Wednesday, September 20, 2017

The Ritz-Carlton Files Trademark Application Covering "Caviar"

As if the Ritz-Carlton hotel chain wasn't fancy enough already, a recent trademark application filed with the U.S. Patent and Trademark Office suggests the hotel may be adding another ritzy good to its lineup - caviar.

On September 15th, The Ritz-Carlton Hotel Company, LLC filed a federal trademark application for THE RITZ-CARLTON (in standard characters) covering a single good in Class 29 - "caviar." The hotel filed the application on an intent-to-use basis, suggesting it is not currently selling The Ritz-Carlton caviar but has a bona fide intention to do so in the near future. TMEP 806.01(b); 15 USC 1051(b). According to my search, this is the first trademark application covering caviar ever filed by The Ritz-Carlton.

Perhaps the hotel will be selling this caviar on their new yachts in 2019? Not only did the hotel announce The Ritz-Carlton Yacht Collection on its website, but it also filed five applications to register the words THE RITZ-CARLTON YACHT COLLECTION as a federal trademark back in June 2017. Those applications, which the hotel also filed on an intent-to-use basis, cover a variety of goods and services related to cruise services, including "transport of passengers and of goods," "cruise ship services," and "organizing and operating excursions, tours, holidays and cruises."

Before the trademark applications for THE RITZ-CARLTON covering caviar and THE RITZ-CARLTON YACHT COLLECTION covering a variety of cruise ship-related goods and services can actually register, the Ritz-Carlton must actually start using the mark to sell the listed goods and render the listed services and submit sufficient proof of such use to the U.S. Patent and Trademark Office. TMEP 1103; 15 USC 1051(d).

Caviar and yachts - [probably] coming to Ritz-Carlton soon.

Thursday, September 14, 2017

Two Hurricane Irma-Related Trademark Applications Filed on Day Storm Hit Florida

As is the case when nearly any newsworthy event occurs (like with Covfefe), people across the country attempt to "capitalize" on a name or phrase by filing intent-to-use trademark applications with the U.S. Patent and Trademark Office ("USPTO"). Hurricane Irma, it appears, is no different.
On September 10th, the day Hurricane Irma made landfall in Florida, two Hurricane Irma-related trademark applications were filed - one for HURRICANE IRMA and the other for I SURVIVED HURRICANE IRMA.

An individual in Columbus, Mississippi filed the application for HURRICANE IRMA on an intent-to-use basis, which suggest she was not using the name as a trademark at the time of filing (i.e., was not selling goods or rendering services under that name) but has a bona fide intention to so do in the near future. TMEP 806.01(b); 15 USC 1051(b). That application covers a host of non-beer related alcohol products, including:
  • Alcoholic beverages made of fruit; 
  • Alcoholic beverages except beers;
  • Alcoholic cocktail mixes;
  • Alcoholic cocktails in the form of frozen pops; and
  • Alcoholic coffee-based beverage.
Before this application can register, the applicant will need to actually start selling the goods listed in the application under the HURRICANE IRMA name and submit sufficient proof of the same to the USPTO. TMEP 1103; 15 USC 1051(d). If she cannot do this before her extensions run out, the application will go dead.

The applicant who filed the I SURVIVED HURRICANE IRMA application, an individual from Levittown, New York, also filed that application on an intent-to-use basis. That application covers:
  • Tee-shirts; Tee shirts; Apparel for dancers, namely, tee shirts, sweatshirts, pants, leggings, shorts and jackets (Class 25); and 
  • Tee-shirt embroidering services; Imprinting messages on tee-shirts (Class 40). 
As with the HURRICANE IRMA application, this applicant will need to start actually using this phrase in conjunction with the listed goods and services before he can obtain a registration. However, simply plastering this phrase on various clothing items is not typically enough to demonstrate trademark use and therefore obtain a registration. TMEP 1202.03(f)(i) ("Slogans or phrases used on items such as t-shirts and sweatshirts, jewelry, and ceramic plates have been refused registration as ornamentation that purchasers will perceive as conveying a message rather than indicating the source of the goods.").

Although it might not be an issue with these two applications given the differences in the underlying goods and services, often when a slew of applications are filed for the same mark, many of the underlying goods or services are related (i.e., there might be several more Hurricane Irma-related applications covering clothing filed in the future). In that case, later filed applications are often refused registration under Section 2(d) of the Trademark Act.

Under Section 2(d), an application that is likely to cause confusion with a previously filed mark will be refused registration. TMEP 1207.01; 15 USC 1052(d). But what happens when two applications are executed and filed on the same day, such as the applications above, which were both executed and filed on September 10th? Which is the previously filed application? In this case, because the execution date and filing date are the same for both applications, the application with the lowest serial number will be deemed the earlier filed application. TMEP 1208.01(b). In this case, that is the HURRICANE IRMA application (Ser. No. 87/602,370), not I SURVIVED HURRICANE IRMA (Ser. No. 87/602,412).

Only two Hurricane Irma-related trademark applications have been filed so far, but considering the most recent trademark applications appearing in the USPTO's database are only from September 10th (the database is usually 4-5 days behind), I would not be surprised to see more applications in the near future.

