Monday, July 25, 2016

Jamba Juice Attempts to Register BANANA BERRY SMOOTHIE As Trademark for Smoothies

In a somewhat bold move, the Jamba Juice Company filed a federal trademark application for BANANA BERRY SMOOTHIE on July 20th.
Jamba Juice filed the application in Class 032 for "Fruit juices and fruit drinks; vegetable juices and vegetable drinks; fruit and vegetable smoothies." The application lists a first use date of July 4, 2004.

Typically, such a mark would be considered merely descriptive because it describes "an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services." TMEP 1209.01(b). Merely descriptive words and terms usually cannot be registered as trademarks (on the Principal Register at least). 15 U.S.C. 1052(e)(1).

Jamba Juice, however, is claiming that BANANA BERRY SMOOTHIE has acquired distinctiveness. If a merely descriptive mark acquires distinctiveness, it can be registered as a trademark. What does it mean to acquire distinctiveness? It means the mark, "through usage by one producer with reference to his product, acquire[s] a special significance so that to the consuming public the word has come to mean that the product is produced by that particular manufacturer." See TMEP 1212

In other words, Jamba Juice is claiming that when a consumer sees the mark BANANA BERRY SMOOTHIE, it associates the smoothie with Jamba Juice. This is a difficult claim to make, and the burden will be on Jamba Juice to make it. If the Examining Attorney at the Trademark Office does not accept Jamba Juice's 2(f) (aka acquired distinctiveness) claim on its face, Jamba Juice will need to submit evidence showing consumers associate the term with Jamba Juice. In general, "more evidence is required where a mark is so highly descriptive that purchasers seeing the matter in relation to the named goods or services would be less likely to believe that it indicates source in any one party." TMEP 1212.01.

In other words, Jamba Juice may have a difficult battle in front of it. But it is using a large and very skilled law firm, so it will be interesting to see how this one turns out. If Jamba Juice is successful in registering this term, it will obtain exclusive rights and can [attempt] to prevent other businesses from using anything similar to BANANA BERRY SMOOTHIE in relation to smoothies (which will make for interesting and challenging enforcement issues).

Wednesday, July 20, 2016

Is MY TAMAGOTCHI FOREVER the Next Pokémon Go?

The success of Pokémon's revitalization through the extremely popular Pokémon Go app might be spurring the redevelopment of another 1990's classic - the Tamagotchi.
On July 15th, Kabushiki Kaisha Bandai (a Japanese toy company that owns the original TAMAGOTCHI trademark registrations from the 90's), in conjunction with WiZ CO., LTD. (what appears to be a Japanese toy and mobile content development company), filed a federal trademark registration for MY TAMAGOTCHI FOREVER. The companies filed the application in two different classes for the following goods and services:
  • Class 009 for "Computer game programs; computer game software; interactive multimedia computer game programs; downloadable computer game software used and played on mobile and cellular telephones, handheld computers, handheld consoles, home consoles, personal computers and personal digital assistants; downloadable computer game programs; downloadable computer game software via a global computer network and wireless devices; video game software;" and
  • Class 041 for "Entertainment services, namely, providing non-downloadable computer games that may be accessed network-wide by network users via mobile phones and computers; providing non-downloadable computer games via network between communications networks and computers."
Both classes were filed on an intent-to-use basis, meaning the companies are [probably] not using MY TAMAGOTCHI FOREVER in commerce yet, but have a bona fide intention to do so in the near future.
The goods and services listed in this application sound a lot like some sort of mobile game. Will we soon be able to care for Tamagotchis on our mobile phone like we did on those rudimentary plastic eggs in the 90's? Will the app incorporate augmented reality like Pokémon Go? Will we see MY TAMAGOTCHI FOREVER in the App Store soon? Only time will tell.

Tuesday, July 19, 2016

Jon Taffer of Bar Rescue Files Trademark Application for "Shut It Down" Sound Mark

Fan's of Spike TV's Bar Rescue know Jon Taffer's infamous "Shut It Down!" phrase. Whenever a bar is descending into chaos, the show's host shouts the phrase at the bar staff.
If you wanted a button that proclaims "Shut It Down!" for yourself, Jon Taffer appears to be selling one. He also claims trademark rights in the phrase (as it relates to toy buttons, at least).

On July 14th, Jon Taffer, LLC filed a federal trademark application for a sound mark consisting of the spoken words "Shut It Down." The host's business entity filed the application in Class 028 for "toys, electronic novelty push button with sound." The first use date is listed as December 2015. You can listen to the sound bite submitted with the trademark application here.

