Now We Have DOLLAR TAPE CLUB....

Recently, I blogged about a trademark filing for DOLLAR TOOTHBRUSH CLUB for a subscription based toothbrush service. Only a couple days later on, November 2nd, a couple guys in Florida filed a federal trademark application for DOLLAR TAPE CLUB as it relates to "[s]ubscription-based order fulfillment services in the field of Hockey sporting goods, namely, adhesive tape for hockey stick and uniform support, as well as skate laces, stick tape, hockey pucks and stick wax[.]"

As mentioned in my previous post on DOLLAR TOOTHBRUSH CLUB, the Dollar Beard Club trademark application received an office action for being confusingly similar to the previously filed Dollar Shave Club trademark. I mentioned DOLLAR TOOTHBRUSH CLUB may suffer a similar fate if the Trademark Office thinks toothbrushes are related to shave products.

In the case of DOLLAR TAPE CLUB, hockey products are probably so unrelated to toothbrush and shave products that this application will not receive an office action for being confusingly similar. However, this application will get an office action because the specimen (shown above) does not match the mark filed (DOLLAR TAPE CLUB). If the specimen does not show the applied for mark being used on the goods, there is no evidence that the mark is being used in commerce. TMEP 904.07(a). However, if the applicant submits a better picture of the above specimen showing "Dollar Tape Club" rather than DSC, they can easily overcome this office action.

On an unrelated note - what a great idea. As a former hockey player, maintaining a supply of hockey tape, wax, and laces was always a task. This could be a hit in the hockey market.

HAVANA AIR Providing Private Flights to Cuba

On August 28th, a company in Miami, Florida called ViajeHoy, LLC filed a federal trademark application for HAVANA AIR as it relates to "[a]irline and shipping services; transportation services; arranging travel tours; rental of cars; travel agency services; airplane chartering; import and export cargo handling services[.]"

The company appears to be capitalizing on the newly established relations between the United States and Cuba, although the trademark application indicates this company has been using the mark HAVANA AIR since February 28, 2013.

According to the company's website, HAVANA AIR looks to provide private flights to Cuba from Miami, among other services.

With this filing, ViajeHoy, LLC seeks to become the only company legally permitted to use HAVANA AIR on airline services (as well as the other services listed in the application).

MGM Resorts Files Trademarks for Concert/Sports Venues

On August 27th, MGM Resorts International, Inc. filed two federal trademark applications related to "[p]roviding general purpose venues for sports and concerts[.]" The marks are LAS VEGAS VILLAGE and LAS VEGAS FESTIVAL GROUNDS.

MGM filed both these applications on an intent-to-use basis, meaning the company is not yet using these marks in commerce but has a bona fide intention to do so in the near future.

According to MGM's website, it appears the company is already operating "MGM Village" and "MGM Festival Grounds." Thus, it looks like the company is seeking to change the name of these venues.

In some instances, a new trademark may be "tacked" onto an old trademark, giving the new trademark priority that relates back to the first use of the old trademark (for example, MGM could have obtained priority in LAS VEGAS VILLAGE relating back to the first use of MGM VILLAGE). However, tacking only works when the new trademark is the legal equivalent of the old one (i.e. exactly the same or almost exactly the same) and the underlying goods or services are the same or substantially the same.

In MGM's case, "Las Vegas" is not the legal equivalent of "MGM" and thus tacking cannot be used (even though the underlying services are exactly the same).

For trademark owners, this demonstrates an important consideration - choose your trademark carefully. If you decide to change your name down the road, chances are you will need to file another trademark application if you wish to give yourself nationwide rights in the new name.

Apple Files Trademark For "Activity" App Logo Days Before September Special Event

On August 26th, Apple, Inc. filed a federal trademark application for the app logo below as it relates to

computer software for tracking, storing, viewing, monitoring, displaying, transmitting and managing user interaction data concerning exercise, physical activity, steps taken, distance walked or run, time standing or sitting, calories consumed, calories burned; computer software for tracking, monitoring and managing information and goals regarding a heath and fitness program; computer software for mobile telephones and mobile digital electronic devices[.]

The filing comes exactly two weeks before Apple's September 9th Special Event in which the company is expected to release a new iPhone 6S and iPhone 6S Plus along with a new, sleeker version of Apple TV. Apple submitted the screenshot below as proof of the application's use in commerce.