Wednesday, September 13, 2017

Jake Paul Files Applications to Register JAKE PAUL, IT'S EVERYDAY BRO as Trademarks

Sometimes controversial actor and YouTube personality Jake Paul has been busy filing federal trademark applications with the U.S. Patent and Trademark Office over the past two weeks. Or, more appropriately, his business entity 10 Digit Investments, LLC has been busy (this entity is listed as the owner of the trademark applications and the California Secretary of State website lists Jake Paul as a member or manager of the LLC).
Jake's business entity filed the most recent trademark application, for JAKE PAUL, on September 8th. That application covered a variety of goods and services, including:
  • Musical sound recordings (Class 9);
  • A variety of clothing items (Class 25);
  • Publicity services; promoting the interests of musicians, entertainers, artists, and social media personalities; advertising services, namely, promoting the brands, goods and services of others (Class 35); and
  • Entertainment services, namely, arranging and conducting live performances, personal appearances, television performances, and radio performances by an entertainer, social media personality and performing artist (Class 41).
Additionally, on September 1st, 10 Digit Investments, LLC filed a trademark application for IT'S EVERYDAY BRO, covering similar goods and services as well as bedding, linens, printed materials, and toys. Finally, on August 29th, Jake filed the first JAKE PAUL trademark application, covering bedding, linens, printed materials, and toys.

Noteably missing from the JAKE PAUL trademark applications is Jake's written consent to register his name as a trademark, which is required under Section 2(c) of the Trademark Act. See TMEP 1206.04. Before the JAKE PAUL trademark applications can mature to registrations (assuming everything else is in order), Jake will need to submit this written consent.

According to my quick search, these are the first federal trademark applications filed by Jake Paul and his business entity, 10 Digital Investments, LLC. Loeb & Loeb, a law firm based in Los Angeles and known for representing celebrities and entertainment clients, assisted Jake Paul with these trademark filings.

Tuesday, September 12, 2017

10 Trademark Applications for JURASSIC WORLD: FALLEN KINGDOM Filed By Universal City Studios/Amblin' Entertainment

Apparently a new Jurassic Park movie, titled Jurassic World: Fallen Kingdom is being released next summer (news to me), and Universal City Studios, LLC and Amblin' Entertainment, Inc. are already getting a head start on protecting the movie's title.
On September 7th, Universal City Studios and Amblin' jointly filed ten applications to register JURASSIC WORLD: FALLEN KINGDOM as a federal trademark, with each application covering different goods or services. Those goods and services cover not only entertainment services, but also a variety of merchandise one would expect to be marketed with a blockbuster movie. Some of the goods and services listed in these applications include:
Universal and Amblin' filed all these applications on an intent-to-use basis, suggesting they have a bona fide intention to (but may not) use the JURASSIC WORLD: FALLEN KINGDOM mark in conjunction with all the listed goods and services (which makes sense considering the film is not set to be released until next summer, so it's very unlikely they would be offering those goods and services under that mark as this time). See TMEP 806.01(b); 15 USC 1051(b).

As I've blogged about before, it is not uncommon for entertainment companies to file several trademark applications for a broad range of goods and services prior to the premiere of a movie or television show. I would not be surprised if Universal and Amblin' file more applications for this film prior to the premiere date.

According to reports, Chris Pratt is back to star in this film, which is scheduled to hit theaters on June 22, 2018.

Monday, September 11, 2017

24 Beer-Related Trademark Applications Filed in Single Day as Beer Field Gets More and More Crowded

In my opinion, trademark applications for beer and breweries are some of the most popular filings these days. In fact, I've blogged about it before - here and here. That trend doesn't appear to be slowing down any time soon.

On September 6th (the most recent trademark applications available for viewing in the USPTO's database are always 4-5 days behind), applicants filed twenty-four beer-related trademark applications. Some of the highlights include:
  • CATFISH [standard characters] for beer filed by Turtle Anarchy Brewing Company, LLC in Nashville, Tennessee;
  • Mark Image for beer and lager filed by Full Sail Brewing Company in Hood River, Oregon;
  • BUZZROCK BEER COMPANY [standard characters] for beer filed by an individual in Hermosa Beach, California;
  • GAY BEER [standard characters] filed by Loyal Brands, LLC in New York City;
  • Mark Imagefor beer filed by Hatchet Brewing Company, LLC in Southern Pines, North Carolina; and
  • TAPER [standard characters] for beer filed by Sufferfest Brewing Company, LLC in San Francisco, California.
Many of these entrepreneurs and brewing companies take advantage of the intent-to-use filing basis under 15 USC 1051(b), which allows an applicant to obtain priority (contingent upon registration) in a mark prior to developing any common law rights. See also TMEP 1101. In other words, if a brewer has a bona fide intention to use a name or logo with a beer (i.e., has developed marketing plans, has ordered proofs, etc.), it can effectively "reserve" rights in that name or logo as of the filing date with an intent-to-use trademark application, if that application actually matures to a registration.

The large number of trademark filings for beer-related marks also demonstrates the importance of a trademark search prior to use and filing of a mark. Not only will the Trademark Office refuse, under Section 2(d) of the Trademark Act (see also TMEP 1207 et seq.), to register a mark that is too similar to an active, previously-filed application or registration, using a mark that is too similar to another's mark can put a newcomer at risk of infringement, if the newcomer's goods or services are related to those offered by the senior user. A trademark search helps identify these risks up front and can save substantial headaches (and costs) down the road. If you plan on using or filing an application for any mark (and especially beer-related marks), a trademark search is highly recommended.

