Thursday, November 15, 2018

Armament Company Files Application to Register the Color Yellow as a Trademark for Non-Metal Hand Restraints

In another application that demonstrates trademarks can be more than just words or logos, a Wisconsin company called Armament Systems and Procedures, Inc. filed an application to register the color yellow as a trademark for "[n]onmetal hand restraints used as handcuffs" with the U.S. Patent and Trademark Office on November 10. The specimen of use submitted with the application is below.
Can a color function as a trademark? Yes, if it is used in a manner that would be perceived as identifying and distinguishing the goods and to indicate their source (as opposed to mere decoration) and (1) the color mark has acquired distinctiveness and (2) the color is not functional.

Color marks are never inherently distinctive. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 211-12 (2000); TMEP 1202.05(a). Instead, an applicant must establish that its proposed color mark has acquired distinctiveness, or secondary meaning, in the marketplace. In other words, through substantial use of a color with particular goods or services, consumers have come to associate that color as identifying the source of the applicant's particular goods or services. An applicant can prove acquired distinctiveness by submitting evidence of the applicant's advertisement expenditures, sales figures, statements from the trade or the public, or other evidence indicating that the public associates the color with the applicant's goods or services. TMEP 1212.06. In the case of color marks, that's a different and high bar to meet.

Registration of a color mark will also be refused if the color is functional. TMEP 1202.05(b). Generally, a color is functional if it "yields a utilitarian or functional advantage, for example, yellow or orange for safety signs." Id. Color marks might also be functional if the color is more economical to manufacture or use (such as a natural color resulting from a by-product of a manufacturing process, in which case forcing others to alter the process to create a different color would put others at a competitive disadvantage) or otherwise offers some unfair competitive advantage. See TMEP 1202.02(a)(vi) (discussing aesthetic functionality).

Do you think a sufficient number of consumers would see yellow handcuffs and know they come from the applicant? Or would they simply see the color as a decorative feature? Does use of the color yellow on handcuffs offer any utilitarian or functional advantage? Armament Systems and Procedures will hope you answered "yes," "no," and "no" if they want this registration to issue.

Side note - the specimen above appears to be digitally created. The USPTO will not accept a computer graphic that merely illustrates what the mark looks like as a specimen. TMEP 904.04(a). Therefore, Armament Systems and Procedures may need to submit a substitute specimen consisting of an actual photograph of the goods.

Monday, November 12, 2018

Boston Dynamics Files Trademark Applications for "Humanoid Robots With Artificial Intelligence" and "Surveillance Robots"

Want a surveillance robot? A robot for "entertainment"? A "humanoid robot with artificial intelligence"? You may be able to purchase one named Spot, Handle, or Atlas from Boston-based Boston Dynamics soon, if recent federal trademark applications are any indication.
On November 7, Boston Dynamics, Inc. filed federal trademark applications with the U.S. Patent and Trademark Office for:
The trademark application for SPOT covers:
  • Industrial robots for use in distribution and logistics applications (Class 7); and
  • Surveillance robots; robots for use in security, safety and inspection applications; robots for entertainment (Class 9).
According to the application, the SPOT trademark is already in use (i.e., Boston Dynamics is using it in conjunction with the sale of the goods listed in the application). The photograph above is an excerpt from the specimen of use filed with the SPOT application.

The application for HANDLE covers "[i]ndustrial robots for use in manufacturing, assembly and distribution applications; robots for loading and unloading pallets; industrial robots for use in logistics applications" in Class 7 while the application for ATLAS covers "[h]umanoid robots with artificial intelligence[.]" Those two trademarks are not yet in use, according to the applications, though the filing basis indicates Boston Dynamics has a bona fide intention to use those trademarks in the near future.

The robotics company also filed an application for its name, BOSTON DYNAMICS, on the same day, which covers all the goods listed above, in addition to "[d]esign and development of robots; robotic engineering services" in Class 42.

According to my quick search, these are the first federal trademark applications filed by Boston Dynamics, Inc.

Friday, October 12, 2018

Elon Musk's Tesla, Inc. Files Application to Register TESLAQUILA as a Trademark for Tequila

Electric cars, rockets, and now...tequila? Maybe, according to a recent federal trademark application filed by Elon Musk's Tesla, Inc.
On October 8, Tesla, Inc. filed an application with the U.S. Patent and Trademark Office to register TESLAQUILA as a trademark for "[d]istilled agave liquor; [d]istilled blue agave liquor" in Class 33. Or, in other words, tequila (although "tequila" cannot be listed in the application because it is a registered certification mark, as described in an INTA article I recently wrote accessible here).

The intent-to-use filing basis of the application suggests that Tesla is not using TESLAQUILA as a trademark for "distilled agave liquor" or "distilled blue agave liquor" yet, but has a bona fide intention to do so in the near future. See TMEP 806.01(b); 15 USC 1051(b). Interestingly, Tesla filed an application for this same mark in Jamaica back on April 10, 2018 and is asserting a U.S. priority date based on that foreign application under Section 44(d) of the Trademark Act. See also TMEP 1003 et seq.

Tesla fans - while this doesn't guarantee Tesla will be releasing a tequila in the near future, you might want to keep your eyes open. Tesla is not required to start selling TESLAQUILA tequila simply because it filed a federal trademark application, but in order to file the application on an intent-to-use basis, it is required to have a bona fide intention to use the trademark in conjunction with the listed goods in the near future. Generally, there should be documentary evidence to back up this bona fide intention (such as a business plan, contracts with manufacturers, etc.). A mere idea, without more, won't cut it.

