University of Houston Files Trademark Applications for HOUSTON LAW, HOUSTON LAW REVIEW Following Lawsuit Against Houston College of Law

Earlier this year, the South Texas College of Law changed its name to the Houston College of Law, prompting a lawsuit from the University of Houston, which operates the University of Houston Law Center less than 4 miles away. Not only did the South Texas College of Law change its name to something similar to the University of Houston's well-established law school, but it also adopted a similar color scheme.

On July 11th, the University of Houston filed federal trademark applications for HOUSTON LAW and HOUSTON LAW REVIEW. The applications were filed in multiple classes for a variety of goods and services related to education, clothing, and publications with first use dates of 1992 for HOUSTON LAW and 1963 for HOUSTON LAW REVIEW.

These applications will prevent the South Texas College of Law from filing any similar trademark applications in the future, provide the University of Houston nationwide rights in the marks, and add additional weapons to the school's arsenal as it commences its legal battle over the names. However, even without a federal trademark registration, as the senior user of the marks HOUSTON LAW and HOUSTON LAW REVIEW in its geographical area, the University of Houston has common law rights superior to those of the South Texas College of Law (which didn't start using the name HOUSTON COLLEGE OF LAW until earlier this year).

The trademark applications filed by the University of Houston also set the stage for a battle within the U.S. Patent and Trademark Office (USPTO). Why? On May 12th, the South Texas College of Law filed a federal trademark application for the logo seen above. And because this application was filed prior to the University of Houston's applications, the USPTO might use it to deny registration to the University of Houston's marks due to a likelihood of confusion. TMEP 1207.

Regardless of whether that happens, I suspect the University of Houston will oppose the South Texas College of Law's mark when it is published for opposition. See 15 USC 1063. This will hold up registration of that mark until the issue is resolved in front of the Trademark Trial and Appeal Board (TTAB). Additionally, the application might be abandoned as part of a settlement related to the lawsuit.

According to my search, the University of Houston owns 83 live trademark applications or registrations at the USPTO, but the applications filed on July 11th are the first related to its law school.

Mr. Steal Your Grandma Guy Files Trademark Application for #MrStealYourGrandma

You may have seen the "Mr. Steal Your Grandma" guy on Instagram, Facebook, Twitter, or some other form of social media lately. The 54-year-old Irvin Randle, aka "Mr. Steal Your Grandma," went viral after photographs of his trendy style were found online.

Mr. Ran-err, Steal Your Grandma has capitalized on his newfound fame by setting up an official website, setting up an email address for booking inquires, and now filing a federal trademark application to protect the hashtag #MrStealYourGrandma.

A photo posted by too grown. (@irvinrandle) on Jun 24, 2016 at 6:07pm PDT

On July 8th, Irvin Charles Randle filed a federal trademark application for "#MrStealYourGrandma" in Class 041 for "[e]ntertainment services in the nature of hosting social entertainment events." The first use date listed for this trademark is July 1, 2016.

Interestingly, the trademark application lists a Los Angeles, CA address although various news reports indicate he is a Houston, TX resident. However, the website and email address in the application do match up with those listed on Mr. Randle's Instagram page.

Regardless, Mr. Steal Your Grandma will need to submit an alternate specimen if his trademark is to register. A specimen is supposed to show the trademark being used in conjunction with the goods or services listed in the trademark application (i.e. how the public encounters the mark in commerce). TMEP 904. The specimen submitted with this application is only the text "#MrStealYourGrandma" and is not sufficient.

To successfully register this trademark, and claim exclusive rights to the term as it relates to "entertainment services in the nature of hosting social entertainment events," Mr. Randle will need to submit an alternate specimen that was being used at least as early as the application's filing date and shows the mark being used in conjunction with the entertainment services listed. TMEP 1301.04(f).

Marvel Files 9 Trademark Applications for Spider-Man Logo

On July 7th, Marvel Characters, Inc. filed nine different federal trademark applications for what appears to be a Spider-Man logo (seen below).