Wednesday, September 6, 2017

Are Rocky and Bullwinkle Coming Back? Five Recent Trademark Applications Hint at Return

Remember the animated The Rocky and Bullwinkle Show from the late 1950's and early 1960's? It may be making a return, if recent trademark applications are any indication.
On September 1st, Ward Productions, Inc. (the producer of the show) filed four trademark applications to register THE ADVENTURES OF ROCKY AND BULLWINKLE as a trademark with the U.S. Patent and Trademark Office. The studio also filed another application for the show's title back in February. The goods and services covered by these applications are those you would expect to be offered in conjunction with a television series or movie, including:
Ward Productions filed all these applications on an intent-to-use basis, suggesting it was not using the mark in commerce on the filing date but has a bona fide intention to do so in the near future. TMEP 806.01(b); 15 USC 1051(b). Before these applications can mature into registrations, the animation studio must actually start using THE ADVENTURES OF ROCKY AND BULLWINKLE in conjunction with the listed goods and services. TMEP 1104; 15 USC 1051(c)-(d).

Ward Productions does currently own federal trademark registrations for ROCKY AND BULLWINKLE and ROCKY AND BULLWINKLE AND FRIENDS, but those registrations only cover comic books/magazines and greeting cards/calendars, respectively. 

So are Rocky and Bullwinkle returning? Maybe. Pay attention to these trademark applications to find out.

Friday, September 1, 2017

Rashad Jennings Files Application to Register His Signature as a Trademark

On August 28th, NFL running back and Dancing With The Stars winner Rashad Andre Jennings filed a federal trademark application with the U.S. Patent and Trademark Office for his signature, seen below.
The application, which claims a first use date of February 2014, covers:
Entertainment services, namely, personal appearances by a sports celebrity; providing a website on a global computer network featuring information about appearances, accomplishments, exploits and biography of a professional football player; fan club services; charitable services, namely, academic mentoring of inner city youth.
This isn't the first trademark application filed by Rashad, and it's not the only one covering charitable services. Mr. Jennings owns a federal trademark registration for MEET US AT THE FIFTY, covering christian ministry services, and for SHAD SQUAD covering "Charitable foundation services, namely, providing financial support to youth for literacy, mentorship and health and fitness." In 2016, he also filed trademark applications for the words OAK HAUS and a stylized "OH" design, both covering hats, pants, and shirts, and an application for SHAD THE POET covering t-shirts.


As with any application that pertains to the name, portrait, or signature of a particular living individual, a consent statement must be signed by the individual identified by the trademark. TMEP 1206.04(a); 15 USC 1052(c). Mr. Jennings submitted this consent with his SHAD THE POET application (seen above), but not this most recent application for his signature. Because the SHAD THE POET application has not matured into a registration yet, it's likely Mr. Jennings will need to submit a similar statement with this application as well. TMEP 1206.04(c).

This isn't the first time I've blogged about a celebrity filing a trademark application for his or her signature. In January 2016, I blogged about an application filed by Jay Leno for his unique signature. That application has since matured into a registration.

Wednesday, August 30, 2017

Is Reddit Changing Its Logo? Multiple Trademark Applications for New Design Recently Filed

The popular online message board Reddit may be making slight changes to its logo if recent trademark applications filed with the U.S. Patent and Trademark Office are any indication. On August 25th, Reddit, Inc. filed five federal trademark applications with the U.S. Patent and Trademark Office for the design seen below. Reddit filed each application in a separate class of goods or services (hence the five different applications for the same mark).
Some of the goods and services covered by these applications include:
The website filed all these applications on an intent-to-use basis, suggesting it is not using this design in interstate commerce as a trademark yet, but has a bona fide intention to do so in the near future (which makes sense considering a quick scan of reddit.com doesn't reveal this mark). TMEP 806.01(b); 15 USC 1051(b).

Why file new trademark applications for the design above if Reddit already has registrations for its current logo (see here, for example), which is pretty similar? Because Section 7(e) of the Trademark Act (15 USC 1057(e)) prohibits any amendment of a mark that "materially alters" the mark. See also TMEP 807.14 et seq. An amendment is only acceptable if "the modified mark contains the essence of the original mark (i.e., the mark as originally registered), and the mark as amended creates essentially the same impression as the original mark." TMEP 1609.02(a). If the marks do not create the same "commercial impression," or if it is a close call, it is safer to simply file new applications for the new mark because the new mark may fall outside the scope of protection offered by the existing registration and an amendment to the existing registration would likely be prohibited.

According to my quick search, these are the only applications for this new logo filed by Reddit so far. The website owns 41 other live applications or registrations with the U.S. Patent and Trademark Office, including registrations for AMA, REDDIT, and ALIEN BLUE.

Monday, August 28, 2017

FIFA Files Application to Register "USA 2026" as Trademark

According to FIFA's website, the bidding process for the 2026 FIFA World Cup is just beginning, but two expressions of interest in hosting the event have been submitted: (1) a joint expression by Canada, Mexico, and the United States, and (2) by Morocco. Regardless, on August 23rd the Fédération Internationale de Football Association (FIFA) filed a federal trademark application for the phrase USA 2026 with the U.S. Patent and Trademark Office (USPTO).
The application covers a wide variety of goods and services you might expect to be marketed in conjunction with the World Cup, including:
  • Entertainment services provided at or relating to sports events (Class 41);
  • Providing provision of entertainment infrastructures, namely, VIP lounges and sky boxes both on and off site sports facilities for entertainment purposes (Class 41);
  • Games and playthings (Class 28);
  • Promotion of sports events in the domain of football (Class 35);
  • Wide variety of clothing items (footwear, headgear, shirts, jerseys, sweatshirts, etc.) (Class 25);
  • Jewelry, necklaces, bracelets, team and player trading pins (Class 14);
  • Pens, pencils, photograph albums, autograph books (Class 16); and
  • Holograms (Class 9).
FIFA filed this trademark application on an intent-to-use basis, which suggest it is not using this trademark in commerce yet (makes sense), but does mean it submitted with the application a verified statement that it has a bona fide intention to use this mark in commerce. See TMEP 1101; 15 USC 1051(b)(3)(B). Before this application can mature into a trademark registration, FIFA must start using the mark in U.S. commerce and submit sufficient proof of the same to the USPTO. TMEP 1103; 15 USC 1051(d).