The application states Apple has been using this app logo since April 24, 2015 (which is exactly the date Apple Watch released) but I could not find it in the App Store for the iPhone. However, it does appear that this app is already being used on the Apple Watch. I also found at least one article reporting that this app appears on your phone after you connect it with an Apple Watch.

Given the timing of Apple's recent filing, and the language in the trademark application related to "computer software for mobile telephones," I would not be surprised if this new Activity App received some attention at the company's September 9th Special Event.

Tipsy Trademark For Alcoholic Pies Filed

On August 23rd, a Minnesota company called Rustic Pies of Stillwater, LLC filed a federal trademark application for SARA'S TIPSY PIES as it relates to pies and toppings that contain alcohol. Yes, this is real.

According to the applicant's website, Sara makes her pies from scratch using real hand-rolled crusts, the highest-quality, local ingredients possible, and her secret ingredient: LOCAL ALCOHOL. Genius.

The trademark application indicates Sara has been selling the alcohol infused pies since August 2012 and just started selling the toppings in July 2015. 

For those pie [and alcohol] fans out there, you will need to travel to Oak Park Heights, Minnesota to indulge in this delicacy. According to her website, the pies are available for pick-up only.

Alanis Morissette Files Trademark For New Logo, Could be Making a Comeback

On August 21st, Alanis Morissette filed a federal trademark application for ALANIS MORISSETTE and design shown below.

The goods and services listed on the trademark application are

Entertainment services, providing a website featuring multi-media content and information in the field of music and entertainment; providing a website featuring multi-media content and information in the fields of art, wellness, news and current events; musical sound recordings; audio and video recordings; books, publications, art prints, posters, stickers, paper and printed goods, clothing, shirts, headwear, promotional merchandise, communication and broadcasting services, television and radio, podcasts, online services

The move came only a couple days before the singer appeared on stage with Taylor Swift at the Staples Center in Los Angeles. Alanis also filed this application exactly two months before the 20th anniversary of her Jagged Little Pill album. The application was filed on an intent-to-use basis, which means this trademark is not being used yet but that Alanis has a bona fide intention to use it soon.

There is one problem with this application, however. Alanis's attorney did not secure her written consent to register a trademark bearing her name pursuant to Section 2(c) of the Trademark Act (see also TMEP 1206). Her attorney will need to go back to Alanis and secure that written consent if this mark is to register. The Trademark Office will issue an office action refusing to register the mark if this consent is not obtained.

Regardless, does this new logo and Alanis's recent publicity signal a comeback for the singer? Nineties fans can only hope.

NANF*CKET Trademark Clever But Entirely Unregisterable

On August 20th, a man from Nantucket filed a federal trademark application for NANFUCKET as it relates to "Hats; Hooded sweatshirts; Shorts; Sweatpants; Sweatshirts; Swimwear; T-shirts; Underwear[.]"

Unfortunately for this guy, the Trademark Office will not register a trademark containing the word "fuck" because it considers the word obscene and egregiously scandalous (I previously blogged about this bar to registration here) and under Section 2(a) of the Trademark Act, the Trademark Office is prohibited from registering any mark containing "immoral, deceptive, or scandalous matter." 

Other clever trademarks that died in the Trademark Office for containing the term include: PUCKFITTSBURGH, CHUCKLEFCK, F CK TERRORISTS, and GO FUCK YOUR #SELFIE. Ha!

Not only will this application be refused under Section 2(a) for being scandalous, but the applicant appears to be only using his term as decorative, ornamental use and not as a trademark given the specimen submitted above. As previously blogged about here, a slogan plastered across the front of clothing rarely functions as a trademark and causes issues in the registration process.

Any trademark attorney could have quickly identified these issues for the applicant, but unfortunately he did not appear to work with an attorney. This filing will almost certainly result in the loss of the applicant's $225 nonrefundable filing fee.

Today's Trademark Tip - Your Specimen Should Show Your Trademark In Commerce

On August 18th an individual submitted the specimen below in conjunction with a trademark application for "cookies."

This specimen, however, is a "computer graphic that merely illustrates what the mark looks like..." and thus is not sufficient. A better specimen is a picture of this logo on the actual packaging for the cookies.

Too often I see trademark applications filed with a specimen that does not actually show the mark as it is used in commerce.

To provide some background, there are two instances where the trademark will show up on an application (assuming it is based on previous use): as the "drawing" in the "Mark Information" section and attached as a "specimen" in the "Filing Basis" section.