Marvel filed each application in a different class (hence the nine different applications for the same logo) and on an intent-to-use basis (meaning it is probably not using the marks yet). As I've blogged about before, putting each class on a separate application is likely a strategic move designed to ensure that a problem with one application does not hold up the others (as it would if all the classes were listed on one application).

Some of the goods and services covered by these trademark applications include educational and entertainment services (Class 041), toys and games (Class 028), clothing (Class 025), and video game software and computer programs (Class 009).

The broad range of protection sought for this logo suggest that Marvel might have big plans for it. Is this logo related to the Spider-Man: Homecoming movie that is currently being filmed? Not much is known about the film so far. However, early pictures from the film show Spider-Man on a bicycle, and the logo above looks strangely like a bicycle tire. Coincidence?

Incubus Files 10 Trademark Applications for Band's Name

Although the band Incubus has not been on tour since 2015, something prompted them to file ten federal trademark applications on July 6th.

The applications, filed by the partnership of Incubus (compromised of Brandon Boyd, Jose Pasillas II, and Michael Einziger according to the applications), were filed in a variety of classes for various merchandise. Some of the goods covered include guitar picks in Class 015, stickers in Class 016, clothing in Class 025, and jewelry in Class 014. According to the applications, the band is actually using its name on the items listed in the applications, with dates of first use ranging anywhere from 2007 to 2015.

What do the ten new trademark applications mean? That's unclear. Before these recent applications, the band only owned three trademark registrations (which were related to their music and entertainment services) and had not filed a trademark application with the U.S. Patent and Trademark Office since 1996.

Why file ten more applications to protect a broad range of merchandise and apparel? Does that mean a tour is coming? Is the band just attempting to protect merchandise from last year's tour?

There are no indications of a new tour on the band's website, but the group did perform a seven song acoustic-set at a new bar in Huntington Beach, CA just two days after filing these applications.

Is This Trademark Application For a New Sam Adams Beer Logo?

The Boston Beer Company may be re-branding the Samuel Adams line of beer with a new logo if a recent trademark application is any indication. On July 1st, the beer company filed a federal trademark application for the logo seen below in Class 032 for "[b]eer."

The company filed this application on an intent-to-use basis, suggesting it is [probably] not using this mark in commerce yet, but has a bona fide intention to do so in the near future. 15 USC 1051(b).

According to a quick search, Boston Beer Company owes 203 live federal trademark applications or registrations, most of which are for names of various beers, including the BREXIT application I blogged about last week.

Sylvester Stallone Files Trademark Applications for Potential Motivational Book

Recent federal trademark applications suggest that Sylvester Stallone may be penning a motivational book called STALLONE - BE FIRST. 

On June 30th, Boulevard Management, Inc. (a Hollywood business management firm) filed three federal trademark applications for the term on behalf of Rogue Marble Productions, Inc. (which appears to be affiliated with Sylvester Stallone and also owns trademark applications or registrations for SYLVESTER STALLONE, I MUST BREAK YOU, and CUT ME MICK, among others).

How do we know Sylvester Stallone is affiliated with these applications (beyond the fact that the owner of the applications appears to be an entity affiliated with him)? A declaration signed by the actor and consenting to these registrations was submitted with the applications (see above). Section 2(c) of the Trademark Act requires such a declaration any time a trademark application filed with the Trademark Office contains the name, portrait, or signature of a living individual. See also TMEP 1206 et seq.

Three different applications for STALLONE - BE FIRST were filed, each in a different class of goods or services. Those classes were:

• Class 016 for "[b]ooks, guides, handouts and resource materials in the fields of sports, physical fitness, entertainment, inspirational and motivational subject matter[;]"
• Class 009 for "[d]ownloadable electronic books, guides, handouts and resource materials in the fields of sports, physical fitness, entertainment, inspirational and motivational subject matter; computer application software for mobile phones, portable media players and computers, namely, software for accessing a database of information in the fields of sports, physical fitness, entertainment, inspirational and motivational subject matter[;]" and
• Class 025 for "[b]ottoms; Footwear; Gloves; Headwear; Loungewear; Sweatbands; Tops; Undergarments[.]"