So does this application indicate the World Cup is coming to the United States in 2026? Not necessarily. Simply filing the application doesn't require FIFA to start using this trademark at some point in the future, only that it have a bona fide intention to do so at the time of filing (the bidding process or expression of interest from the United States might be enough). The intent-to-use filing basis essentially allows an applicant to "reserve" rights in a trademark, so long as they have a bona fide intent to use it, before actual use is made. If this application is approved by the USPTO (which can take anywhere from 9 - 18+ months, depending on the circumstances), FIFA can request extensions of up to three years before it is actually required to start using this mark (ed. - is that enough time to go through the bidding process for 2026?).

According to my quick search, this is the first trademark application related to the 2026 World Cup filed by FIFA in the United States.

Friday, August 25, 2017

Sig Sauer Files Applications to Register "Three-Dimensional Configuration of a Pistol" as Trademark

On August 21st, Sig Sauer, Inc. filed a federal trademark application not for a word or a logo, but rather for "the three-dimensional configuration of a pistol." The drawing submitted with the application is seen below.
The application describes the mark as including
the overall size and shape of the pistol and the external accents and features of the pistol. The mark includes the relative proportions of the external accents and features of the pistol, including (1) the angle and shape of the grip in relation to the slide; (2) the size and shape of the trigger guard; (3) the length, depth, and shape of the relief cuts on the sides of the slide; (4) the angle, shape, size, and separation of the lines and ridges on the slide (slide serrations); and (5) the size and shape of the exposed portion of the hammer. The dotted lines indicate features that are not claimed as a part of the mark, including: the shape of the front and rear sight, the shape of the trigger, and the exposed portion of an inserted magazine.
The specimen submitted with the application (which is supposed to show the mark as seen by the public) is below.
It is possible to register the design of a product, a type of trade dress, as a trademark, but there are a couple more hoops an applicant must jump through to obtain the registration.

To start, trade dress that is functional, or "essential to the use or purpose of the article or if it affects the cost or quality of the article" is not registerable. 15 USC 1052(e)(5)TMEP 1202.02(a)Qualitex Co. v. Jacobson Prods. Co., 34 USPQ2d 1161, 1163-64 (1995). The test for functionality is complex. For a better explanation of functionality than I can ever make, see John Welch's article here.

If the aspects of the product design sought to be registered are not functional, the trade dress must also have acquired distinctiveness in the marketplace. See TMEP 1202.02(b)(i) ("A mark that consists of product design trade dress is never inherently distinctive and is not registrable on the Principal Register unless the applicant establishes that the mark has acquired distinctiveness..."). An applicant faces a "heavy burden in establishing distinctiveness in an application to register trade dress." Id. Generally, the applicant must establish through a combination of a convincing amount of advertising, sales figures, length of use, survey evidence, survey evidence, etc. that the public has come to recognize the applicant as the source of the product embodied by the design.

In sum, if the applicant can establish that the product configuration is (1) non-functional and (2) has acquired distinctiveness, it can be registered as a trademark on the Principal Register.

Interestingly, on the same day the application above was filed, Sig Sauer filed two other applications for slight variations of the gun design. Those applications are here and here. It may be that Sig Sauer hopes, by slightly tweaking the elements claimed in the application, it can get at least one of these applications through the registration process.

According to my quick search, these are the first trademark applications for a gun design filed by Sig Sauer.

What do you think? When you see the gun configuration above, do you think of Sig Sauer?

Thursday, August 24, 2017

There's a "Society of Beer Drinking Ladies" and it Just Filed Trademark Applications for its Name & Logo

If you're a lady and you like drinking beer, these trademark applications are for you.

On August 18th, the Society of Beer Drinking Ladies, Inc., a corporation based in Toronto, Ontario (who else but the Canadians, eh?), filed two federal trademark applications with the United States Patent and Trademark Office - one for the name SOCIETY OF BEER DRINKING LADIES and one for the logo seen below.
Both applications cover the same, rather expansive, list of goods and services, including:
  • Beer (Class 32);
  • Restaurant and bar services (Class 43);
  • A website providing information on beer (Class 42);
  • Bags (Class 18);
  • Drinking glasses (Class 21); and
  • A variety of clothing items (Class 25).
According to the applications, the Society has been providing drinking glasses, the website, and clothing items in the United States since 2014. The filing basis of the goods and services in Classes 18, 32, and 43 suggest the Society is not selling those goods or rendering those services in the United States yet but has a bona fide intention to do so in the near future.

According to my quick search, these are the first United States trademark applications filed by the Society of Beer Drinking Ladies, Inc. According to the group's Facebook page, it is about "bringing ladies together for good times and craft beer." Sounds like a worthy cause to me.