As I've blogged about before, sounds can serve as trademarks if they identify the source of a good or service and are not sounds goods make in their normal course of operation (with a few exceptions). The Trademark Manual of Examining Procedure provides "[s]ound marks function as source indicators 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." TMEP 1202.15. Along with a trademark application for a sound mark, an applicant "must submit a specimen that contains a sufficient portion of the audio or video content to show how the mark is used on or in connection with the goods/services..." TMEP 904.03(f).

According to my quick search, Jon Taffer, LLC owns 38 other live trademark applications or registrations with the U.S. Patent and Trademark Office, but this is the first sound mark filed by the celebrity.

Friday, July 15, 2016

University of Houston Files Trademark Applications for HOUSTON LAW, HOUSTON LAW REVIEW Following Lawsuit Against Houston College of Law

Earlier this year, the South Texas College of Law changed its name to the Houston College of Law, prompting a lawsuit from the University of Houston, which operates the University of Houston Law Center less than 4 miles away. Not only did the South Texas College of Law change its name to something similar to the University of Houston's well-established law school, but it also adopted a similar color scheme.

On July 11th, the University of Houston filed federal trademark applications for HOUSTON LAW and HOUSTON LAW REVIEW. The applications were filed in multiple classes for a variety of goods and services related to education, clothing, and publications with first use dates of 1992 for HOUSTON LAW and 1963 for HOUSTON LAW REVIEW.

These applications will prevent the South Texas College of Law from filing any similar trademark applications in the future, provide the University of Houston nationwide rights in the marks, and add additional weapons to the school's arsenal as it commences its legal battle over the names. However, even without a federal trademark registration, as the senior user of the marks HOUSTON LAW and HOUSTON LAW REVIEW in its geographical area, the University of Houston has common law rights superior to those of the South Texas College of Law (which didn't start using the name HOUSTON COLLEGE OF LAW until earlier this year).
The trademark applications filed by the University of Houston also set the stage for a battle within the U.S. Patent and Trademark Office (USPTO). Why? On May 12th, the South Texas College of Law filed a federal trademark application for the logo seen above. And because this application was filed prior to the University of Houston's applications, the USPTO might use it to deny registration to the University of Houston's marks due to a likelihood of confusion. TMEP 1207.

Regardless of whether that happens, I suspect the University of Houston will oppose the South Texas College of Law's mark when it is published for opposition. See 15 USC 1063. This will hold up registration of that mark until the issue is resolved in front of the Trademark Trial and Appeal Board (TTAB). Additionally, the application might be abandoned as part of a settlement related to the lawsuit.

According to my search, the University of Houston owns 83 live trademark applications or registrations at the USPTO, but the applications filed on July 11th are the first related to its law school.

Wednesday, July 13, 2016

Mr. Steal Your Grandma Guy Files Trademark Application for #MrStealYourGrandma

You may have seen the "Mr. Steal Your Grandma" guy on Instagram, Facebook, Twitter, or some other form of social media lately. The 54-year-old Irvin Randle, aka "Mr. Steal Your Grandma," went viral after photographs of his trendy style were found online.

Mr. Ran-err, Steal Your Grandma has capitalized on his newfound fame by setting up an official website, setting up an email address for booking inquires, and now filing a federal trademark application to protect the hashtag #MrStealYourGrandma.

A photo posted by too grown. (@irvinrandle) on
On July 8th, Irvin Charles Randle filed a federal trademark application for "#MrStealYourGrandma" in Class 041 for "[e]ntertainment services in the nature of hosting social entertainment events." The first use date listed for this trademark is July 1, 2016.

Interestingly, the trademark application lists a Los Angeles, CA address although various news reports indicate he is a Houston, TX resident. However, the website and email address in the application do match up with those listed on Mr. Randle's Instagram page.

Regardless, Mr. Steal Your Grandma will need to submit an alternate specimen if his trademark is to register. A specimen is supposed to show the trademark being used in conjunction with the goods or services listed in the trademark application (i.e. how the public encounters the mark in commerce). TMEP 904. The specimen submitted with this application is only the text "#MrStealYourGrandma" and is not sufficient.

To successfully register this trademark, and claim exclusive rights to the term as it relates to "entertainment services in the nature of hosting social entertainment events," Mr. Randle will need to submit an alternate specimen that was being used at least as early as the application's filing date and shows the mark being used in conjunction with the entertainment services listed. TMEP 1301.04(f).