While Tesla, Inc. currently owns 54 active trademark applications or registrations with the USPTO, somewhat surprisingly, this is the first federal trademark application filed by the company in 2018. The last federal trademark applications Tesla filed were on November 29, 2017 when it filed two applications for MEGACHARGER, one of which covered battery chargers for electric vehicles and the other charging station services.

Tuesday, October 9, 2018

Idaho Potato Commission Files Applications to Register IDAHO POTATO ALE as a Trademark for Beer, 100% IDAHO POTATO BEER as a Certification Mark for Same

Beer brewed with potatoes? Apparently that's a thing, but maybe only in Idaho...

On October 4, the Idaho Potato Commission filed an application with the U.S. Patent and Trademark Office to register the words IDAHO POTATO ALE as a trademark for "beer, ale and lager" in Class 32.
According to the application, the Idaho Potato Commission has been using this trademark in commerce at least as early as March 9, 2015 (ed. - though the specimen, seen above, apparently indicates the beer may be brewed by Bear Island. It's unclear what connection, if any, Bear Island has with the Idaho Potato Commission).

The Commission filed another application to register 100% IDAHO POTATO BEER as a certification mark for "beers, lagers and ales that include potatoes" on that same day. According to that application, "[t]he certification mark certifies the regional origin of potatoes grown in the State of Idaho and certifies that those potatoes conform to grade, size, weight, color, shape, cleanliness, variety, internal defect, external defect, maturity and residue level standards promulgated by the certifier."

Certification marks, which can also be registered with the USPTO, are different that traditional trademarks. Certification marks are any word, name, symbol, or device, or any combination:
  1. used by a person other than its owner (ed. - unlike traditional trademarks); or
  2. which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by the Trademark Act,
to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services or that the work or labor on the goods or services was performed by members of a union or other organization. TMEP 1306.01; 15 U.S.C. 1127.

The application for a certification mark is similar to a traditional trademark application, with a few differences. For example, the applicant must submit (1) a certification statement (like the one for 100% IDAHO POTATO BEER quoted above), (2) a copy of the standards established to determine whether others may use the certification mark on their goods and/or in connection with their services, and (3) a statement that the applicant is not engaged in, or will not engage in, the production or marketing of the goods and/or services. See TMEP 1306.03 et seq. Unlike traditional trademarks, which indicate source, "the purpose of a certification mark is to inform purchasers that the goods or services of a person possess certain characteristics or meet certain qualifications or standards established by another person." TMEP 1306.01(b).

The Idaho Potato Commission is one of the more well-known certification mark holders and owns several registrations for certification marks related to Idaho potatoes, including registrations for IDAHO, GROWN IN IDAHO logos, and CERTIFIED 100% IDAHO POTATOES logos.

Wednesday, September 19, 2018

Marilyn Monroe Fireworks? Maybe, According to a Recent Trademark Application

Is the estate of Marilyn Monroe getting into the fireworks business? It might be, if a recent trademark application is any indication.
On September 14th, The Estate of Marilyn Monroe LLC filed an application to register MARILYN MONROE as a trademark for "fireworks" in Class 14 with the U.S. Patent and Trademark Office (ed. - are these Marilyn Monroe branded fireworks or fireworks in the shape of Marilyn Monroe?). The estate filed the application on an intent-to-use basis, suggesting it is not currently using the late actresses's name as a trademark in conjunction with fireworks yet, but has a bona fide intention to do so in the near future. TMEP 806.01(b); 15 USC 1051(b).

As I've blogged about before, the estate of Marilyn Monroe regularly files trademark applications for a variety of goods and services. According to the estate's website, consumers can purchase MARILYN MONROE spa services, jewelry, mobile applications, clothing, books, movies, and drinkware. And now, maybe, fireworks?

Two interesting things to note about this application. First, you'll notice the application indicates "The name(s), portrait(s), and/or signature(s) shown in the mark does not identify a particular living individual." That language stems from Section 2(c) of the Trademark Act, which prohibits the registration of any trademark that "[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent..." See also TMEP 1206 et seq. In this case, Marilyn Monroe is not living, so the application is making it clear consent is not required.

Second, all the trademark registrations owned by Marilyn Monroe's estate demonstrate how trademark law can be used to leverage control over a celebrity's name, either in conjunction with or as an alternative to state right of publicity laws. Generally, right of publicity laws prevent the use of one's name or likeness for a commercial purpose without that individual's consent.

In the case of Marilyn Monroe, several years ago the 9th Circuit Court of Appeals ruled that California's post-mortem publicity statute did not apply to her because she died in New York (which does not have a law providing for a post-mortem right of publicity). Since it does not apply to Marilyn Monroe, the estate is using trademark law as a means to take control of the actress's name, especially in certain market segments (like spa services, jewelry, and clothing). As a result, if a third party uses MARILYN MONROE or a confusingly similar mark in conjunction with goods or services related to those offered by the estate, the estate may have a claim for trademark infringement. Additionally, if the estate shows the MARILYN MONROE trademark is famous, it may have a claim for trademark dilution, which would allow the estate to broadly enforce its trademark rights against those selling goods and services in almost any industry.

According to my quick search, The Estate of Marilyn Monroe LLC owns 25 active trademark applications or registrations with the USPTO for MARILYN MONROE or variants. A creative legal approach for an estate that lost the right of publicity battle and needed another mechanism for protecting the actress's name.

Monday, September 10, 2018

Coaxial Cable Designer/Manufacturer Files Application to Register Coaxial Cable Pattern as a Trademark

In a recent application that demonstrates trademarks are more than just words, logos, and slogans, Megaphase, LLC, a designer and manufacturer of coaxial cables and connectors, filed an application to register the coaxial cable pattern seen below as a trademark with the U.S. Patent and Trademark Office. But will it get a registration on the Principal Register (which affords the most legal benefits)?
The application, filed on September 5th, describes the trademark as "repeating pairs of yellow dashes applied in a spiral pattern along the length of a coaxial cable." The color yellow is claimed as a feature of the mark. The application covers "coaxial cables" in Class 9 and the mark has been in use since May 31, 2015 (according to the application).