Friday, August 11, 2017

Is the Halo Top Product Line Expanding? Trademark Applications for Ice Cream Bars, Yogurt, Custard Filed

Halo Top is a line of low-calorie, high-protein, low-sugar ice cream sold by Eden Creamery in Los Angeles. Currently the company sells a variety of ice cream flavors and has become increasingly popular over the last couple years. On November 15, 2016, the creamery received a federal trademark registration for HALO TOP covering ice cream and online retail store/online ordering services featuring ice cream.
More recent trademark applications, however, suggest that Eden Creamery may have plans to expand the HALO TOP line of products. On August 7th, the creamery filed another trademark application for HALO TOP with the U.S. Patent and Trademark Office, this one covering the following goods:
  • Dietary supplemental drinks; Powdered nutritional supplement drink mix; Protein supplement shakes (Class 5);
  • Ice cream makers; Ice machines and apparatus (Class 11);
  • Ice cream scoops (Class 21);
  • Bases for making milk shakes; Cream; Dairy-based beverages; Ice cream shakes; Non-dairy creamer; Sour milk; Whipped cream; Whipped topping; Milk shakes (Class 29); and
  • Ice cream soda (Class 32)
Further, on August 1st the company filed yet another trademark application for HALO TOP covering:
  • Custard style yoghurts; Greek yogurt; Yogurt; Yogurt drinks (Class 29);
  • Custard; Frozen custards; Frozen yogurt; Frozen yogurt confections; Frozen yogurt mixes (Class 30); and
  • Self-serve frozen yogurt shop services
And finally, back in March, Eden Creamery filed an application for HALO TOP covering:
  • Frozen confections; ice cream bars; ice cream sandwiches; ice cream novelties and frozen confection novelties; frozen confections and ice cream for retail and wholesale distribution and consumption (Class 30);
  • Ice cream and frozen confection parlor shop store services; scoop shop in the nature of ice cream and frozen confection parlor services; retail store services featuring ice cream, frozen confection and frozen confection novelties for consumption off the premises; wholesale store services featuring frozen confections and ice cream; online wholesale store services featuring frozen confections and ice cream; wholesale distributorship services featuring ice cream and frozen confections; online wholesale distributorship services featuring ice cream and frozen confections (Class 35)
Eden Creamery filed the three HALO TOP applications from March and August 2017 on an intent to use basis, suggesting the creamery is not selling these products or providing these services yet, but does have a bona fide intention to do so in the near future. TMEP 806.01(b); 15 USC 1051(b). While these applications by no means guarantee that Eden Creamery will release these Halo Top goods and services, the company is required to start selling the goods and rendering the services in interstate commerce before the applications can mature into registrations. See TMEP 1103.

If you're a Halo Top fan, keep an eye out for more delicious Halo Top products (and perhaps ice cream parlors) in the near future.

Thursday, August 10, 2017

Is NUTTY NECKLACE Merely Descriptive of Necklaces Made of Stainless Steel Nuts? Not So Fast...

On August 5th, an individual in Pennsylvania filed an application to register NUTTY NECKLACE as a trademark with the U.S. Patent and Trademark Office. The application covers "necklaces" in Class 14 and indicates the mark has been in use since January 5, 2000.
The specimen submitted with the application (which is suppose to show how the mark is actually used in commerce and is seen above) indicates that this mark is used in conjunction with the sale of "hand-crafted jewelry using stainless steel nuts." Makes sense. But is it merely descriptive, and therefore not registerable on the Principal Register without a showing of acquired distinctiveness? See TMEP 1212; 15 USC 1052(f).

Typically, a mark is considered merely descriptive if it "describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services." TMEP 1209.01(b). However, if the mark is a "double entendre" in that it is a "word or expression capable of more than one interpretation" it will "not be refused registration as merely descriptive if one of its meanings is not merely descriptive in relation to the goods or services." TMEP 1213.05(c). For example, the mark NO BONES ABOUT IT was held not to be merely descriptive of boneless, pre-cooked ham given its double connotation. In re National Tea Co., 144 USPQ 286 (TTAB 1965).

Does NUTTY NECKLACE only describe a characteristic or quality of the necklaces? Or does it have another interpretation that is not merely descriptive, such as suggesting a quirky, non-traditional necklace? We'll find out what the Examining Attorney assigned to this application thinks in approximately three months.

Tuesday, August 8, 2017

TINKERBELLE THE DOG Trademark Application Filed For "Modeling" and "Personal Appearances by a Social Media Celebrity"

Oddly, this isn't the first time I've blogged about a trademark application for a "celebrity" dog. First it was Doug the Pug, now it's Tinkerbelle the Dog.
On August 3rd, an individual in New York (who appears to be Tinkerbelle's owner) filed an application to register TINKERBELLE THE DOG as a trademark with the U.S. Patent and Trademark Office. The application covers:
  • Entertainment services, namely, personal appearances by a social media celebrity (Class 41);
  • Modeling for advertising or sales promotion (Class 35); and
  • Promoting the goods and services of others; Retail store services featuring memorabilia, namely hats, calendars, stickers, notebooks, souvenir bags (Class 35).
According to the application, these services have been offered under the TINKERBELLE THE DOG mark since at least as early as June 1, 2014.

Curious to know how much of a social media celebrity Tinkerbelle the Dog really is, I did my own quick search. Surprisingly (or maybe not), the dog has 154k followers on Instagram, 13,944 followers on Facebook (along with 14,528 likes), 2,278 followers on Twitter, and made $20,000 in 2016.

