on a downloadable mobile application.

Monday, January 4, 2016

Production Company Behind Ancient Aliens Files Trademark for Possible New Show

Prometheus Entertainment, Inc., the LA-based production company behind America's Book of Secrets, Ancient Aliens, and In Search of Aliens, continued its tradition of conspiracy themed television shows (with a focus on aliens in particular) with a recent federal trademark filing. On December 30th, the production company filed a federal trademark application for ALIEN QUEST.
The intent-to-use application listed the following related services on the application: "Entertainment services, namely, an ongoing series featuring non-fiction documentary subject matter regarding historical landmarks, cultures, artifacts and phenomena and possible connections to the influence of visits to Earth by extraterrestrial life forms, and connections between such visits to unsolved mysteries provided through broadcast television, cable television, satellite television and online networks[.]" 

This application suggests that the production company is working on another television show called "Alien Quest" that focuses on alien visits to Earth. Previously, the company has worked with the History Channel, E!, A&E, and the Travel Channel, among others, and one of these channels may be the home of this new show within the next couple years.