Today's Tip For Saving Your Trademark Filing Fee - Avoid Decorative Use on Clothing

A very common mistake made by pro se applicants (and some attorneys too) relates to trademark filings for clothing. There is a misunderstanding that if one comes up with a unique or catchy phrase and puts it on a t-shirt or hat, it can be protected with a trademark registration. This is not usually the case.

A trademark, by definition, is a source identifier. That means when a customer sees a trademark, they automatically know from where that product or service comes. When you see the Nike swoosh on a shirt, you immediately know where that shirt comes from and the level of its quality. The same goes when you see the Starbucks logo on a bag of coffee. Thus, a trademark is more than just a catchy word or phrase - it identifies the source of a particular product or service.

When you see the phrase on the shirt below, does "High Maintenance Redneck" strike you as the company behind the shirt? Or does it strike you as a catchy, decorative phrase that is supposed to refer the wearer?

The phrase above, like most phrases plastered across the front of t-shirts, is a decorative feature and does not function as a trademark. Section 1202.03 of the Trademark Manual of Examining Procedure (TMEP) provides more insight - "[s]ubject matter that is merely a decorative feature does not identify and distinguish the applicant’s goods and, thus, does not function as a trademark. A decorative feature may include words, designs, slogans, or trade dress."

In determining whether a phrase or design on clothing functions as a trademark or is merely decorative, the Trademark Office will consider "the size, location, and dominance of the proposed mark, as applied to the goods." TMEP 1202.03(a). Specific to slogans or phrases on shirts, the Trademark Office has stated "[s]logans 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." TMEP 1202.03(f)(i).

Thus, the applicant's HIGH MAINTENANCE REDNECK application filed on August 14th will receive an office action refusing to register the trademark because, as it is pictured in the applicant's specimen above, it is being used in a decorative manner and not as a trademark. 

How do you protect a phrase or slogan on clothing? The best practice is place it on your clothing where you would typically see a trademark for a clothing company. The tag of the shirt is a great place to start. Small, discrete logos on the breast pocket or sleeve usually work as well. Whatever you do, don't rely on a slogan plastered across the front like the applicant above.

Donald Trump Files TRUMP Trademark to Protect Campaign Materials

The 2016 presidential campaign trail is heating up and Donald Trump has been front and center. On August 13th, he filed a federal trademark application for TRUMP across seven different classes covering a variety of campaign materials (the $1,925.00 filing fee is nothing to him!).

Among the items Trump sought to protect with this trademark filing are bumper stickers and decals, placards, pamphlets, advertising signs, various clothing items, and campaign buttons. He also sought to protect the use of TRUMP as it relates to fundraising for campaign services, political campaign services, and online social networking services in the field of politics and political campaigns.

How do we know the real Donald Trump is behind this trademark filing? Section 2(c) of the Trademark Act prohibits the registration of a trademark containing the name, portrait, or signature of a living individual without that individual's written consent (see also TMEP 813). Thus, Trump's written consent must be filed with the application above (we've seen this before with Kris Jenner). For those interested in seeing Trump's signature, you can view it here.

For those of you Trump fans planning to market your own TRUMP-related campaign materials, think again. If this application registers in approximately 9-12 months (just in time for the election), Trump will secure the exclusive, nationwide right to use TRUMP on the materials listed in the registration.

Trump also filed two different federal trademark applications for his slogan MAKE AMERICA GREAT AGAIN on August 13th related to similar campaign materials.

New Shows Coming From The Cooking Channel?

On August 11th, the Cooking Channel, LLC filed seven federal trademark applications for what appears to be a potential line of new shows. All the applications list services related to a continuing program about food and cooking.

The trademark applications (and possible shows) filed by the Cooking Channel are:

• Big Bad BBQ Battle;
• Big Bad BBQ Brawl (apparently they haven't decided which name to use yet);
• Star Plates;
• Cake Hunters;
• Family Meals;
• Caked; and
• Sugar Showdown.

The Cooking Channel filed all of these applications on an intent-to-use basis, which means they are not using the trademarks in commerce yet but plan to do so soon. Expect to see one or more of these shows on the air within the next year.

HBO Files Trademarks for Look and Sound of its Iconic Opening and Closing Clips

On August 10th, Home Box Office, Inc. filed federal trademark applications to protect the look and sound of its opening and closing clips. Any fan of [insert your favorite HBO show] can recite the iconic static sounds and chords of HBO's opening and closing credits (for those who don't watch HBO, listen here). The trademarks HBO filed are for HBO ENTERTAINMENT (the opening clip) and THIS HAS BEEN A PRESENTATION OF HOME BOX OFFICE (the closing clip).