Not bad for a small dog.

Friday, August 4, 2017

Is this Bud for Lunch? Anheuser-Busch Files Trademark Application for LUNCH BEER

Does Anheuser-Busch want you to drink beer with lunch? Possibly, according to a recent trademark application filed with the U.S. Patent and Trademark Office. On July 31, Anhesuer-Busch, LLC filed a trademark application for LUNCH BEER covering (you guessed it) "beer" in Class 32.
The beer giant filed the application on an "intent to use basis," suggesting it is not yet selling this beer but has a bona fide intention to do so in the near future. TMEP 806.01(b); 15 USC 1051(b). Before this application can mature into a registration (assuming the application otherwise meets statutory requirements and is not opposed), Anheuser-Busch must start selling beer under this mark. See TMEP 902.

In other words, while there's no guarantee the beer company will start selling this beer, keep an eye out for a LUNCH BEER at your local bar or grocery store in the near future.

According to my quick search, Anheuser-Busch, LLC owns 397 active trademark applications or registrations at the USPTO, including registrations for THIS BUDS FOR YOU.

Friday, July 28, 2017

Realty Company Files Application to Register Color Pink on Yard Signs As Trademark

We've all seen them. The "For Sale" signs realtor place in yards are commonplace. The signs typically take the same shape but come in a variety of colors and usually display contact information of the realtor. One company, however, is claiming the use of the color pink on these signs is its trademark and is seeking a federal trademark registration for the same.
On July 24th, the appropriately named Pink Realty, Inc. filed a federal trademark application for the "color pink as shown in the attached image."  The application covers a variety of real estate services in Class 36, including "real estate agencies" and "real estate brokerage." According to the application, Pink Realty, Inc. has been using the color pink on these signs since November 22, 2009.

The dotted lines are not part of the mark, but rather "inform the viewer where and how color is used on the product or product package, while at the same time making it clear that the shape of the product, or the shape of the product package, is not claimed as part of the mark." TMEP 1202.05(d)(i).

Is it possible to claim a color as a trademark and obtain federal registration for it? Yes. UPS, for example, owns a registration for the color brown. But obtaining a color registration is not easy.

To start, color marks are never inherently distinctive. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 211-12 (2000). A showing of acquired distinctiveness is always required to obtain a registration, and making that showing is difficult in the context of color marks. TMEP 1202.05(a). In other words, an applicant for a color mark must demonstrate that its use of the color identifies it as the source of the good or services in the mind of consumers (i.e., when consumers see color being used in the way the applicant is using it, they associate it with the applicant). For example, when most people see a brown delivery truck, they know it's a UPS truck.

Additionally, colors that are functional cannot be registered as trademarks. See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165-66 (1995). Colors may be considered functional if they yield "a utilitarian or functional advantage, for example, yellow or orange for safety signs." TMEP 1202.05(b). Additionally, if a specific color is the natural by-product of a manufacturing process, that color may be considered functional ("In such a case, appropriation of the color by a single party would place others at a competitive disadvantage by requiring them to alter the manufacturing process."). Id.

Does the color pink on "For Sale" signs lend a utilitarian or functional advantage? Does it make the sign easier to see and, if so, is that a utilitarian or functional advantage? If the applicant can cross that hurdle, it will need to make a strong showing that its use of the color pink has acquired distinctiveness in the marketplace before it can obtain a registration.

Can Pink Realty obtain the rare color mark registration? Keep an eye on this application to find out.

Wednesday, July 26, 2017

Amid Controversy, HBO Files Trademark Applications for CONFEDERATE

When HBO announced a new alternate history drama based on the southern states' successful secession from the union, it drew some controversy. But that didn't stop HBO from filing two applications to register the show's title as a federal trademark a couple days later.
On July 21, Home Box Office, Inc. filed two trademark applications for CONFEDERATE, in standard characters, with the U.S. Patent and Trademark Office. HBO filed one application in Class 9 and the other in Class 41, covering the following goods and services:
HBO filed the applications on an intent to use basis, suggesting it is not using the mark in commerce with the listed goods and services yet, but has a bona fide intention to do so in the near future (which makes sense considering the show has not yet aired). TMEP 806.01(b); 15 USC 1051(b). Before the marks can register (assuming the examination process goes smoothly), HBO will need to start using the CONFEDERATE mark in interstate commerce in conjunction with the listed services (which may, or may not, happen given the controversy). TMEP 1103; 15 USC 1051(c)-(d).

According to reports, production of Confederate will begin after the final season of Game of Thrones (the Game of Thrones creators are teaming up with HBO to create Confederate).

Monday, July 24, 2017

Are JALAPENO MAC BITES Merely Descriptive of Macaroni and Cheese Bite Sized Nuggets Filed with Jalapenos?

A delicious but possibly descriptive trademark application was filed on July 19th by a Florida company called Mac and Cheese Holdings, LLC (ed. - sounds like a great place to work). On that date, the company filed a federal trademark application for JALAPENO MAC BITES covering "macaroni and cheese bite sized nuggets filled with jalapenos and cream cheese and other cheeses and coated in breadcrumbs and baked" in Class 30.
The company filed the application on an intent to use basis, suggesting it is not selling these bites yet but has a bona fide intention to do so in the near future. TMEP 806.01(b); 15 USC 1051(b). Delicious, but is it merely descriptive of the underlying goods?

