eos Files Trademark Application for Popular Lip Balm Oval - Is It Functional?

Have you seen the eos oval lip balm at your local retailer? Chances are you have. The popular lip balm is seen below.

eos Products, LLC filed a federal trademark application for the oval case of the balm on April 25th. According to eos's description, "[t]he mark consists of a three-dimensional configuration comprised of half an ovoid, with an indented portion on the lower portion of one arc thereof, with another half ovoid that is smaller in size on top, with the ovoids divided by threading" (see below).

Is it possible to obtain trademark registration for the way a product looks? It sure is, except that functional matter cannot be protected as a trademark. See TMEP 1202.02(a)(iii)(A), 15 U.S.C. §§1052(e)(5) and (f), 1064(3), 1091(c), and 1115(b). 

Why not? Because patent law protects the way a product works, not trademark law. The U.S. Supreme Court explained this reasoning in Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164-165:

The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm’s reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature. It is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time...

How does one determine whether a product feature or design is functional? Generally four factors are considered:

1. the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;
2. advertising by the applicant that touts the utilitarian advantages of the design;
3. facts pertaining to the availability of alternative designs; and
4. facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.

See TMEP 1202.02(a)(v);  In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1340-1341 (C.C.P.A. 1982).

If an applicant holds a utility patent for the design it seeks to protect as a trademark, advertises the utilitarian advantages of the design (i.e. easier to hold), alternate ways to design the relevant product are not generally available, and the product is designed in that manner because it is cheaper or simple, the product feature is functional and cannot be protected as a trademark.

Is the eos lip balm product design functional? Is an oval the easiest and cheapest way to design lip balm packaging? Does it make it easier to hold? Are alternative designs for lip balm packages readily available? We'll have to wait a couple months to see what the examining attorney at the Trademark Offices thinks about this configuration.

Universal City Studios Files 7 Trademark Applications for PETMOJI

Back at it again with the emoji-related trademarks. This time the applicant is Universal City Studios, which may have big plans for the mark given the scope of the trademark applications.

On April 22nd, Universal City Studios, LLC filed 7 federal trademark applications for the word mark PETMOJI. The studio filed each application on an intent-to-use basis.

The most interesting applications are in the following classes:

• Class 041 for "[e]ntertainment services, namely, providing a website enabling users to create and share digital images, icons, pictographs, graphics and illustrations on mobile devices, wireless devices, social media platforms and global computer networks and in electronic communications and via a wireless computer network; entertainment services, namely, providing online games; providing a web-based system and on-line portal for customers to participate in on-line gaming; entertainment services, namely, providing temporary use of non-downloadable computer games; entertainment services, namely, providing digital television series, webcasts or webisodes via a global computer network and portable and wireless communication devices;" and
• Class 009 for "[d]ownloadable computer software, mobile applications and keyboard applications for creating and sharing digital images, icons, pictographs, graphics and illustrations on mobile devices, wireless devices, social media platforms and global computer networks and in electronic communications; computer game software; downloadable mobile application for a video game; downloadable interactive computer, video and electronic game programs via a global computer network, wireless communication devices and portable electronic devices; interactive computer, video and electronic game programs, software, cartridges and memory cards; computer game software for personal computers and home video game consoles; mobile phone accessories, namely, phone cases and covers, phone charms, wired and wireless earbuds, cell phone mounts, phone clips and screen protectors[.]"

These applications together suggest that Universal has some intention to create a website and/or software to facilitate the creation and sharing of icons and images (probably related to pets).

The remaining trademark applications are for related merchandise, such as toys, housewares, clothing, and jewelry. Thus, the studio apparently has some intention of developing a line of PETMOJI-related goods as well.

Unfortunately for the rest of us, this probably means the use of PETMOJI for websites, software, or the goods listed on Universal's applications is off limits until Universal decides whether to proceed with these applications. And don't expect the emoji-related trademarks to slow down any time soon.

BEER FOR BREAKFAST? Dogfish Head Files New Beer Trademark

For those who like beer for breakfast, Dogfish Head is apparently coming out with a new beer for you. On April 20th, the brewery filed a federal trademark application for BEER FOR BREAKFAST in Class 032 for "beers." This is not the first Dogfish Head trademark featured on this blog (trademark filed last year for restaurant services).

Dogfish Head filed the application on an intent-to-use basis, meaning the brewery is [probably] not using this trademark yet but has a bona fide intention to do so in the near future.

As blogged about before, beer trademarks are incredibly popular at the U.S. Patent and Trademark Office these days. The crowded field means breweries should take extra caution in clearing trademarks before use. It's also forcing breweries to become more creative and unique in choosing beer names (to decrease the likelihood that such a name is already in use).

