Friday, April 29, 2016

eos Files Trademark Application for Popular Lip Balm Oval - Is It Functional?

Have you seen the eos oval lip balm at your local retailer? Chances are you have. The popular lip balm is seen below.
eos Products, LLC filed a federal trademark application for the oval case of the balm on April 25th. According to eos's description, "[t]he mark consists of a three-dimensional configuration comprised of half an ovoid, with an indented portion on the lower portion of one arc thereof, with another half ovoid that is smaller in size on top, with the ovoids divided by threading" (see below).
Is it possible to obtain trademark registration for the way a product looks? It sure is, except that functional matter cannot be protected as a trademark. See TMEP 1202.02(a)(iii)(A)15 U.S.C. §§1052(e)(5) and (f), 1064(3), 1091(c), and 1115(b). 

Why not? Because patent law protects the way a product works, not trademark law. The U.S. Supreme Court explained this reasoning in Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164-165:
The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm’s reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature. It is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time...
How does one determine whether a product feature or design is functional? Generally four factors are considered:

  1. the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;
  2. advertising by the applicant that touts the utilitarian advantages of the design;
  3. facts pertaining to the availability of alternative designs; and
  4. facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.
See TMEP 1202.02(a)(v);  In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1340-1341 (C.C.P.A. 1982).

If an applicant holds a utility patent for the design it seeks to protect as a trademark, advertises the utilitarian advantages of the design (i.e. easier to hold), alternate ways to design the relevant product are not generally available, and the product is designed in that manner because it is cheaper or simple, the product feature is functional and cannot be protected as a trademark.

Is the eos lip balm product design functional? Is an oval the easiest and cheapest way to design lip balm packaging? Does it make it easier to hold? Are alternative designs for lip balm packages readily available? We'll have to wait a couple months to see what the examining attorney at the Trademark Offices thinks about this configuration.

Wednesday, April 27, 2016

Universal City Studios Files 7 Trademark Applications for PETMOJI

Back at it again with the emoji-related trademarks. This time the applicant is Universal City Studios, which may have big plans for the mark given the scope of the trademark applications.

On April 22nd, Universal City Studios, LLC filed 7 federal trademark applications for the word mark PETMOJI. The studio filed each application on an intent-to-use basis.
The most interesting applications are in the following classes:
  • Class 041 for "[e]ntertainment services, namely, providing a website enabling users to create and share digital images, icons, pictographs, graphics and illustrations on mobile devices, wireless devices, social media platforms and global computer networks and in electronic communications and via a wireless computer network; entertainment services, namely, providing online games; providing a web-based system and on-line portal for customers to participate in on-line gaming; entertainment services, namely, providing temporary use of non-downloadable computer games; entertainment services, namely, providing digital television series, webcasts or webisodes via a global computer network and portable and wireless communication devices;" and
  • Class 009 for "[d]ownloadable computer software, mobile applications and keyboard applications for creating and sharing digital images, icons, pictographs, graphics and illustrations on mobile devices, wireless devices, social media platforms and global computer networks and in electronic communications; computer game software; downloadable mobile application for a video game; downloadable interactive computer, video and electronic game programs via a global computer network, wireless communication devices and portable electronic devices; interactive computer, video and electronic game programs, software, cartridges and memory cards; computer game software for personal computers and home video game consoles; mobile phone accessories, namely, phone cases and covers, phone charms, wired and wireless earbuds, cell phone mounts, phone clips and screen protectors[.]"
These applications together suggest that Universal has some intention to create a website and/or software to facilitate the creation and sharing of icons and images (probably related to pets).

The remaining trademark applications are for related merchandise, such as toys, housewares, clothing, and jewelry. Thus, the studio apparently has some intention of developing a line of PETMOJI-related goods as well.

Unfortunately for the rest of us, this probably means the use of PETMOJI for websites, software, or the goods listed on Universal's applications is off limits until Universal decides whether to proceed with these applications. And don't expect the emoji-related trademarks to slow down any time soon.

Monday, April 25, 2016

BEER FOR BREAKFAST? Dogfish Head Files New Beer Trademark

For those who like beer for breakfast, Dogfish Head is apparently coming out with a new beer for you. On April 20th, the brewery filed a federal trademark application for BEER FOR BREAKFAST in Class 032 for "beers." This is not the first Dogfish Head trademark featured on this blog (trademark filed last year for restaurant services).
Dogfish Head filed the application on an intent-to-use basis, meaning the brewery is [probably] not using this trademark yet but has a bona fide intention to do so in the near future.

As blogged about before, beer trademarks are incredibly popular at the U.S. Patent and Trademark Office these days. The crowded field means breweries should take extra caution in clearing trademarks before use. It's also forcing breweries to become more creative and unique in choosing beer names (to decrease the likelihood that such a name is already in use).