Under Section 2(e)(1) of the Lanham Act, marks that merely describe the underlying goods or services are not registerable on the Principal Register (where you want to be) of the U.S. Patent and Trademark Office without a showing of acquired distinctiveness (which is very difficult to show with an intent to use application).

According to TMEP 1209.01(b), "a mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services." Even if a mark does not describe every purpose, feature, function, etc., it can still be merely descriptive if it describes one significant function, attribute, or property of the goods or services. Id.

What do you think? Does JALAPENO MAC BITES merely describe an ingredient, quality, characteristic, function, feature, purpose, or use of macaroni and cheese bite sized nuggets filled with jalapenos and cream cheese and other cheeses and coated in breadcrumbs and baked? Or is it only suggestive of the goods in that it requires "imagination, thought, or perception to reach a conclusion as to the nature of those goods..." (and therefore can be registered on the Principal Register without a showing of acquired distinctiveness)? See TMEP 1209.01(a).

Keep an eye on this application and see what the Examining Attorney thinks in about three months when the application is examined.

Friday, July 21, 2017

Warner Bros. Files Applications to Register Hufflepuff, Gryffindor Emblems as Trademarks

It looks like you'll have to go through Warner Bros. Entertainment, Inc. if you want to use the Hufflepuff or Gryfinndor emblems as trademarks. On July 17, the company filed applications to register the emblems seen below as trademarks with the U.S. Patent and Trademark Office.

The applications for both emblems cover the same variety of merchandise, including the goods listed below:
Warner Bros. filed all these applications on an intent to use basis, suggesting (but not necessarily meaning) they are not using these marks in conjunction with the listed goods yet but have a bona fide intention to do so in the near future. TMEP 806.01(b); 15 USC 1051(b)

I'm not a Harry Potter guy, but aren't there more than two houses? According to my quick search, these are the only emblems filed by Warner Bros. (in 2017 at least) related to Harry Potter, but maybe the other emblems are coming soon.

Determining whether Warner Bros. owns a registration takes some work, however, considering the company owns 956 active trademark applications or registrations with the USPTO, including several standard character mark applications for the house names (and that doesn't include unregistered, common law trademarks). Earlier this year, Warner Bros. filed several applications for BUTTERBEER covering a variety of goods ranging from clothing items to dessert puddings to watches.

Tuesday, July 18, 2017

Virgin Enterprises Files Trademark Applications Covering "Space Travel Passenger Transportation Services"

Trademark applications covering space travel aren't that common, but they are starting to pop up more and more. For example, last summer I blogged about Paul Allen's Vulcan Space. The most recent applications, however, are from Richard Branson's Virgin Enterprises.

On July 13th, Virgin Enterprises filed two applications with the U.S. Patent and Trademark Office to register the Virgin Orbit logo (one seen below and the other the same thing but against a black background) as a trademark.

The applications cover several goods and services related to space travel, air transport, and satellites, including:
  • Launching of spacecraft, namely satellites and rockets, into orbit for others (Class 39);
  • Space travel passenger transportation services (Class 39);
  • Luggage check in for space travel (Class 39);
  • Commercial space lines, namely, rockets, spacecraft (Class 12);
  • Satellites for scientific purposes to be sent into orbit (Class 9)
  • Satellite transmission of signals (Class 38)
The applications are based on similar trademark applications Virgin Enterprises filed in the United Kingdom on May 12, 2017. They appear to be related to Virgin Orbit (obviously), the newest member of the Virgin family.

Interestingly, these are not the first space travel-related trademark applications filed by Virgin Enterprises. Earlier this year, the company filed an application for VIRGIN ORBIT in standard characters covering the same goods and services listed in the logo applications. Additionally, the company has owned a trademark registration for the Virgin Galactic logo seen below, covering "Travel agency services, namely, making reservations and bookings for transportation, space travel agency services; namely, booking of transportation into space" since November 2008.
Virgin filed several other trademark applications for variations of the Virgin Galactic logo back in 2014 and 2015 as well. None of those applications have registered yet, probably because Virgin Galactic does not appear to be using those variations of the logo in commerce and such use is required before the applications can mature into a registration given the intent to use filing basis. See TMEP 902.

According to my very quick search, Virgin and Vulcan appear to be the only companies with active trademark applications or registrations covering the transportation of passengers into space, save for one registration covering a spacecraft logo owned by an Excalibur Almaz Limited corporation on the Isle of Man.

Friday, July 14, 2017

Is RED CUP PONG Merely Descriptive of Beer Pong Tables?

College students might be in the best position to answer this question. On July 10th, a company in Virginia named Blue Ridge Product Solutions, LLC filed applications to register RED CUP PONG (in standard characters), and the stylized logo seen below, with the U.S. Patent and Trademark Office.
Both applications cover "Game tables; inflatable mattress swimming floats for recreational use, namely, beer pong floats; games, namely, table top games, equipment sold as a unit for playing drinking games, parlor games, singing games played with cards and game components" in Class 28.
According to the applications and specimens submitted with the same (see above), Blue Ridge Products Solutions, LLC is in the business of selling party games and accessories and has been using the "Red Cup" marks at least as early as December 1, 2010.

But are the marks merely descriptive of the underlying goods? A mark that merely describes the goods in connection with which it is being used cannot be registered on the USPTO's Principal Register without a showing of acquired distinctiveness. TMEP 1209; 15 USC 1052(e)(1). 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). However, if a mark is deemed merely descriptive, it can be registered upon proof of "acquired distinctiveness," which means the mark has become distinctive as applied to the applicant's goods in commerce (i.e., consumers associate the mark with the applicant's goods, rather than only as a descriptive term). TMEP 1212; 15 USC 1052(f).

