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 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.