For those in the Cincinnati area, join me at the 2016 CincyBrand Conference tomorrow where I will introduce a panel of local craft brewers who will discuss these unique challenges related to branding in the craft beer industry.

Wednesday, April 20, 2016

Want to Drink Your Lemonheads? Your Favorite Candies Might Be Ciders Soon

Do you love Jujyfruits, Cherryheads, Grapeheads, Lemonheads, and Red Hots? Do you love them so much you want to enjoy them as a cider drink? If so, and if recent trademark filings at the U.S. Patent and Trademark Office are any indication, your dream may be coming true.

On April 15th, Ferrara Candy Company (the owner of Super Bubble, Red Hots, and Now & Laters, among others) filed five federal trademark applications for each of the candy trademarks listed below.
But Ferrara did not file these trademark applications for candy. Instead, the candy company filed each application in Class 032 for "non-alcoholic cider." Check out the RED HOTS application here

Each application was filed on an intent-to-use basis, meaning Ferrara is [probably] not using these trademarks with cider yet, but has a bona fide intention to do so in the near future. In other words, the company is taking some steps to make this drink a reality. So if you want to drink Red Hots, check store shelves soon.

Tuesday, April 19, 2016

26 Dr. Seuss Related Trademark Applications Filed

Something is abuzz in the Dr. Seuss world. On April 14th, Dr. Seuss Enterprises, L.P. spent thousands of dollars filing 26 Dr. Seuss related trademark applications. The trademark applications are seen below (the blank spaces indicate certain designs that were filed).
The applications appear to cover mostly merchandise and novelty items related to the Dr. Seuss brand. For example, some of the goods included in these applications are "pet clothing" (in Class 018), "tumblers [and] mugs" (in Class 021), clothing (in Class 025), and "Christmas tree ornaments" (in Class 028).
It is not uncommon for popular brands to own many federal trademark registrations related to a broad range of goods and services. These registrations give the brand a great deal of legal protection across the country, assist with preventing foreign counterfeit goods from entering the country, and make it easier to stop knockoff brands in the U.S.

Monday, April 18, 2016

Apple Files 1,135th Trademark Application with "Add to Apple Wallet" Icon

Apple, Inc.'s federal trademark portfolio is quite extensive. By my unofficial count, the company has filed approximately 1,135 trademark applications with the U.S. Patent and Trademark Office (although only about 712 are "live" as of the date of this post). These applications cover everything from product names, to app icons, and, of course, Siri.

The latest trademark therefore comes as no surprise. On April 13th, Apple filed a federal trademark application for the "Add to Apple Wallet" icon seen below (WALLET disclaimed).
Apple filed this trademark in Class 009 for computer software related to organizing boarding passes, coupons, gift cards, and sporting tickets, processing mobile payments, personal information management, and verifying credit card transaction and payment information. 

Apple has had success in registering icons as trademarks before and I suspect this application will be no different. Apple is using Section 44(d) of the Trademark Act to claim priority for this mark as of October 22, 2015, based on a trademark application it filed in Jamaica on that date.

Thursday, April 14, 2016

Trademark For Trumpmoji Filed...But Not By Donald Trump

It's 2016. Federal trademarks applications for SELFIE- and EMOJI-related marks are commonplace (for better or for worse). Continuing with that trend and taking a shot at Donald Trump (I think?), a company in Louisiana filed a federal trademark application for TRUMPMOJI on April 10th.
The applicant filed this trademark application in Class 009 for "[c]omputer application software for mobile phones, namely, software for sharing information on social media; [c]omputer graphics software; [d]ownloadable computer graphics; [d]ownloadable graphics for mobile phones." This first use date is listed as March 29, 2016.

While hilarious, this application has a problem. Section 2(c) of the Trademark Act is an absolute bar on the registration of marks that consist of the name of a living individual unless that individual provides his or her written consent to the U.S. Patent and Trademark Office (which Donald Trump did not do here, obviously). 

The fact that this application is for TRUMPMOJI and not DONALD TRUMP does not make a difference. The Trademark Office makes it clear "Section 2(c) applies not only to full names, but also first names, surnames, shortened names, pseudonyms, stage names, titles, or nicknames." TMEP 1206.01. For example, trademark applications for OBAMA PAJAMA, OBAMA BAHAMA PAJAMAS, and BARACK'S JOCKS DRESS TO THE LEFT were all refused registration under SEction 2(c). See In re Hoefflin, 97 USPQ2d 1174, 1177-78 (TTAB 2010).