HBO filed two trademarks for both HBO ENTERTAINMENT and THIS HAS BEEN A PRESENTATION OF HOME BOX OFFICE. Both applications are related to HBO's entertainment services in the nature of ongoing television programs, but HBO filed two applications each to protect the sound element and the motion element of the clips. For example, HBO described the mark on one motion element application as follows:

[t]he mark consists of a motion mark depicting a television screen of static "snow" out of which emerges the HBO ENTERTAINMENT logo appearing, and then the static snow fades out and the HBO ENTERTAINMENT logo morphs to sharp lettering appearing against the background before the wording fades out.

and on one sound element application as

[t]he mark consists of a composite motion and sound mark depicting a television screen of static "snow" out of which emerges the HBO ENTERTAINMENT logo, and then the static snow fades out and the HBO ENTERTAINMENT logo morphs to sharp lettering appearing against the background before the wording fades out. Simultaneously with the fading in and out portion of the visual component, the sound element is the sound of static "turning on" and then fading out as it resolves to an ascending choir-like bass chord. 

It is a subtle difference, but it gives HBO the most protection over the look and sound of its opening and closing slips.

HBO's filings highlight the fact that trademarks do not take the form of a words and slogans only. Both sounds and motions can serve as trademarks if they identify the source of the good or service. The Trademark Manual Of Examining Procedure (TMEP) section 1202.15 provides "[s]ound marks function as source indicators when they 'assume a definitive shape or arrangement' and 'create in the hearer’s mind an association of the sound' with a good or service." Additionally, under TMEP 904.03(l) an applicant may support an application for a motion mark by filing up to five freeze frames showing the commercial impression conveyed by the mark.

In other words, don't assume something is not functioning as a trademark simply because it is not a textual.

THE GODFATHER Christmas Ornament Trademark Filed

For all those fans of The Godfather who also dreamed of becoming a Christmas ornament tycoon, you are now out of luck (although you probably couldn't have sold "The Godfather" ornaments before this application without receiving a cease and desist).

On August 7th, Paramount Pictures Corporation filed a federal trademark application for THE GODFATHER as it relates to "Christmas tree ornaments[.]"

Paramount Pictures first started using THE GODFATHER on Christmas tree ornaments on July 15, 2015 and submitted the above screenshot as proof.

With Christmas quickly approaching, here is a classic gift idea for the Godfather fan in your life. But seriously - will people actually pay $17.95 to hang a Godfather ornament on their tree?

Today's Tip for Saving Your Trademark Filing Fee - Don't File a Trademark That Sounds Like Another

Say "Wheaties." Now say "Weedies." Without knowing the spelling, could you tell the difference? Probably not.

One of the most common reasons the United States Patent and Trademark Office (USPTO) refuses to register a trademark is because an applicant files a mark that is likely to cause confusion with a mark that has already been registered for similar goods or services.

There are many factors that the USPTO uses to determine if there is a "likelihood of confusion" between an existing mark and a mark sought to be registered (see TMEP 1207 et seq.), but, in general, a likelihood of confusion exists when one uses the same or similar mark that another is already using and uses it on goods or services related to those sold by the senior user.

This standard means that the two trademarks do not need to be exactly the same or used on the same goods or services to trigger a likelihood of confusion refusal by the USPTO.

For example, the similarity between how two trademarks are pronounced, even if they are spelled completely different, can still cause a likelihood of confusion refusal. Unfortunately for the applicant that filed WEEDIES for "[b]reakfast cereals" on August 7th, this means his application is doomed and his filing fee lost.

Since these two marks are phonetically equivalent, and the applicant for WEEDIES filed in the exact same class and for the exact same goods contained in General Mills' Wheaties registration (which has been using the term on breakfast cereals since 1924, by the way), this application will be receiving an office action refusing to register WEEDIES when it is assigned to an examining attorney at the USPTO in approximately three months. The applicant's $225 filing fee is almost certainly lost.

How do you reduce the risk of a likelihood of confusion refusal from the USPTO? Work with a trademark attorney who can conduct a proper search and identify any possible conflicting marks before you file your application. Otherwise, your nonrefundable filing fee is in jeopardy.

United States Olympic Committee Files Trademark to Protect...Cowbells?

On August 6th, the United States Olympic Committee's Office of the General Counsel filed a federal trademark application for TEAM USA as it relates to "percussion instruments, namely, cowbells[.]" The Committee claims to have used the TEAM USA trademark on cowbells since December 31, 2009.

These cowbells, pictured above, must hold special importance to the U.S. Olympic Committee. If the Committee is successful in obtaining this registration, it will effectively prohibit any other individual or entity from selling a "Team USA" cowbell. Thus, this registration will be a useful enforcement tool at future Olympic events. When you purchase your next Team USA cowbell, make sure it is officially licensed!