Repeating patterns marks can function as trademarks. TMEP 1202.19 ("Repeating-pattern marks are often applied to clothing and fashion accessories, but they also appear on other goods, including furniture, bedding, dinnerware, luggage, paper products, and cleaning implements. In addition, these marks frequently appear on packaging for a variety of goods and have been registered for use in connection with services such as retail stores and travel agencies."). In fact, the USPTO's Trademark Manual of Examining Procedure has an entire section devoted to examples of various repeating pattern marks. TMEP 1202.19(k).

Whether a repeating pattern actually functions as a trademark or is ornamental or decorative depends on the type of pattern, how it is used, industry practice, and several other factors. When determining whether a repeating pattern functions as a trademark or is merely ornamental/decorative matter, the USPTO will consider a variety of factors, including:
  • Whether the pattern is common or widely used (TMEP 1202.19(e)(i)(A));
  • Whether the pattern creates a commercial impression distinct from any wording or other matter that appears on the relevant goods (TMEP 1202.19(e)(i)(B));
  • The nature of the repeating pattern, including whether it contains any arbitrary wording (TMEP 1202.19(e)(i)(C));
  • The industry practice and whether it is common in the industry to use repeated patterns in an ornamental/decorative manner or as trademarks (TMEP 1202.19(e)(i)(D));
  • Whether consumers are used to seeing repeating patterns on the type of product, such that they either view them as ornamental/decorative features or as trademarks (for example, repeating patterns are commonly used on items like clothing, furniture, and pillows, so it would be difficult to argue a pattern is functioning as a trademark when used on those goods) (TMEP 1202.19(e)(i)(E)).
If a repeating pattern mark is inherently distinctive, the USPTO will register it on the Principal Register. However, if the repeating pattern is more common, basic, and/or decorative, the USPTO will refuse to register it as a trademark. If the pattern is capable of functioning as a trademark after obtaining acquired distinctiveness in the marketplace, the USPTO may register it on the Supplemental Register.

According to my quick search, MegaPhase does not own any U.S. trademark registrations for a coaxial cable pattern. However, it did obtain a registration back in 2010 for "the color red-orange, Pantone warm red C, as applied to the entirety of the surface and length of a cable." However, that registration is on the Supplemental Register because color marks can never be inherently distinctive (see TMEP 1202.05(a)) and MegaPhase did not attempt to argue that its use of this color on coaxial cables had acquired distinctiveness such that registration on the Principal Register was proper.

Wednesday, August 29, 2018

An American Idol Amusement Park Attraction? Maybe, According to a Recent Trademark Application

An American Idol-themed amusement park attraction may be in the works, if a recent trademark application is any indication.
On August 24th, FreemantleMedia North America, Inc. (the producer of American Idol) filed an application to register AMERICAN IDOL (in standard characters) as a trademark with the U.S. Patent and Trademark Office. But the services listed in this most recent application aren't for a reality show (they already have a registration covering those services). Instead, Freemantle North America listed the following services in the application:
Entertainment services in the nature of an amusement park attraction, namely, a themed area
An American Idol amusement park attraction? How will that work? Is it a ride? A talent competition? In what amusement park(s) will the attraction be placed? Unfortunately, the application does not provide any additional information related to Freemantle North America's plans.

But such information may come in the near future. Freemantle North America filed the application on an intent-to-use basis, suggesting it is not currently using AMERICAN IDOL as a trademark for these services yet, but has a bona fide intention to do so in the near future. 15 USC 1051(b); TMEP 806.01(b). Before this application can mature into a registration, however, the production company must start rendering the entertainment services listed in the application in interstate commerce and submit sufficient proof of same to the USPTO. See TMEP 1103.

In other words, generally that means the attraction is open and members of the public are traveling across state lines to visit it. When that occurs, Freemantle North America can submit various promotional materials used in the sale or advertising of the attraction to secure its registration for these services (so long as such materials prominently display the AMERICAN IDOL mark). TMEP 1301.04 et seq.

By that point, however, it's likely the theme park will already be announced. So if you're an American Idol fan, keep your eye out for a possible amusement park attraction coming soon.

Tuesday, August 21, 2018

Is GOOD COLD BEER Merely Descriptive of "Beer"?

On August 16th, a brewing company in Georgia filed an application to register GOOD COLD BEER for "Beer" in Class 32 as a trademark with the U.S. Patent and Trademark Office. The brewing company filed the application on an intent-to-use basis, suggesting it is not currently using the phrase as a trademark but has a bona fide intention to do so in the near future. But will it obtain a registration on the Principal Register?
As I've blogged about before, merely descriptive trademarks will be refused registration on the USPTO's Principal Register (which affords the most legal benefits) under Section 2(e)(1) of the Trademark Act unless and until the mark acquires distinctiveness (see Section 2(f) of the Trademark Act). Merely descriptive trademarks describe "an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services." TMEP 1209.01(b). For example, in my blog post linked to above, the USPTO deemed the mark REMOTE DRUG TESTING to be merely descriptive of drug testing services.

In addition, the USPTO will refuse to register, on the Principal or Supplemental Registers, informational phrases or "common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry." In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); TMEP 1202.04(a). The USPTO deems this matter not registerable "because consumers would perceive it as imparting its ordinary meaning and not as serving to identify and distinguish the applicant’s goods or services from those of others and to indicate their source." TMEP 1202.04(a). For example, the term BEST BEER IN AMERICA was deemed "so highly laudatory and descriptive of the qualities of its product that the slogan does not and cannot function as a trademark." In re Boston Beer Co. L.P, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999).