Candidates for political office are generally reluctant to bring legal action to prevent the use of their name (although this is Donald Trump), so this company's TRUMPMOJI app may continue to exist. As far as obtaining a federal trademark registration for the name, however, that is extremely unlikely. Unfortunately for the applicant, that means the $225 nonrefundable filing fee submitted with this application is all but lost.

Wednesday, April 13, 2016

Amazon Files Trademark Applications For Wind, Solar Farm Logos

According to Amazon Web Services, Amazon is rolling out multiple wind and solar farms in 2016 and 2017. The energy generated from these farms is more than 1.6 million MWh, or enough energy to power about 150,000 U.S. homes.

In an effort to obtain more legal protection for the farms' logos, Amazon Technologies, Inc. filed two federal trademark applications on April 8th - one for the Amazon Wind Farm logo and the other for the Amazon Solar Farm logo (both seen below).
Amazon filed each trademark application in three classes:
  • Class 035 for "[a]dvertising; promoting the use of solar farms" and "[a]dvertising; promoting the use of energy from wind turbine farms," respectively;
  • Class 040 for "[g]eneration of energy from solar farms" and "[g]eneration of energy via wind turbine farms," respectively; and
  • Class 042 for "[c]omputer services; variable computing capacity services; application service provider, namely, providing, hosting, managing, developing and maintaining applications, software, websites and databases in the fields of ecommerce, online payments, order queuing, website design, data storage and shared computing capacity scaling services."
For more information on these farms, check out Amazon's sustainability page at this link.

Monday, April 11, 2016

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

In another perfect example of what not to do, a company in Washington D.C. filed a federal trademark application on April 6th for SNACKABLE GRANOLA. The related goods are listed as "Granola; Granola snacks; and Granola-based snack bars" in Class 030.
The problem? The trademark is merely descriptive of the underlying goods. Trademarks that are merely descriptive will be refused registration on the Principal Register under Section 2(e)(1) of the Trademark Act. A trademark 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).

Certainly the phrase SNACKABLE GRANOLA describes an ingredient and characteristic of "granola snacks" and "granola-based snack bars." Even the specimen submitted with the application, seen above, shows the purported trademark in an area on the packaging that is more likely to describe the actual goods. While "Oh-Mazing!" could be considered a trademark, the phrase "snackable granola" simply indicates what is inside the package.

While there is an exception to the rule that merely descriptive trademarks cannot be registered on the Principal Register, that exception requires substantial, continuous, and exclusive use in commerce, which does not apply here (the first use date is listed as February 26, 2016). See TMEP 1212 for more on acquired distinctiveness. 

Unfortunately for this applicant, who did not use a trademark attorney, the $225 filing fee submitted with this trademark application is all but lost.

Friday, April 8, 2016

Is Michael Kors Developing a Smart Watch?

A recently filed federal trademark application might suggest Michael Kors is getting into the smart watch business. On April 4th, the fashion company filed a federal trademark application for MICHAEL KORS as it relates to a variety of smart watch goods and services, including:

  • "Wireless communication devices featuring telecommunication functionality to allow the transmission of text, data, audio, image and video files; electronic monitoring devices comprised of microprocessors and accelerometers, for identifying, storing, reporting, monitoring, uploading and downloading data and information for personal physical fitness and training purposes; downloadable mobile applications and software for smart watches and mobile devices for processing, reviewing and editing data to enable users to control the presentation and information available from the devices; wearable sensors for personal physical fitness and training purposes to gather biometric data and also including monitors and displays sold as a unit" in Class 009;
  • "Wearable sensors for health and wellness purposes to gather biometric data and also including monitors and displays sold as a unit" in Class 010;
  • "Smart watches comprised primarily of wristwatches and also featuring software for sending and receiving data or to be used to monitor personal fitness activity; horological and chronometric instruments, watches, timepieces, watch straps, watch bands; jewelry; wearable digital electronic devices comprised primarily of wristwatches, bracelets, rings, or necklaces and also featuring software for sending and receiving data or to be used to monitor personal fitness activity" in Class 014; and
  • "Software as a service featuring software to identify, store, report, monitor, upload and download data and information from a wearable digital electronic device" in Class 042.
A trademark application covering goods or services related to the sale of bands for smart watches would not surprise me, as other fashion brands are doing the same, but this trademark application seems to cover the actual smart watch itself. 

While the intent-to-use filing basis of this application does not guarantee that Michael Kors will be coming out with smart watches (see another post on the intent-to-use basis), it does indicate that the company has a bona fide intention to do so.

