Wednesday, June 29, 2016

Boston Beer Company Files Trademark Application for BREXIT

On June 24th, as the world was contemplating the consequences of the United Kingdom's "Brexit" vote to leave the European Union, others were filing applications to register the term as a trademark. One of those entities was the Boston Beer Company (the owner of the Sam Adams trademark).
On that day, the beer company filed a trademark application with the Trademark Office for BREXIT in Class 033 for "[h]ard cider." The application was filed on an intent-to-use basis. Don't be surprised if the Boston Beer Company comes out with a BREXIT Cider soon.

Applications to register BREXIT as a trademark were also filed on June 24th by an individual in Chicago in Class 025 for clothing and by a company in Colorado in Class 005 for dietary and nutritional supplements.

Tuesday, June 28, 2016

Whole Foods Files Trademark Application for WORLD'S HEALTHIEST GROCERY STORE

A recent trademark application shows Whole Foods is attempting to secure its place as the "world's healthiest grocery store" (or rights to that phrase, at least). 

On June 23rd, Whole Foods Markets IP, L.P. (which I assume is a limited partnership holding Whole Food's intellectual property assets) filed a federal trademark application for the phrase WORLD'S HEALTHIEST GROCERY STORE.
The grocery store filed this application in Class 035 on an intent-to-use basis for "[r]etail grocery stores; [r]etail and on-line grocery store services featuring home delivery service; [and] [s]upermarkets[.]" If Whole Foods is successful in registering this trademark, it will have the exclusive, nationwide right to use the phrase in conjunction with services related to those listed above.

However, registration of this phrase is far from guaranteed. For one, the store filed this application on an intent-to-use basis. This means the store will need to actually start using the mark in commerce, and provide sufficient proof of such use to the Trademark Office, before the mark will register. See TMEP 902.

Additionally, there is a significant risk that the Trademark Office will deem this phrase to be a common laudatory phrase that is too descriptive or generic to serve as a trademark. See TMEP 1209.03(s). Descriptive and generic phrases are prohibited from registration on the Principal Register under Section 2(e)(1) of the Trademark Act until they acquire distinctiveness. 

For example, in In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) the phrase THE BEST BEER IN AMERICA, as applied to beer and ale, was found to be "so highly laudatory and descriptive as to be incapable of acquiring distinctiveness as a trademark." This decision was based, in part, on the fact "that 'The Best Beer in America' is a common phrase used descriptively by others before and concurrently with Boston Beer's use, and is nothing more than a claim of superiority."

So is the phrase WORLD'S HEALTHIEST GROCERY STORE, as applied to retail grocery stores and supermarkets, so highly laudatory and descriptive as to be incapable of acquiring distinctiveness as a trademark, much like THE BEST BEER IN AMERICA? Are other grocery stores using a similar phrase? Is it nothing more than a claim of superiority? I think so. In approximately three months when this application is assigned to an Examining Attorney at the Trademark Office, we will find out if I am right.

Friday, June 24, 2016

DOUG THE PUG Files Trademark Application for Name, Covers "Live Appearances by a Celebrity Dog"

Live appearances by a celebrity dog? This is the world we live in now, apparently. On June 20th, L. Mosier Creative, LLC filed a federal trademark application for DOUG THE PUG. According to the application, this trademark has been in use since October 2, 2014.
The application was filed in Class 041 for:
Entertainment services, namely, live appearances by a celebrity dog; Entertainment services, namely, personal appearances by a celebrity dog; Entertainment services, namely, providing a web site featuring photographic, audio, video and prose presentations featuring a celebrity dog; Entertainment services, namely, providing images and text featuring animal stories and pictures on-line and in mobile wireless form; Entertainment services, namely, televised appearances by a celebrity dog; Providing a website featuring non-downloadable photographs; Providing a website featuring non-downloadable videos, namely, video presentations of a comedic nature; Providing a website featuring non-downloadable videos, namely, video presentations of a comedic nature; Providing on-line videos featuring a celebrity dog, not downloadable[.]
Not quite sure who Doug the Pug was, I did a quick search. Astounded, I discovered this pug has 1.8 million followers on Instagram, 4.7 million Likes on Facebook, 100k+ follows on Twitter, and his own website - www.itsdougthepug.com. In other words, this dog is much more famous than I will ever be.

If Doug the Pug is successful in registering this mark with the Trademark Office, he can take solace in the fact that he will be entitled to the exclusive, nationwide right to use his name in conjunction with the services listed above (unless some other dog was using this name with these services prior to him, in which case he won't have rights in that particular geographic area).