The drawing "shows the mark sought to be registered" and "is used to reproduce the mark in the Trademark Official Gazette and on the registration certificate." TMEP 807. For a word mark, the Trademark Office will generate the trademark in all capital, standard text letters as the drawing. The drawing for a logo mark should be a clear logo showing only the mark to be registered.

A specimen, on the other hand, "show[s] the manner in which the mark is seen by the public." TMEP 904. In general, a specimen for goods should show use of the mark in commerce on or in connection with the goods listed in the application. For goods, an appropriate trademark specimen "should be a label, tag, or container for the goods, or a display associated with the goods." TMEP 904.03. 

An inappropriate specimen is "a 'picture' of the mark, such as an artist’s drawing, a printer’s proof, a computer graphic that merely illustrates what the mark looks like, or an image of the goods that has been digitally created or altered to include the mark" because these items do not show actual use of the mark in commerce. TMEP 904.04(a).

Not submitting an appropriate specimen will result in the Trademark Office issuing an office action asking the applicant to submit a substitute specimen. However, the substitute must be a "verified substitute specimen," meaning it was being used on the goods at least as early as the first use date listed. If the applicant does not have a suitable specimen that fits this criteria, the application can be amended to an intent-to-use application (something anything else risks committing fraud on the Trademark Office).

The bottom line - make sure the specimen submitted with your trademark application depicts how your customers will actually see your trademark in commerce.

CHORIZO DOG: Delicious But Descriptive?

On July 11th, Carmelita Provision Company, Inc. filed a trademark application for CHORIZO DOG as it relates to "[p]reserved meats and sausages."

Unfortunately, Section 2(e)(1) of the Trademark Act (15 USC 1052(e)(1)) prevents registration on the principal register of marks that "when used on or in connection with the goods of the applicant is merely descriptive..." Section 1209.01(b) of the Trademark Manual of Examining Procedure (TMEP) provides further that "[a] mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services."

Does CHORIZO (a meat) DOG (common way to refer to preserved meats) describe an ingredient or characteristic of preserved meats and sausages? I think so. Sometimes this bar to registration can be overcome by a showing of "acquired distinctiveness" (meaning the applicant has been using the mark so long that customers have started to view the mark as a trademark rather than a descriptive term), but Carmelita cited a "first use" date of only July 11, 2015. I have a feel the examining attorney will issue an office action refusing to register this mark because it is merely descriptive (although the applicant may amend to the supplemental register).

On a side note, Carmelita's specimen (below) does not match the drawing (above) or show the proposed mark being used in commerce. According to 37 CFR 2.51(a) and TMEP 807.12(a), a "drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods/services, as shown by the specimen." Carmelita will need to address this issue as well. It is noteworthy to mention that Carmelita did not appear to enlist the help of an attorney to file this application (which may have prevented these issues).

Trademark for New Home of Atlanta Braves Filed

Major League Baseball® hosted the 2015 All-Star Game® in my city of Cincinnati last night, so in honor of that event today's post is baseball themed.

On July 9th, SunTrust Banks, Inc. filed a trademark application for SUNTRUST PARK as it relates to "[s]tadium facility services, namely, providing stadium facilities for the presentation of entertainment events, namely, sports events, musical concerts and variety shows[.]" This application seeks legal protection for the name of the Atlanta Braves' new stadium, which is currently under construction (and looks pretty cool). The Braves are set to start playing in this stadium in 2017. 

Interestingly, despite the stadium being under construction and not yet open, SunTrust Banks filed this trademark under a 1(a) basis, meaning it claims to be using this mark in commerce already. The date of first use is listed as September 16, 2014.

Section 45 of the Trademark Act, 15 U.S.C. 1127, states that a service mark is used in commerce when "it is used or displayed in the sale or advertising of services and the services are rendered in commerce..." Are the services listed in SunTrust Banks' application being rendered here? 

Section 1301.03(a) of the Trademark Manual of Examining Procedure provides examples of when a service mark is being used in commerce and generally states that an announcement of a future service is not sufficient to constitute use of the mark in commerce. For example, in In re Cedar Point, Inc., 220 USPQ 533 (TTAB 1983) the TTAB held that the advertising of a marine entertainment park, which was not yet open, was not a valid basis for registration.

What do you think? Will SunTrust Banks need to amend this application to an "intent to use" basis until the new stadium is finished?