Will GOOD COLD BEER suffer a similar fate? Will it be deemed merely descriptive and therefore appropriate only for registration on the Supplemental Register rather than the Principal? Will it be deemed so highly laudatory and descriptive that it must be refused registration completely? None of the above? We'll find out in approximately three months after this application is assigned to an examining attorney at the USPTO.

Tuesday, August 14, 2018

Samsung Files Applications to Register 8K, QLED 8K as Trademarks

Samsung appears to be gearing up for the launch of its new 8K television line with recent trademark applications filed on August 9th. On that date, the electronics giant filed applications to register a stylized 8K and QLED 8K as trademarks with the U.S. Patent and Trademark Office.
Both applications cover the same goods in Class 9, namely:
Televisions; Digital signage; Digital signage monitors; Monitors for large format displays, namely, liquid crystal display (LCD) monitors, light emitting diode (LED) monitors and plasma monitors; Data processing apparatus for large format display; Large-screen light emitting diode (LED) displays; Panels for large format displays, namely, LCD large format display panels, LED large format display panels, large format display panels and large format display electric panels; Computer software for operating digital signage; Digital signage players, comprised of computers, computer hardware and LCD displays; Digital signage display panels; Television sets; Television receivers; Display panels for television; Monitors for commercial purpose, namely, computer, television, video, and touchscreen monitors
Additionally, Samsung is claiming a priority date of August 3, 2018 under Section 44(d) of the Trademark Act based on similar applications filed in the UK. See TMEP 1003.

But will the USPTO refuse to register these marks as merely descriptive of the television-related goods listed in the application? In general, a merely descriptive mark "describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services." TMEP 1209.01(b). Merely descriptive trademarks cannot be registered on the Principal Register (which affords the most legal rights) until and if such marks become distinctive as applied to the applicant's goods or services in commerce (often referred to as "acquired distinctiveness" or "secondary meaning"). TMEP 1212; 15 USC 1052(f).

The term "4k" refers to a screen resolution of 4,000 pixels, so presumably "8k" refers to a screen resolution of 8,000 pixels. Additionally, "QLED" is short for quantum-dot light-emitting diodes. Are such terms merely descriptive of a quality, characteristic, function, or feature of televisions? We'll find out what the examining attorney assigned to these applications thinks in about three months, but in past trademark applications for marks containing QLED and 4K covering similar goods, Samsung did receive merely descriptive refusals (like this one for QLED TV) or was required to disclaim "4k" because the USPTO deemed it to be a merely descriptive component of the mark.

What about the stylization of 8K and QLED 8K? Does presenting the marks in gold font avoid a merely descriptive refusal? Not necessarily. Generally, "[a]dding  stylization to descriptive or generic wording does not render the resulting mark registrable on the Principal Register unless the stylization creates a commercial impression separate and apart from the impression made by the wording itself, or the applicant can otherwise show by evidence that the particular stylized display has acquired distinctiveness." TMEP 1209.03(w). My guess is that the examining attorney will ignore the slight stylization and focus on the wording.

According to my quick search, Samsung has filed 140 trademark applications with the USPTO in 2018, including two applications filed earlier this year for 8K QLED and 8K HDR ELITE. The application for 8K QLED, filed in January 2018, received an Office action because the USPTO deemed it to be merely descriptive of televisions and because the USPTO believes it is confusingly similar to a registration for QLED owned by LG Electronics (and also due to an issue with the way the goods are described in the application).

Friday, July 27, 2018

Academy of Country Music Files Application to Register Its Award Trophy as a Trademark

Not all trademarks are words or logos, as this recent trademark application filed by the Academy of Country Music demonstrates. On July 23rd, the Academy filed an application to register the design seen below as a trademark with the U.S. Patent and Trademark Office.
The application describes the mark as "a 3-dimensional stylized rendering of an award trophy shaped as a cowboy hat on top." The application claims the Academy has used this design as a trademark in conjunction with the following services in Class 41 since at least as early as May 21, 2003:
Entertainment services, namely, award ceremonies in the field of music; Entertainment in the nature of performances and appearances by celebrities and musical artists and groups; Entertainment services in the nature of live musical performances; Entertainment services, namely, an on-going series featuring an award ceremony honoring those in the country music industry provided through internet, television, satellite, and cable networks
As I've blogged about before, it is possible to obtain trademark protection and a trademark registration for the way something looks, so long as the mark is (1) non-functional and (2) distinctive. TMEP 1202.02TrafFix Devices, Inc. v. Mktg.Displays, Inc., 532 U.S. 23, 28-29 (2001).

Generally, a design is functional if it is "essential to the use or purpose of the article or if it affects the cost of quality of the article." TMEP 1202.02(a)(iii)(A) (quoting TrafFix, 532 U.S. at 33). Additionally, because product designs are never inherently distinctive, an applicant must show that the design has acquired distinctiveness (i.e. consumers have come to recognize the product design as being associated with the applicant). TMEP 1202.02(b)(i).
Interestingly, the Academy of Country Music already owns a registration for the design of its award trophy seen above. That design, which consists of "a 12" tall, 3-dimensional stylized rendering of a cowboy hat in satin silver on a black base" registered on August 31, 2004 and covers "Entertainment services, namely organizing and conducting annual entertainment award ceremonies and television shows" in Class 41. That registration also lists a first use date of May 21, 2003.