Doug also has pending trademark applications for his name in Class 022 for a variety of clothing items and in Class 016 for "calendars; greeting cards; holiday cards; gift wrap paper; gift wrapping paper; [and] wall calendars."

Wednesday, June 22, 2016

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

As I've blogged about many times (here and here, for example), an applicant who applies to register a certain trademark with the U.S. Patent and Trademark Office must take care to avoid marks that are merely descriptive.

Merely descriptive marks can only function as trademarks under limited circumstances and the Trademark Office will not register them pursuant to Section 2(e)(1) of the Trademark Act until those circumstances are met. A mark is considered merely descriptive if it "describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services." See TMEP 1209.01(b).

On June 16th, a company in Cocoa Beach, Florida filed a federal trademark application for REMOTE DRUG TESTING in Class 044 (which I'm not sure is correct because the filing is for a good not a service). The applicant describes its "service" as follows:
Service where a package is sent to a remote location (residence, home, etc) to collect bodily fluids such as urine, saliva, blood, skin, hair, and fingernails etc to perform any number of clinical lab tests including but not limited to toxicology, urinalysis, hematology, chemical analysis, and dna. Many of the kits include a video confirmation for identity and to capture on site test results. The collected specimens are then sent to the lab and the appropriate tests are performed and reported back in a number of ways; paper, text, email, web portal and smartphone apps
The specimen for the mark, which has been used in commerce since June 14, 2016, is seen above.

Is the term REMOTE DRUG TESTING merely descriptive of a feature, characteristic, or function of a drug test sent to remote locations? I think so. And given the applicant's very recent first use date, this mark has not "acquired distinctiveness" to overcome this barrier to registration.

Unfortunately for this applicant, his $325 nonrefundable filing fee (which could have been lower had it taken advantage of certain application options at the Trademark Office) is all but lost.

Tuesday, June 21, 2016

Steph Curry Files Multiple Trademark Applications Days Before Game 7 of NBA Finals

Steph Curry and his Golden State Warriors didn't outlast Lebron James and the Cleveland Cavaliers in the NBA Finals, but his attorneys were taking steps during the Finals to make sure his brand will last. On June 16th, Wardell Stephen "Steph" Curry filed four federal trademark applications for the variations of his name seen below.
The applications were each filed on an intent-to-use basis in Classes 009, 016, 025, 028, and 041 for a variety of goods and services. Some of the goods and services covered include: downloadable software applications for smart phones and mobile devices (009), books and magazines (016), sweatpants and sweatshirts (025), basketballs (028), and basketball and golf coaching (041).

Interestingly, these appear to be the only trademark applications filed for Steph Curry's name or listing Steph Curry as the owner of the mark. This may be part of the reason why the goods and services listed in each application are so broad.

One thing noticeably missing from these applications - Steph Curry's written consent authorizing the registration of these trademarks (probably because he was busy trying to win the NBA Finals when these applications were filed).

Under Section 2(c) of the Trademark Act, a trademark containing a living individual's name, signature, or portrait cannot be registered without the consent of that person. See TMEP 1206.01. However, the failure to include this consent with the initial application is not fatal to the registration. As long as Steph's attorneys obtain his consent when requested by the Trademark Office (which will occur in approximately three months after an examining attorney reviews these applications and issues office actions for failing to include this consent), the trademarks can still register.

Friday, June 17, 2016

JOE CUERVO - A Jose Cuervo Beer?

Jose Cuervo, the world's largest producer of tequila, might be moving into the beer market according to a recent trademark application filed by the company.

On June 13th, the tequila company filed a federal trademark application for JOE CUERVO in Class 032 for "[b]eer; brewed malt based alcoholic beverage in the nature of a beer; malt beer and non-alcholic malt beverages; non-alcoholic malt coolers." The company also filed this application in Class 033 for "[a]lcoholic beverages, namely, tequila extracts."
This application seems to indicate Jose Cuervo may be in the process of developing a "Joe Cuervo" beer although the intent-to-use basis of the application does not guarantee a beer will actually be released.

Although an intent-to-use application is only allowed when an applicant "has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce..." it does not guarantee (or require) that an applicant actually use the trademark in the future. See 15 USC 1051(b). All that it requires is a "bona fide intention" to use the mark, which can be found in the development of markets plans, product specifications, prototypes, etc.

This is not the first time Jose Cuervo has filed a beer-related trademark application. In October 2015, the tequila company filed JOSE CUERVO TRADICIONAL in Class 032 for "[b]eer; malt beverages, namely, ale, ale based cocktails, and beer based cocktails." That application was also filed on an intent-to-use basis and was published for opposition in March 2016.

