Tuesday, July 9, 2019

Toy Company WowWee Files Application to Register BOTTLE CAP CHALLENGE as a Trademark

Have you heard of the viral Bottle Cap Challenge making its rounds on social media in recent weeks? The challenge involves normal people (and celebrities) unscrewing a bottle cap with a round house kick. Exciting, huh?
One company, however, is trying to register the phrase as a federal trademark. On July 4, Hong Kong-based toy company WowWee filed an application to register BOTTLE CAP CHALLENGE as a trademark with the U.S. Patent and Trademark Office. The application covers "Games, toys and playthings" in Class 28. WowWee filed the application on an intent-to-use basis. TMEP 806.01(b); 15 USC 1051(b).

Does this mean WowWee can prevent others from using the term BOTTLE CAP CHALLENGE? No.

For starters, the vast majority of those using "Bottle Cap Challenge" are not using it as a trademark (i.e., to identify the source of goods or services). They are only using it as the name of a particular viral challenge. And this fact may make it harder for WowWee to register it as a trademark. See TMEP 1202.04(b) ("The more commonly a term or phrase is used in everyday speech or in an associational or affinitive manner by various sources, the less likely consumers will perceive the matter as a trademark or service mark for any goods and services.").

Further, WowWee's trademark application only covers "Games, toys and playthings." If this application actually registers, WowWee's trademark rights are limited to those goods and anything related to them. Selling unrelated goods or offering unrelated services under the same mark will not infringe the toy company's trademark rights.

And finally, because the trademark application was filed on an intent-to-use basis, WowWee must actually start using BOTTLE CAP CHALLENGE as a trademark for "Games, toys and playthings" and submit sufficient proof of such use to the USPTO before this mark can be registered. See TMEP 1103. If they never start selling toys under this trademark, the application will eventually go dead and the mark won't register.

According to my quick search, this is the first and only federal trademark application for BOTTLE CAP CHALLENGE pending with the USPTO.

My best guess as to why the toy company filed this application? They probably want to market some type of toy or game based on the Bottle Cap Challenge.