So does RED CUP PONG or RED CUP describe a feature, purpose, or use of drinking games and beer pong floats? Or do the terms "require imagination, thought, or perception to reach a conclusion as to the nature of those goods..." in which case the mark would be suggestive and registerable on the Principal Register without a showing of acquired distinctiveness. TMEP 1209.01(a).

We'll find out what the examining attorney assigned to this application thinks in about three months. The applicant might hope for an examiner without too many "fun" college experiences...

Tuesday, July 11, 2017

JAY Z's Company Files 15 Applications to Register JAYBO as a Trademark

A couple weeks ago it was Beyonce filing applications for the names of her and JAY Z's twins, now it's JAY Z's turn. On July 6th, S. Carter Enterprises, LLC (a company associated with JAY Z) filed fifteen applications to register JAYBO as a federal trademark with the U.S. Patent and Trademark Office.
According to my quick research, Jaybo is an animated character in the music video for "The Story of O.J.," a song released as part of JAY Z's new 4:44 album. The full video is available on YouTube. In the video, JAY Z highlights a long history of racist cartoons from major animation studios, including Disney and Warner Bros.

If these recent trademark applications are any indication, JAY Z has plans to take the JAYBO message even further. S. Carter Enterprises, LLC filed the JAYBO applications in fifteen different classes of goods and services (hence the fifteen applications), resulting in a vast range of goods and services being covered. Some of the goods and services covered by the JAYBO applications include:
Each application was filed on an intent to use basis, suggesting S. Carter Enterprises is not using JAYBO in commerce with these goods and services yet but has a bona fide intention to do so in the near future. TMEP 806.01(b); 15 USC 1051(b). It also means the company must actually start using JAYBO with the listed goods and services before the applications will mature into trademark registrations. TMEP 902; 15 USC 1051(c)-(d).

If you're a JAY Z fan, keep an eye out for JAYBO merchandise, potentially coming soon.

Monday, July 3, 2017

Quarterly Index (4/1/17 - 6/30/17)

Entertainment Trademark Filings:
Sports Trademark Filings:
Food and Drink Trademark Filings:
Other Unique Filings:

Friday, June 30, 2017

Beyonce Spends $12,000 in Filing Fees on Trademark Applications For What May Be Her Twins' Names

The same company that owns several of Beyonce's federal trademark registrations (like the registration for BEYONCE) just filed more trademarks applications for what may be the names of her twins. The applications, which were filed by BGK Trademark Holdings, LLC on June 26th, are for RUMI CARTER and SIR CARTER. The company filed one application for SIR CARTER and two for RUMI CARTER (although the RUMI CARTER applications appear to be identical).
Mark Image
The goods and services covered by these applications are expansive, spanning 15 classes and totaling over $4,000 in filing fees per application. Some of the goods and services covered include:
  • Fragrances and skin care products (Class 3);
  • Baby teething rings (Class 10);
  • Baby carriages and baby strollers (Class 12);
  • A variety of bags, including tote bags, beach bags, and hand bags (Class 18);
  • Playpens for babies (Class 20);
  • Drinking cups for babies (Class 21);
  • Crib bumpers, fitted crib sheets, crib skirts, and baby blankets (Class 24);
  • Hair accessories (Class 26);
  • Baby rattles and baby swings (Class 28);
  • Online retail store services featuring music (Class 35); and
  • Entertainment services in the nature of live musical performances (Class 41).
The applications, which were signed by Celestine Knowles Carter, were filed on an intent to use basis, suggesting Beyonce is not using these trademarks in commerce yet but has a bona fide intention to do so in the near future (which makes sense considering the twins were only born recently). See TMEP 806.01(b); 15 USC 1052(b)

Are these the names of Beyonce and Jay-Z's twins? You be the judge. But note this same company owns the application for BLUE IVY CARTER covering nearly identical goods and services. That application was published in the U.S. Patent and Trademark Office's Official Gazette in January and is likely to register any day now.

Monday, June 26, 2017

Amazon Files Applications to Register AMAZON SPHERES, and Sphere Design, as Trademarks

A few days after Amazon announced it was acquiring Whole Foods, it filed two federal trademark applications for something completely unrelated - the AMAZON SPHERES.
What are the Amazon Spheres? Apparently they're giant glass spheres the mega-company is building in downtown Seattle that will house waterfalls, rivers, and tropical gardens. The structures won't be finished until early 2018.

On June 21st, however, Amazon Technologies, Inc. filed two federal trademark applications related to the spheres - one for the words AMAZON SPHERES (which I first thought would be another consumer good) and one for the design seen above (which is described in the application as only a "sphere design").

Amazon filed both applications on an intent to use basis, suggesting it is not using the marks in commerce yet but it has a bona fide intention to do so in the near future (which makes sense given the opening date). TMEP 806.01(b); 15 U.S.C. 1051(b). The goods covered by each application are the same and include the following:
  • Paper goods and printed matter (Class 16);
  • Clothing, headgear, footwear (Class 25);
  • Toys and sporting goods (Class 28); and
  • Advertising and business services, retail store and online retail store services (Class 35).
According to my quick search, these two trademark applications bring Amazon's total to 33 applications filed with the U.S. Patent and Trademark Office so far in 2017. These appear to be the first applications related to the "Amazon Sphere," although I suspect there will be more to follow.