Additionally, in 2012 Jose Cuervo filed an application for MISTICO in Class 032 for, in part, beer. That application was filed on an intent-to-use basis. The company has requested five extensions to file a statement of use (showing use of the mark in commerce and a required filing before registration can be finalized), which is the maximum number of extensions available. See TMEP 1108. If the company does not start using this trademark by November 2016, the MISTICO application will be abandoned.

Although Jose Cuervo has filed three different trademarks for beer in the past four years, none have reached registration yet. Will JOE CUERVO be the first?

Thursday, June 16, 2016

Capcom Files Trademarks for Resident Evil 7

Just three days ago, Capcom announced Resident Evil 7: Biohazard at E3 2016. And just one day before that, its attorneys filed federal trademark applications to protect the game's title.
On July 12th, Capcom Co., LTD., a Japanese corporation, filed trademark applications for both RESIDENT EVIL BIOHAZARD and RESIDENT EVIL 7 BIOHAZARD. The gaming company filed both applications on an intent-to-use basis (meaning it claims to not be using the marks in commerce yet) in Class 009 for 
Computer game software; Computer games in the form of cartridges, cassettes, discs or tapes; Video game cartridges; Downloadable game software; Downloadable computer games; Electronic game programs for mobile phones and smart phones; Electronic game software for mobile phones and smart phones; Downloadable game program for playing on mobile phones and smart phones; Downloadable game software for playing on mobile phones and smart phones; Screen saver software and wallpaper software; Downloadable screen saver software and wallpaper software for mobile phones and smart phones; Downloadable graphics and music via a global computer network; Downloadable graphics, music and ring tones for mobile phones and smart phones[.]
Had Capcom filed these applications on an actual use basis, the company would have submitted a specimen with the applications showing use of the mark in commerce. See TMEP 904. These specimens might have given us a look at the game's cover, as the packaging of goods typically serves as an ideal specimen. TMEP 904.03(c). Nonetheless, Capcom is still required to submit specimens for these marks with an intent-to-use application, but will do so later on in the registration process.

According to my quick search, Capcom owns 132 live trademark applications or registrations at the U.S. Patent and Trademark Office covering a variety of goods and services, including registrations for CAPCOM as it relates to "video game and computer game strategy guidebooks," MEGA MAN for "video output game machines and computer game programs" (filed in 1989), and RESIDENT EVIL DEGENERATION, also for "computer game software." Resident Evil 7's trademarks are the newest additions to Capcom's intellectual property portfolio.

Tuesday, June 14, 2016

How I Met Your Father? Fox Files Trademarks For Potential Spinoff Show

If recent federal trademark filings are any indication, Twentieth Century Fox Film Corporation may be planning a spinoff of the popular How I Met Your Mother show. On June 9th, the company filed two federal trademark applications for HOW I MET YOUR FATHER.
Fox filed these applications in Class 041 for "[e]ntertainment services in the nature of a television series featuring comedy" and a variety of related services, and in Class 009 for "[p]re-recorded DVDs featuring comedy" and a variety of related goods. Fox owns a registration for HOW I MET YOUR MOTHER in Class 041 for identical entertainment services in the nature of a television series featuring comedy. Both applications were filed on an intent-to-use basis.

According to Deadline.com, a pilot for this show (then called How I Met Your Dad) was presented to CBS in the first half of 2014, but the network passed on picking it up. Interestingly, Deadline also reported at that time that CBS and Twentieth Century Fox were in talks regarding the show. Given these recent trademark filings, it appears the show might have new life with Fox.

Thursday, June 9, 2016

HODOR Trademark Filed for Door Stops

Yes, that's right. An applicant in New York (who appears to be known for toilet-shaped dog and cat bowls) filed a federal trademark application on June 3rd for HODOR in Class 020 for "[d]oor stops of wood." Those of you who saw the Game of Thrones episode from three weeks ago know what this is about. For those who don't, I won't spoil it. Very creative indeed, applicant.
Despite the creativity, I do not see the USPTO registering this mark. Stamping a large phrase across an item like this is often considered ornamental use, rather than trademark use. These means the subject matter is "merely a decorative feature" and "does not identify and distinguish the applicant's goods." This is seen a lot in trademark applications for phrases on shirts.

This application also suggests a connection with the HBO show, which is never good if one does not have a license. While this application is certainly clever, the chances of it actually registering are minimal.