Why file a new application for the same design? That's not clear, but if I had to guess, I'd guess (1) to submit a new, sleeker drawing of the trophy and/or (2) to expand the services covered by the registration (one cannot expand the scope of the goods or services listed in a trademark application after filing - see Trademark Rule 2.71(a) and TMEP 1402.06).

Wednesday, July 25, 2018

Recent Trademark Application for LIL MAYO Covers "Personal Appearances by a Fictitious Alien Character"

Just last week I blogged about a recent application to register the name of the popular BOOP MY NOSE Instagram account as a trademark with the U.S. Patent and Trademark Office. A couple days later, another popular Instagram account filed an application to register the account's name as a trademark - LIL MAYO. Is this a new trend?

On July 20th, an individual in California (apparently the individual behind the Instagram account), filed an application to register LIL MAYO as a trademark with the USPTO. The individual filed the application in two classes - 35 and 41 - for the following services:
(35) Endorsement services, namely, promoting the goods and services of others; (41) Entertainment services, namely, personal appearances by a fictitious alien character, Lil Mayo; Fashion modeling for entertainment purposes; Entertainment services in the nature of live visual and audio performances by a fictitious alien character, Lil Mayo
According to the application, LIL MAYO has been used as a trademark in conjunction with these services since April 21, 2015.
A post shared by 👽#LILMAYO👽 (@lilmayo) on
Side note - typically the USPTO does not favor an applicant using its own trademark in the identification of goods and services (LIL MAYO, in this case), so the applicant may be required to delete "LIL MAYO" from the identification of services before this mark can register (assuming there are no other issues). TMEP 1402.09.

Earlier this year, the same individual that filed this application filed another application for LIL MAYO covering "t-shirts." However, the USPTO issued an Office action refusing to register that trademark due to a likelihood of confusion with an existing registration for MAYO owned by the Mayo Foundation for Medical Education and Research that also covers various clothing items, including t-shirts. The applicant will have a chance to respond to the refusal, but has not yet done so.

Additionally, this individual owns a pending application for the alien head logo seen below that covers "hats" and "t-shirts." That application will be published for opposition on August 14, 2018 - the final phase of the registration process for a trademark that is already in use. See TMEP 1502.
As of the date of this post, the Lil Mayo Instagram account is a verified account with 1.8 million followers and consists primarily of photographs and videos of a little alien doing all sorts of wild stuff (as the Instagram post above from the account demonstrates).

Friday, July 20, 2018

Boeing Files Trademark Applications Covering On Demand Air Taxis and Autonomous Cargo Delivery Systems

Are "on demand air taxis" in the works over at The Boeing Company? Maybe, according to recent trademark applications filed at the U.S. Patent and Trademark Office.
On July 16th, The Boeing Company filed two trademark applications covering those services and others - one for the words BOEING NEXT and one for the stylized version seen above. Both applications cover the same services in Class 12, namely:
Autonomous and manned air mobility solutions, including on demand air taxis and autonomous cargo delivery systems
The Boeing Company filed both applications on an intent-to-use basis, suggesting the aviation company is not currently using this name as a trademark in conjunction with the listed services but has a bona fide intention to do so in the near future. TMEP 806.01(b); 15 USC 1051(b).

Will you be able to summon air taxis on demand and have your cargo delivered by drones from Boeing in the near future? Maybe. According to CNBC, Boeing NeXt is a "new internal division set up to tap into the growing market of autonomous flight."

Earlier in July, The Boeing Company filed another application to register THE FUTURE IS BUILT HERE as a trademark for a variety of goods and services, including "autonomous vehicles, drones, unmanned aerial vehicles (UAVs)" and "maintenance, repair, and overhaul of aircraft, spacecraft, autonomous vehicles, drones, and unmanned aerial vehicles (UAVs) and parts therefor."

According to my quick search, The Boeing Company currently owns 255 active trademark applications or registrations with the USPTO.

Tuesday, July 17, 2018

Owner of Popular Instagram Account boopmynose Files Application to Register BOOP MY NOSE as a Trademark

Do you love animals? Do you love booping them on the nose (both physically and virtually)? If so, this trademark application is for you.

On July 12th, Bobiliah LLC, the Florida limited liability company apparently behind www.boopmynose.com and the popular boopmynose Instagram account, filed an application to register BOOP MY NOSE as a trademark with the U.S. Patent and Trademark Office.
A post shared by Boop My Nose ™ (@boopmynose) on

Bobiliah LLC filed in the application in Class 41 for "Providing a website featuring animal photographs for entertainment purposes; providing non-downloadable online videos featuring animals for entertainment purposes; providing animal photographs through social media for entertainment purposes." According to the application, Bobiliah has been using this phrase as a trademark since August 31, 2015.

According to the company's website, Boob My Nose is "the original booping community" and has approximately 600k followers on social media (the most popular account being its Instagram account, which boasts 368k followers). Fans can submit a picture of their pet's face that prominently features the nose (mostly dogs and cats, but there are horses, cows, pigs, and a variety of other animals) and other's can "boop" the nose by double tapping the photographs on Instagram to "like" the photo. A recent post from the boopmynose Instagram account is seen above.

This isn't the first federal trademark application filed by Bobiliah LLC. The company owns five existing trademark registrations - four for the words LEASH YOURSELF and one for a related logo, all covering services related to an online database for finding pets available for adoption.

This isn't the first time I've blogged about a trademark application related to a popular Instagram account. Two years ago, I blogged about an application for #MRSTEALYOURGRANDMA filed by the viral (at the time) Mr. Steal Your Grandma. That trademark substantially registered. Last year, I blogged about the popular Tinkerbelle The Dog and a trademark application for that name. That application is on its way to registration as well.

If you're interested in booping some noses, you know where to go.