Tuesday, July 12, 2016

Marvel Files 9 Trademark Applications for Spider-Man Logo

On July 7th, Marvel Characters, Inc. filed nine different federal trademark applications for what appears to be a Spider-Man logo (seen below).
Marvel filed each application in a different class (hence the nine different applications for the same logo) and on an intent-to-use basis (meaning it is probably not using the marks yet). As I've blogged about before, putting each class on a separate application is likely a strategic move designed to ensure that a problem with one application does not hold up the others (as it would if all the classes were listed on one application).

Some of the goods and services covered by these trademark applications include educational and entertainment services (Class 041), toys and games (Class 028), clothing (Class 025), and video game software and computer programs (Class 009).

The broad range of protection sought for this logo suggest that Marvel might have big plans for it. Is this logo related to the Spider-Man: Homecoming movie that is currently being filmed? Not much is known about the film so far. However, early pictures from the film show Spider-Man on a bicycle, and the logo above looks strangely like a bicycle tire. Coincidence?

Monday, July 11, 2016

Incubus Files 10 Trademark Applications for Band's Name

Although the band Incubus has not been on tour since 2015, something prompted them to file ten federal trademark applications on July 6th.

The applications, filed by the partnership of Incubus (compromised of Brandon Boyd, Jose Pasillas II, and Michael Einziger according to the applications), were filed in a variety of classes for various merchandise. Some of the goods covered include guitar picks in Class 015, stickers in Class 016, clothing in Class 025, and jewelry in Class 014. According to the applications, the band is actually using its name on the items listed in the applications, with dates of first use ranging anywhere from 2007 to 2015.

What do the ten new trademark applications mean? That's unclear. Before these recent applications, the band only owned three trademark registrations (which were related to their music and entertainment services) and had not filed a trademark application with the U.S. Patent and Trademark Office since 1996.

Why file ten more applications to protect a broad range of merchandise and apparel? Does that mean a tour is coming? Is the band just attempting to protect merchandise from last year's tour?

There are no indications of a new tour on the band's website, but the group did perform a seven song acoustic-set at a new bar in Huntington Beach, CA just two days after filing these applications.

Wednesday, July 6, 2016

Is This Trademark Application For a New Sam Adams Beer Logo?

The Boston Beer Company may be re-branding the Samuel Adams line of beer with a new logo if a recent trademark application is any indication. On July 1st, the beer company filed a federal trademark application for the logo seen below in Class 032 for "[b]eer."
The company filed this application on an intent-to-use basis, suggesting it is [probably] not using this mark in commerce yet, but has a bona fide intention to do so in the near future. 15 USC 1051(b).

According to a quick search, Boston Beer Company owes 203 live federal trademark applications or registrations, most of which are for names of various beers, including the BREXIT application I blogged about last week.

Tuesday, July 5, 2016

Sylvester Stallone Files Trademark Applications for Potential Motivational Book

Recent federal trademark applications suggest that Sylvester Stallone may be penning a motivational book called STALLONE - BE FIRST. 

On June 30th, Boulevard Management, Inc. (a Hollywood business management firm) filed three federal trademark applications for the term on behalf of Rogue Marble Productions, Inc. (which appears to be affiliated with Sylvester Stallone and also owns trademark applications or registrations for SYLVESTER STALLONE, I MUST BREAK YOU, and CUT ME MICK, among others).

How do we know Sylvester Stallone is affiliated with these applications (beyond the fact that the owner of the applications appears to be an entity affiliated with him)? A declaration signed by the actor and consenting to these registrations was submitted with the applications (see above). Section 2(c) of the Trademark Act requires such a declaration any time a trademark application filed with the Trademark Office contains the name, portrait, or signature of a living individual. See also TMEP 1206 et seq.

Three different applications for STALLONE - BE FIRST were filed, each in a different class of goods or services. Those classes were:
  • Class 016 for "[b]ooks, guides, handouts and resource materials in the fields of sports, physical fitness, entertainment, inspirational and motivational subject matter[;]"
  • Class 009 for "[d]ownloadable electronic books, guides, handouts and resource materials in the fields of sports, physical fitness, entertainment, inspirational and motivational subject matter; computer application software for mobile phones, portable media players and computers, namely, software for accessing a database of information in the fields of sports, physical fitness, entertainment, inspirational and motivational subject matter[;]" and
  • Class 025 for "[b]ottoms; Footwear; Gloves; Headwear; Loungewear; Sweatbands; Tops; Undergarments[.]"
These applications were filed on an intent-to-use basis, so a specimen showing actual use of the mark in commerce is not available at this time. However, the applications do suggest that Sylvester Stallone may be in the process of developing an inspirational and motivational book (and related apparel) titled STALLONE - BE FIRST. Stallone fans - keep an eye out at bookstores near you.