Thursday, April 7, 2016

PICKLEBALL JUNKIE Trademark Application in a Pickle

One of the most common trademark application mistakes I see, usually by pro se applicants, is filing a trademark application for a phrase on the front of a shirt. That is exactly what a North Carolina corporation did on April 3rd when it filed a federal trademark application for PICKLEBALL JUNKIE. The applicant listed "[a]thletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, [and] athletic uniforms" in Class 025 as the related goods.
The applicant submitted a picture of the t-shirt seen above as its specimen of use. However, phrases on the front of shirts are almost never function as a trademark because they are considered purely decorative (rather than indicating source). The Trademark Office explains "[s]ubject matter that is merely a decorative feature does not identify and distinguish the applicant's goods and, thus, does not function as a trademark." TMEP 1202.03.

Specifically relating to apparel, the Trademark Office has said "[s]logans or phrases used on items such as t-shirts and sweatshirts...have been refused registration as ornamentation that purchasers will perceive as conveying a message rather than indicating the source of the goods." TMEP 1202.03(f)(i).

So how does one protect a clothing related trademark? The Trademark Office again provides some insight - "[a] small, neat, and discrete word or design feature (e.g., small design of animal over pocket or breast portion of shirt) may be likely to create the commercial impression of a trademark..." TMEP 1202.03(a). Additionally, a trademark appearing on the tag of a shirt also typically functions as a trademark. See TMEP 904.03(a). I have blogged about trademarks on clothing before here.

The Trademark Office will not refund filing fees for applications refused registration as ornamental or decorative matter and the $225 filing fee the applicant paid for the PICKLEBALL JUNKIE application is probably lost as well. All the more reason to speak with a trademark attorney before filing a trademark application.

Side note - what is pickleball?

Tuesday, April 5, 2016

Netflix Files Trademark Application For Title Screen Sound

If you binge watch Netflix like I do, you know the "da dum" sound that plays when the Netflix title screen appears. Apparently, in musical terms, that is a sound "comprising [of] two sixteenth note timpani strikes on D2 and D3, simultaneously which with are played three dotted half notes on D2, D4, and D5" and Netflix just filed a federal trademark application to protect it.
video
For those of you who are not familiar with the sound, the video above is the specimen Netflix submitted with its trademark application.

Just like names and logos, sounds are also capable of serving as trademarks if they identify the source of a good or service. Sound marks "function as source identifiers when they 'assume a definitive shape or arrangement' and 'create in the hearer's mind an association of the sound' with a good or service." See TMEP 1202.15; In re Gen. Electric Broad. Co., 199 USPQ 560, 563 (TTAB 1978). Sounds can generally be registered as trademarks when they are arbitrary, unique, or distinctive. However, commonplace sounds or sounds goods make in their normal course of operation (like alarm clocks, telephones, etc.) cannot be registered unless they acquire distinctiveness in the marketplace.

In this case, Netflix is seeking protection of the sound above as it relates to entertainment and streaming services in both Class 038 and Class 041. According to the trademark application, Netflix first started using this sound in commerce on February 27, 2015.

If this application matures to a registration, Netflix will obtain the exclusive, nationwide right to use this sound in conjunction with the services listed in its trademark application.

Monday, April 4, 2016

NBCUniversal Files Trademark Application for SONGLAND

The network that broadcasts the popular singing competition The Voice recently filed a federal trademark application for what might be another music-related show. On March 30th, NBCUniversal Media, LLC filed a federal trademark application for SONGLAND.
The services listed on the application are in Class 041 for "[e]ntertainment services in the nature of a television series featuring music, artists and entertainment." NBCUniversal filed the trademark application on an intent-to-use basis, so a specimen showing use of the mark in commerce was not submitted with the application.

Does this mean NBC will be airing a show called SONGLAND? Maybe. Filing an intent-to-use application requires a "bone fide" intention to use the mark in commerce. This means something more than a mere idea to use the mark exists. It could be the development of marketing plans, a script, signing contracts with talent, etc. However, despite the filing, NBCUniversal is not required to use the mark in the future. Thus, while an intent-to-use trademark applications seems to indicate the applicant will be using the trademark at some point, it does not guarantee such use.

Friday, April 1, 2016

Vintage Baywatch Trademark Filed As New Movie Develops

Baywatch is getting a reboot in the form of a movie with the likes of The Rock and Zac Efron, but the most recent trademark application filed by The Baywatch Production Company, Inc. actually relates to the original show. On March 28th, that company filed a federal trademark application for the logo seen below.
The services listed in the application are in Class 041 for "[e]ntertainment in the nature of an ongoing television series in the field of action adventure." At first glance, I suspected the filing may be related to the movie, but the specimen submitted with the application (seen below) indicates otherwise.
Although this logo relates to current airings of the original show, the first use date for this logo is listed at August 1, 2015 in the application, suggesting that this logo has only been used to promote the original show since late last year. As the new Baywatch movie gets closer to its premiere, expect to see more Baywatch-related trademark filings with the USPTO.