Wednesday, July 11, 2018

Is SAKE ICE CREAM Merely Descriptive of, or Generic for, Providing Sake Ice Cream and Ice Cream Parlors?

As a matter of practice, when filing a federal trademark application, I generally try to avoid using the term I'm trying to get registered in the identification of goods/services listed in the application. Such use generally signals that the designation the applicant seeks to register is merely descriptive of the underlying goods/services or, worse, generic for them.

Merely descriptive designations cannot function as trademarks until (and if) they acquire distinctiveness and the U.S. Patent and Trademark Office ("USPTO") will refuse to register merely descriptive designations on the Principal Register under Section 2(e)(1) of the Trademark Act. Generic terms can never function as trademarks and the USPTO will absolutely refuse to register such terms as trademarks.
Take a recent application for SAKE ICE CREAM filed by a New York LLC, for example. This application, filed on July 6th, covers
Catering services; Ice cream parlors; Providing of food and beverages namely sake ice cream for consumption on and off the premises; Provision of food and drink namely sake ice cream in restaurants and liquor stores and exhibition spaces; Services for providing food and drink namely sake ice cream
Is SAKE ICE CREAM merely descriptive of these services? Generic?

The USPTO will deem a mark merely descriptive "if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services." TMEP 1209.01(b). Additionally, "the mark need not describe all the goods and services identified, as long as it merely describes one of them." Id. For example, the mark APPLE PIE was deemed merely descriptive of potpourri that smelled like apple pie. In re Gyulay, 820 F.2d 1216 (Fed. Cir. 1987).

The USPTO will deem a designation generic "if its primary significance to the relevant public is the class or category of goods or services on or in connection with which it is used." TMEP 1209.01(c)(i). The USPTO applies a two part test: (1) what is the genus of goods or services at issue? and (2) does the relevant public understand the designation primarily to refer to that genus of goods or services? For example, the term SCREENWIPE for premoistened antistatic cloths for cleaning computer and television screens was determined to be generic for those goods. In re Gould Paper Corp., 834 F.2d 1017, 1018 (Fed. Cir. 1987).

Is SAKE ICE CREAM merely descriptive of the services of providing sake ice cream? Or is it generic? If the mark sought to be registered was ICE CREAM without "SAKE" in front, would it change your opinion?

The determination is significant - generic terms can never function as trademarks and never be registered, but merely descriptive terms may become trademarks upon a showing of acquired distinctiveness and the USPTO will register such terms (if in use) on the Supplemental Register until (and if) the applicant proves acquires distinctiveness. For more on acquired distinctiveness, see TMEP 1212 et seq.

We'll find out what the examining attorney assigned to this application thinks in approximately three months.

Thursday, June 28, 2018

Applications Filed to Register I REALLY DO CARE Phrases as Trademarks After Melania Trump Wears Controversial Jacket

On her way to visit migrant families in Texas last week, First Lady Melania Trump sported a Zara jacket with the phrase "I really don't care do u?" emblazoned on the back. The choice of apparel ignited a controversy regarding the administration's attitude towards the migrant families. It also prompted many celebrities to respond by printing various "I really do care" phrases on the back of their own jackets and led to at least two federal trademark applications for similar phrases (although they don't appear to be filed by celebrities or major apparel companies).
On June 22, a joint venture in California filed an application to register the words I REALLY DO CARE, DO U? as a trademark for various athletic apparel (see specimen submitted with the application above). Additionally, on June 23, a corporation in Florida filed an application to register I REALLY DO CARE. DON'T U? as a trademark for various apparel (see specimen submitted with application below).
Unfortunately for these applicants, their slogans will likely be refused registration on the basis of ornamentation. Merely decorative subject matter, which does not identify and distinguish an applicant's goods, does not function as a trademark and therefore cannot be registered as one. See TMEP 1202.03. Slogans or phrases used on items such as t-shirts and sweatshirts are routinely refused registration because "purchasers will perceive [them] as conveying a message rather than indicating the source of the goods." TMEP 1202.03(f)(i).

When you see the phrases on the shirts above, do you see a message being conveyed? Or does it tell you the source of the shirt? If you see a message being conveyed, rather than the source of the shirt (i.e., Nike, adidas, Hanes), the use is probably ornamental, not trademark use. We'll see what the examining attorneys assigned to review these applications at the USPTO think in about three months.

Wednesday, June 27, 2018

Anheuser-Busch Files Applications to Register FROSE-A-RITA, BERRY-KIWI-RITA, and Several Other "-RITA's" as Trademarks

The month of June was a busy time for Anheuser-Busch and RITA-themed trademark applications. The beverage giant filed six applications to register various -RITA marks this June (ed. - appropriate summer trademarks, no?) and appears to be expanding this line of products, if these trademark applications are any indication. The application filed this month are for:
Anheuser-Busch filed each application in Class 32 for "flavored beer." The applications were filed on an intent-to-use basis, suggesting Anheuser-Busch is not currently using these trademarks with flavored beer but has a bona fide intention to do so in the near future. TMEP 806.01(b); 15 USC 1052(b). Before these applications can register, Anheuser-Busch must start using these trademarks in conjunction with the sale of flavored beer and submit sufficient proof of same to the U.S. Patent and Trademark Office, like it did for an application it filed in 2016 for BUD LIGHT LIME COCO-NUT-RITA SPLASH (see image to the right for the evidence filed).

In December 2016, I blogged about Anheuser-Busch's application for GRAPE-A-RITA, which has since registered. Back in August and September 2016, the beverage company filed trademark applications for BUD LIGHT LIME COCO-NUT-RITA SPLASH, BUD LIGHT LIME PINE-APPLE-RITA SPLASH, BUD LIGHT LIME PEACH-A-RITA, and BUD LIGHT LIME ORANGE-A-RITA. All those applications, except BUD LIGHT LIME COCO-NUT-RITA, were abandoned because Anheuser-Busch did not submit proof it was using those trademarks by the deadline to do so. However, Anheuser-Busch refiled similar marks without "Bud Light Lime" in front and obtained registrations for those (like PEACH-A-RITA and ORANGE-A-RITA).