Wednesday, June 8, 2016

Trademark Filings Hint at Tucson AHL Team's New Name

Last month, the Arizona Coyotes, an NHL team, moved the Springfield Falcons to Tucson to be the team's AHL affiliate. According to reports, the Coyotes held a contest to determine the Tucson team's new name. The team is expected to announce the winner on June 18th.

On June 3rd, IceArizona AHL Co, LLC (which I presume is the entity that owns the new team) filed five federal trademark applications (like this one) that may contain the team's new name. Those applications are seen below.
The team filed each application in Class 041 for "[e]ntertainment services, namely, organizing, providing and conducting professional ice hockey exhibitions and games." Each application was filed on an intent-to-use basis, which means the team is not currently using these marks in commerce (which makes sense given that a name has not been selected yet). The Chargers Football Company did something similar when it filed a trademark application for LA CHARGERS on an intent-to-use basis earlier this year.

When the Coyotes announce the AHL team's new name on June 18th, will it will come from this list of recently filed trademarks? It very well could.

Tuesday, June 7, 2016

Frito-Lay Files Trademark Application for New Cracker Jack Logo

Earlier this year, Frito-Lay announced that Cracker Jack boxes would be getting a new look with an updated logo. The brand also announced it would no longer offer toys inside the boxes for the first time in 125 years (consumers will now receive a digital code that can be used to access smart-phone games).
On June 2nd, Frito-Lay North America, Inc. filed a federal trademark application to protect the new logo (see above). The company filed the logo in Class 030 for "[c]orn-based snack foods; [f]lavor-coated popped popcorn; [p]opped popcorn.

According to the application, the new logo has been used in commerce since at least February 2016. The specimen submitted with the application, showing the logo used on the goods, is seen above.

Friday, June 3, 2016

CHONUT Sandwich Specimen is Delicious...But Will Be Rejected

On May 30th, an individual in New Jersey filed a federal trademark application for CHONUT. The applicant filed the application on a 1(a) basis in Class 030 for "[h]amburger sandwiches." According to the application, he has been using the term since February 2015.
All is good so far, until the applicant's specimen is examined (see above). While this may be a literal "specimen" of the sandwich, this is not the specimen the Trademark Office needs to register a trademark.

A specimen, for Trademark Office purposes, shows the manner in which a mark is seen by the public. TMEP 904. For goods, labels and tags, stampings, and commercial packaging showing the mark are all acceptable specimens. See TMEP 904.03(a)-(c). Websites can also be good specimens so long as the identified goods are displayed in close conjunction with the mark and there is a means for ordering the goods. TMEP 904.03(i).

Unfortunately for this applicant, his "specimen" shows the goods, not the mark. Fortunately for the applicant, the Trademark Office will give him an opportunity to fix the deficient specimen. To save his application (and filing fee), the applicant will need to submit a substitute specimen that shows the mark being used in commerce in conjunction with the goods. The substitute specimen must also have been in use in commerce at least as early as the filing date (in other words, he can't create a new specimen now).

On another note - the specimen was described as a "barbecue sandwich on a donut." Would that be good?

Wednesday, June 1, 2016

Is This DRUNKEN FRUIT Trademark Merely Descriptive?

On May 27th, two enterprising individuals from Brooklyn, New York filed a federal trademark application for DRUNKEN FRUIT. The individuals filed the application in Class 029 for "[f]ruit preserved in alcohol; [f]ruits preserved in alcohol; [f]ruits in preserved form." Sounds pretty good to me.
Is the trademark merely descriptive though? 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). I have a feeling the Trademark Office will deem DRUNKEN FRUIT to be merely descriptive of an ingredient, quality, or characteristic of the underlying goods (namely, fruits preserved in alcohol).

Merely descriptive terms cannot be registered as trademarks under Section 2(e)(1) of the Trademark Act until and unless they acquire distinctiveness in the marketplace.

This application's saving grace may be the fact that this trademark has apparently been in use since June 2008. Under Section 2(f) of the Trademark Act, if the applicants can show "proof of substantially exclusive and continuous use" of the mark "in commerce for the five years before the date on which the claim of distinctiveness is made," the Trademark Office will accept such use as prima facie evidence of the fact that the mark has become distinctive as applied to the applicant's goods (aka the mark has "acquired distinctiveness"). A showing of acquired distinctiveness is required to register a merely descriptive term as a trademark.

The applicants did not make the 2(f) claim on the application, but may do so if the examining attorney at the Trademark Office deems this mark merely descriptive. On another note - where can I buy this?