These applications were filed on an intent-to-use basis, so a specimen showing actual use of the mark in commerce is not available at this time. However, the applications do suggest that Sylvester Stallone may be in the process of developing an inspirational and motivational book (and related apparel) titled STALLONE - BE FIRST. Stallone fans - keep an eye out at bookstores near you.

Quarterly Index (4/1/16 - 6/30/16)

How To Lose Your Trademark Filing Fees:

• File REMOTE DRUG TESTING for remote drug testing services [merely descriptive]
• File LAS VEGAS BREWING COMPANY for a brewery [geographically descriptive/misdescriptive]
• File SNACKABLE GRANOLA for granola snacks [merely descriptive; generic]
• File PINT NIGHT for restaurant services [informational matter]
• File SUNDIAL FILM FESTIVAL [likelihood of confusion]
• File t-shirt slogans [ornamental use]

Entertainment Trademark Filings:

• DOUG THE PUG Files Trademark Application for Name, Covers "Live Appearances by a Celebrity Dog" [6/24/16]
• Capcom Files Trademarks for Resident Evil 7 [6/16/16]
• How I Met Your Father? Fox Files Trademarks For Potential Spinoff Show [6/14/16]
• HODOR Trademark Filed for Door Stops [6/9/16]
• Trademark Applications for New Instagram Logo Filed [5/16/16]
• DC Comics Files 11% of All Trademarks Filed With USPTO Last Saturday [5/12/16]
• Buzzfeed Files Trademark Application for Video App Icon [5/10/16]
• John R. Cash Revocable Trust Files 13 Trademark Applications [5/3/16]
• Universal City Studios Files 7 Trademark Applications for PETMOJI [4/27/16]
• ANOTHER ONE - DJ Khaled Files 9 Federal Trademark Applications [2/17/16]
• 26 Dr. Seuss Related Trademark Applications Filed [4/19/16]
• Netflix Files Trademark Application For Title Screen Sound [4/5/16]
• NBCUniversal Files Trademark Application for SONGLAND [4/4/16]
• Vintage Baywatch Trademark Filed As New Movie Develops [4/1/16]

Sports Trademark Filings:

• Steph Curry Files Multiple Trademark Applications Days Before Game 7 of NBA Finals [6/21/16]
• Trademark Filings Hint at Tucson AHL Team's New Name [6/8/16]

Food and Drink Trademark Filings:

• Boston Beer Company Files Trademark Application for BREXIT [6/29/16]
• Whole Foods Files Trademark Application for WORLD'S HEALTHIEST GROCERY STORE [6/28/16]
• JOE CUERVO - A Jose Cuervo Beer? [6/17/16]
• Frito-Lay Files Trademark Application for New Cracker Jack Logo [6/7/16]
• CHONUT Sandwich Specimen is Delicious...But Will Be Rejected [6/3/16]
• Is This DRUNKEN FRUIT Trademark Merely Descriptive? [6/1/16]
• Hershey Hints At New Candy With Recent Trademark Filings [5/4/16]
• BEER FOR BREAKFAST? Dogfish Head Files New Beer Trademark [4/25/16]
• Want to Drink Your Lemonheads? Your Favorite Candies Might Be Ciders Soon [4/20/16]

Other Unique Filings:

• Physician Files Trademark Application for WEB MD, But That's Not The Only Issue [5/27/16]
• eos Files Trademark Application for Popular Lip Balm Oval - Is It Functional? [4/29/16]
• Apple Files 1,135th Trademark Application with "Add to Apple Wallet" Icon [4/18/16]
• Amazon Files Trademark Applications For Wind, Solar Farm Logos [4/13/16]
• Is Michael Kors Developing a Smart Watch? [4/8/16]