According to my quick search, Anheuser-Busch currently owns 463 active trademark applications or registrations with the U.S. Patent and Trademark Office. And yes, a registration for DILLY DILLY covering "beer" is one of them.

Wednesday, June 6, 2018

Bacardi Files Application to Register Grey Goose Bottle Design as a Trademark

Recognize the source of the bottle below? If so, it might be functioning as a trademark, which is exactly what Bacardi is banking on given its recent federal trademark application for this bottle design.
On June 1st, Bacardi & Company Limited filed an application with the U.S. Patent and Trademark Office to register the design above as a trademark. Bacardi filed the application in Class 33 for "alcoholic beverages except beers" and described the mark as
a bottle with a narrow neck which has a blue and white neck label with white geese imprinted on a blue band on the bottom of the neck label. Centered on the front of the bottle is a silhouette of a large goose and several smaller geese behind and in front of the larger goose. These geese appear to be flying over a mountainous lake design which is generally blue with some white for shading purposes. There is a flock of white flying geese above the lake. Below the mark is a rectangle comprising a blue portion on the left, a red portion on the right, and a white portion in the middle.
Can product designs or packaging function as trademarks? Yes, if they are (1) non-functional and (2) distinctive. TMEP 1202.02. In other words, the product design or packaging must not be essential to the use or purpose of the article or affect the cost or quality of it (i.e., non-functional) and, by its intrinsic nature, serve to identify a particular source (i.e., it is distinctive). See TMEP 1202.02(a)(iii)(A) and TMEP 1202.02(b)(i).

Bacardi has had success registering bottle designs as trademarks in the past. For example, it owns a registration for the Grey Goose Le Melon bottle design and the Dewar's White Label bottle design, among others.

In this case, however, Bacardi may need to clarify some things before it can obtain a registration. For example, is the Grey Goose design Bacardi seeks to register for a two-dimensional depiction of the bottle or for a three-dimensional bottle design? The USPTO asked Bacardi the same thing in an application Bacardi filed for a Bacardi rum bottle back in December 2017. Specifically, in that case the USPTO asked Bacardi to indicate whether the application was for a three-dimensional configuration of the goods or packaging or a specific design feature of the goods or packaging. Because the mark description for the Grey Goose bottle does not specify whether it is for a three-dimensional configuration, Bacardi may need to indicate as much again.

According to my quick search, Bacardi & Company owns 197 active trademark applications or registrations with the USPTO, several of which are for bottle designs and/or bottle configurations (like this one for the Grey Goose VX bottle).

Tuesday, May 29, 2018

Kid Rock Files Applications to Register KID ROCK'S REDNECK RYE, KID ROCK'S REDNECK WHISKEY as Trademarks

Kid Rock might not actually be running for Senate (despite filing an application to register KID ROCK FOR SENATE as a trademark last year), but he may actually be expanding his line of alcoholic beverages, if recent trademark applications are any indication. On May 24th, Robert J. Ritchie (aka Kid Rock) filed applications to register KID ROCK'S REDNECK RYE and KID ROCK'S REDNECK WHISKEY as trademarks with the U.S. Patent and Trademark Office.
Not surprisingly, each application covers "distilled spirits" in Class 33. The rocker filed each application on an intent-to-use basis, suggesting he is not currently using these trademarks to sell distilled spirits 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, Kid Rock must actually start using these designations as trademarks and submit sufficient proof of same to the USPTO.

Before that can happen, however, Kid Rock might need to deal with a couple issues. One is that the USPTO is likely to require Robert Ritchie to submit his written consent to the use and registration of a trademark containing KID ROCK. Such consent is required because Section 2(c) of the Trademark Act prohibits the registration of any name, portrait, or signature that identifies a particular living individual without that individual's written consent. 15 USC 1052(c). That prohibition applies not only to full names, but also to "first names, surnames, shortened names, pseudonyms, stage names, titles, or nicknames, if there is evidence that the name identifies a specific living individual who is publicly connected with the business in which the mark is used, or who is so well known that such a connection would be assumed." TMEP 1206.01. The USPTO initially refused to register the KID ROCK FOR SENATE application, for example, in part because this written consent was not submitted (and still hasn't been).

Another potential issue is a rejection of this application based on a likelihood of confusion with existing KID ROCK trademark registrations. This is not an issue if similar trademarks are owned by the same party, but in Kid Rock's case, Top Dog Records, Inc. owns some KID ROCK trademark applications and registrations (including a pending application for KID ROCK'S MADE IN DETROIT covering "restaurant and bar services"). Because the whiskey and rye applications are in Robert J. Ritchie's name personally, and other KID ROCK applications/registrations are in a record company's name, the trademarks are owned by two different owners (in the USPTO's eyes), which requires (under Section 2(d) of the Trademark Act) the USPTO to refuse to register the latter filed applications in light of the existing applications or registrations, if the latter filed applications are deemed to be confusingly similar to the existing applications and registrations. For example, the KID ROCK FOR SENATE application (which covered apparel and was in Robert J. Ritchie's name) was initially refused registration because of a perceived likelihood of confusion with an existing registration for KID ROCK, owned by Top Dog Records, Inc., that also covered apparel.

These are not the first alcohol-related trademark applications filed by Robert J. Ritchie. The rocker currently owns registrations for AMERICAN BADASS BEER COMPANY (and a logo), BADASS BEER, BADASS, and an eagle design, all covering "beer."