For those in the Cincinnati area, join me at the 2016 CincyBrand Conference tomorrow where I will introduce a panel of local craft brewers who will discuss these unique challenges related to branding in the craft beer industry.

Want to Drink Your Lemonheads? Your Favorite Candies Might Be Ciders Soon

Do you love Jujyfruits, Cherryheads, Grapeheads, Lemonheads, and Red Hots? Do you love them so much you want to enjoy them as a cider drink? If so, and if recent trademark filings at the U.S. Patent and Trademark Office are any indication, your dream may be coming true.

On April 15th, Ferrara Candy Company (the owner of Super Bubble, Red Hots, and Now & Laters, among others) filed five federal trademark applications for each of the candy trademarks listed below.

But Ferrara did not file these trademark applications for candy. Instead, the candy company filed each application in Class 032 for "non-alcoholic cider." Check out the RED HOTS application here. 

Each application was filed on an intent-to-use basis, meaning Ferrara is [probably] not using these trademarks with cider yet, but has a bona fide intention to do so in the near future. In other words, the company is taking some steps to make this drink a reality. So if you want to drink Red Hots, check store shelves soon.

26 Dr. Seuss Related Trademark Applications Filed

Something is abuzz in the Dr. Seuss world. On April 14th, Dr. Seuss Enterprises, L.P. spent thousands of dollars filing 26 Dr. Seuss related trademark applications. The trademark applications are seen below (the blank spaces indicate certain designs that were filed).

The applications appear to cover mostly merchandise and novelty items related to the Dr. Seuss brand. For example, some of the goods included in these applications are "pet clothing" (in Class 018), "tumblers [and] mugs" (in Class 021), clothing (in Class 025), and "Christmas tree ornaments" (in Class 028).

It is not uncommon for popular brands to own many federal trademark registrations related to a broad range of goods and services. These registrations give the brand a great deal of legal protection across the country, assist with preventing foreign counterfeit goods from entering the country, and make it easier to stop knockoff brands in the U.S.

Apple Files 1,135th Trademark Application with "Add to Apple Wallet" Icon

Apple, Inc.'s federal trademark portfolio is quite extensive. By my unofficial count, the company has filed approximately 1,135 trademark applications with the U.S. Patent and Trademark Office (although only about 712 are "live" as of the date of this post). These applications cover everything from product names, to app icons, and, of course, Siri.

The latest trademark therefore comes as no surprise. On April 13th, Apple filed a federal trademark application for the "Add to Apple Wallet" icon seen below (WALLET disclaimed).

Apple filed this trademark in Class 009 for computer software related to organizing boarding passes, coupons, gift cards, and sporting tickets, processing mobile payments, personal information management, and verifying credit card transaction and payment information. 

Apple has had success in registering icons as trademarks before and I suspect this application will be no different. Apple is using Section 44(d) of the Trademark Act to claim priority for this mark as of October 22, 2015, based on a trademark application it filed in Jamaica on that date.

Trademark For Trumpmoji Filed...But Not By Donald Trump

It's 2016. Federal trademarks applications for SELFIE- and EMOJI-related marks are commonplace (for better or for worse). Continuing with that trend and taking a shot at Donald Trump (I think?), a company in Louisiana filed a federal trademark application for TRUMPMOJI on April 10th.

The applicant filed this trademark application in Class 009 for "[c]omputer application software for mobile phones, namely, software for sharing information on social media; [c]omputer graphics software; [d]ownloadable computer graphics; [d]ownloadable graphics for mobile phones." This first use date is listed as March 29, 2016.

While hilarious, this application has a problem. Section 2(c) of the Trademark Act is an absolute bar on the registration of marks that consist of the name of a living individual unless that individual provides his or her written consent to the U.S. Patent and Trademark Office (which Donald Trump did not do here, obviously). 

The fact that this application is for TRUMPMOJI and not DONALD TRUMP does not make a difference. The Trademark Office makes it clear "Section 2(c) applies not only to full names, but also first names, surnames, shortened names, pseudonyms, stage names, titles, or nicknames." TMEP 1206.01. For example, trademark applications for OBAMA PAJAMA, OBAMA BAHAMA PAJAMAS, and BARACK'S JOCKS DRESS TO THE LEFT were all refused registration under SEction 2(c). See In re Hoefflin, 97 USPQ2d 1174, 1177-78 (TTAB 2010).

Candidates for political office are generally reluctant to bring legal action to prevent the use of their name (although this is Donald Trump), so this company's TRUMPMOJI app may continue to exist. As far as obtaining a federal trademark registration for the name, however, that is extremely unlikely. Unfortunately for the applicant, that means the $225 nonrefundable filing fee submitted with this application is all but lost.