Wednesday, May 16, 2018

Epic Games Files Applications to Register Every Location in Fortnite as a Trademark

Your favorite spot to drop in Fortnite? It's now the subject of a federal trademark application.
On Friday, May 11th, Epic Games, Inc. filed applications to register every location in Fortnite (all 21 of them) as a trademark with the U.S. Patent and Trademark Office. Links to each application are below:
Epic Games filed each application (with the exception of LUCKY LANDING, which was not filed in Class 41, maybe by mistake) in the same three classes for the same goods and services:
  • Class 9 - Video game software
  • Class 25 -  Hats; Headwear; Hooded pullovers; Hooded sweatshirts; T-shirts
  • Class 41 - Entertainment services, namely, providing on-line computer games; Entertainment services, namely, providing online video games
Each application was filed on an intent-to-use basis, meaning Epic Games will need to submit evidence that they are using these names as trademarks for the listed goods and services before a registration can be issued. TMEP 806.01(b); 15 USC 1051(b). For example, Epic Games submitted the screenshot above with its application for the name FORTNITE covering "Entertainment services, namely, providing on-line computer games," which registered earlier this year.

A federal trademark registration comes with a number of benefits, one of the main ones being that it gives the owner the presumption of the exclusive right to use the trademark nationwide (as opposed to within a limited geographic area, which is typically the case with an unregistered trademark). It can also streamline the process of filing similar trademark applications in foreign countries and gives the owner the right to use the little (r) symbol (unregistered trademarks can only use the small (tm)).

According to my quick search, these are the first trademark applications for the locations in Fortnite filed by Epic Games. The gaming company also owns pending applications for VICTORY ROYALE and SLURP JUICE, filed back in February, covering the same goods and services.

Tuesday, May 8, 2018

Is Jimmy Buffett's Margaritaville Getting into the Marijuana Business? Recent Trademark Applications for IT'S 4:20 SOMEWHERE and CORAL REEFER Say Maybe

It's 5:00 somewhere? Not anymore. 4:20 is the new 5:00, at least according to recent trademark applications filed by the entity operating the Jimmy Buffett's Margaritaville restaurants and resorts.
On May 3rd, Margaritaville Enterprises, LLC, founded by Jimmy Buffett, filed twelve federal trademark applications with the USPTO covering what appears to be a variety of marijuana-focused goods and services. The applications are for two phrases - IT'S 4:20 SOMEWHERE and CORAL REEFER. Margaritaville Enterprises filed each phrase in six different classes of goods and services each, rather than listing the six classes in a single application (hence the twelve applications). Applicants often do this to prevent an issue in one class from holding up all the other classes (which is what would happen if all the classes were listed in a single application).

The goods and services covered by the IT'S 4:20 SOMEWHERE and CORAL REEFER applications are, for the most part, the same and include:
Margaritaville Enterprises filed each application on an intent-to-use basis, suggesting it is not currently using these phrases as trademarks for the listed goods/services 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 phrases must actually be used as trademarks for the listed goods/services and sufficient evidence of that use must be submitted to the USPTO. TMEP 902.

Notice that Margaritaville Enterprises did not list "marijuana" as one of the goods in its applications. That is because the sale of marijuana is illegal at the federal level. The USPTO will refuse to register any trademark for the sale of marijuana because that sale violates federal law, and a trademark must be in lawful use in commerce for the USPTO to register it. I blogged about this issue before here.

So is Jimmy Buffett's Margaritaville moving into the marijuana business? Will you be able to get marijuana as easy as margaritas at the Margaritaville restaurants and resorts in the near future? You be the judge (and pay attention to these applications to find out).

According to my quick search, Margaritaville Enterprises, LLC owns 432 active trademark applications or registrations with the USPTO, including several registrations for MARGARITAVILLE, like this one from 1995.

Monday, May 7, 2018

Applications Filed to Register FISH-AS-A-SERVICE, FAAS as Trademarks for Underwater Drone Rental

You've heard of software as a service (SaaS), but fish-as-a-service (FaaS)? Probably not. That name, and the acronym, are the subjects of two recent federal trademark applications.
On May 2nd, a California partnership called Aquaai Corporation filed the FISH-AS-A-SERVICE and FAAS trademark applications with the U.S. Patent and Trademark Office. Both applications cover the "rental of underwater drones" in Class 41 and indicate the trademarks have been in use since April 18, 2018.

According to Aquaai's website and the specimen submitted with the trademark applications (seen above), the company rents biometric fishlike drones to collect data underwater. The company's mission is to "save the seas by providing intelligence under the surface."

What happens to the trademark applications next? In about three months, the applications will be assigned in an examining attorney at the USPTO, who will review the application to make sure it meets all the statutory requirements for registration. See TMEP 704.01; 37 CFR 2.61(a). If there are any issues, the examining attorney will notify the applicant, who will be given six months to respond. TMEP 705 et seq. For example, a refusal to register the mark will be made is a confusingly similar trademark is already on file with the USPTO. TMEP 1207; 15 USC 1052(d).

If the applications make it through the examination process, or any issues raised during the examination process are resolved, the application will be published for thirty days in the USPTO's Official Gazette. TMEP 1502; 15 USC 1062. During that time period, any third party that believes it would be damaged by the registration of the trademark is entitled to oppose its registration. If an opposition is filed, it triggers a lawsuit-like proceeding in front of the Trademark Trial and Appeal Board. TMEP 1503.01 et seq. If no opposition is filed, the applications should mature into registrations about eleven weeks after the initial publication date. In total, a trademark application without any issues in the examination phase takes about nine to twelve months to register.