Tuesday, May 12, 2020

Bauer Hockey Files Application to Register BAUER as a Trademark for Sanitary Masks, Face Shields

Back in March, hockey equipment manufacturer Bauer Hockey announced the company would be switching from hockey equipment to protective medical equipment. A recent trademark application filed with the U.S. Patent and Trademark Office proves the company wasn't kidding.
On May 7, the hockey company filed a federal trademark application for BAUER, but it didn't cover hockey equipment. Instead, it covered the following goods:
  • Sanitary masks to protect from infection and prevent infection of others; face shields to protect from infection and prevent infection of others; disposable microorganism barrier gowns (Class 10); and
  • Multi-usage face shields; multi-purpose face shields; face masks; goggles (Class 9).
Bauer filed the application on an intent-to-use basis, suggesting it is not currently selling these goods in conjunction with the BAUER trademark yet, but has a bona fide intention to do so in the near future (which makes sense). See TMEP 806.01(b); 15 USC 1051(b). Before this particular BAUER trademark can be registered, Bauer must actually start using the BAUER trademark in interstate commerce in conjunction with the goods listed in the application and submit sufficient prove of such use to the USPTO. See TMEP 1103.

Kudos to Bauer for doing its part.

Monday, May 11, 2020

PwC Files Application to Register AUTOMATIC CONTACT TRACING As a Trademark for Web-Based Software. Any Issues?

Coronavirus-related trademark applications are flooding the U.S. Patent and Trademark Office recently, to no one's surprise. And a recent application from PricewaterhouseCoopers is no different.

On May 6, the global professional services firm filed an application to register AUTOMATIC CONTACT TRACING as a trademark with the USPTO. The application covers the following services in Class 42:
  • Providing web-based software application that would assist organizations in making critical workforce strategies through the analysis of data based on employee location and interaction
According to the application, PwC has been using AUTOMATIC CONTACT TRACING as a trademark (or, more accurately, a service mark) since March 30, 2020. Submitted with the application to prove use is the specimen seen below.


See any potential issues? Is this mark merely descriptive of the underlying services?

Merely descriptive trademarks immediately describe "an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services." See TMEP 1209.01(b). Merely descriptive trademarks cannot be registered on the Principal Register (which affords all the benefits of a federal trademark registration) without a showing of acquired distinctiveness. 

Does AUTOMATIC CONTACT TRACING merely describe the underlying services listed in the application and show in the specimen above? If so, the USPTO will issue a refusal to register this mark. PwC can submit arguments against that refusal, amend the application to the Supplemental Register (assuming the mark is being used as a service mark and actually in use), or choose to abandon the application.

We'll find out what an examining attorney at the USPTO thinks when this application is examined in approximately three months. Stay tuned.

Friday, March 13, 2020

California Individual Files Applications to Register WE CURED COVID-19 and Two Other COVID-19 Slogans as Trademarks

With the COVID-19 pandemic starting to overwhelm our daily lives, it's not surprising to see individuals and companies filing federal trademark applications for the term.
Most recently, on March 9, an individual in California filed applications to register the three slogans below as federal trademarks:
All three applications cover the same goods and services, namely:
  • Clothing (Class 25);
  • Providing information in the field of medicine; promotional services, namely, promoting the charities of others (Class 35); and
  • Charitable fundraising (Class 36)
However, simply because this individual filed applications doesn't mean he'll obtain registrations. The individual filed these applications on an intent-to-use basis, meaning he'll need to start using these slogans as trademarks with the listed goods and services and submit sufficient proof of same to the U.S. Patent and Trademark Office before he can be issued registrations. TMEP 806.01(b); 15 USC 1051(b). No trademark use = no registration.

The applications could also face barriers in the examination phase. For example, the USPTO will likely ask the applicant to specify the type of clothing in Class 25. Further, depending on the applicant's use of these slogans, the USPTO may find them to merely convey a message rather than function as an identifier of the source of the goods/services. See TMEP 1202.03(f)(i).

In any event, one can expect to see a slew of CORONAVIRUS and COVID-19 trademark applications filed in the near future. And, as always happens when a popular phrase comes about, you can expect the vast majority of those applications die before registration.

Tuesday, January 21, 2020

Baltimore Ravens QB Lamar Jackson Files Trademark Applications for NOT BAD FOR A RUNNING BACK, Two Other Marks

On January 16, a few days after losing to the Tennessee Titans in the Divisional Round of the NFL playoffs, Baltimore Ravens quarterback Lamar Jackson filed three applications with the U.S Patent and Trademark Office.
The applications are for the following marks:
The applications cover the same goods in Class 25, namely "Bottoms as clothing; Footwear; Headwear; Tops as clothing; Undergarments." According to the applications, Lamar is already using NOT BAD FOR A RUNNING BACK as a trademark for that apparel, but is not currently using the other two marks (although the applications suggests he has a bona fide intention to do so in the near future).

Back in April 2019, the same attorney who filed these applications obtained a federal trademark registration for the name LAMAR JACKSON covering similar apparel items, as well as backpacks, athletic bags, duffel bags, and sports bag. With that application, Lamar submitted his written consent to register his name as a trademark (see below). Such written consent is required under Section 2(c) of the Trademark Act when a trademark incorporates the name of a living individual.

Lamar Jackson, individually, is listed as the owner of each application above. According to my quick search, there are currently three other federal trademark applications pending that are owned by Lamar Jackson. All three are for various logos that appear to be related to his Era 8 apparel line.

Monday, December 23, 2019

Heisman Winner and LSU Quarterback Joe Burrow Files Applications to Register His Name/Nickname as Trademarks

Like so many other athletes, 2019 Heisman Trophy winner and current LSU quarterback Joe Burrow is filing trademark applications for his name and nickname.
On December 18, Joe Burrow filed two federal trademark applications with the U.S. Patent and Trademark Office (USPTO) for the following marks:
Both applications cover the same services, namely:
  • (Class 25) Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; sports jerseys; headwear, namely, caps, hats, skull caps and visors; apparel and clothing, namely, aprons, ascots, bandanas, bath robes, bathing trunks/bathing drawers, bathing suits/swimsuits, beach clothes, belts, bibs, not of paper, coats, cuffs/wristbands, dresses, dressing gowns, ear muffs, gloves, headbands, hoods, jackets, jerseys, jumper dresses/pinafore dresses, knitwear, leggings, neckties, outerclothing, overalls/smocks, pants/drawers, paper clothing, paper hats, parkas, pocket squares, pockets for clothing, ponchos, pullovers/jumpers, pajamas, scarves/scarfs, shawls, shirts, short-sleeve shirts, sports jerseys, skirts, socks, suspenders, stockings, sweat-absorbent stockings, sweat-absorbent underclothing, anti-sweat underwear, sweaters, tee-shirts, tights, trousers, underpants, underwear, underclothing, uniforms; footwear; footwear, namely, sandals, slippers, tennis shoes, football shoes, cleats, sports shoes
  • (Class 35) Endorsement services, namely, promoting the goods and services of others
Joe filed the applications on an intent-to-use basis, suggesting he is not currently using his name and nickname as a trademark for these goods and services yet, but has a bona fide intention to do so in the near future. TMEP 806.01(b); 15 USC 1051(b). Before these marks can register, Joe will need to start providing the listed goods and services under these marks in interstate commerce and submit sufficient proof of such use to the USPTO. See TMEP 1103.

Notably missing from the applications is a declaration from Joe Burrow consenting to the registration of his name and nickname as a trademark. Section 2(c) of the Trademark Act absolutely bars the registration of a mark that "[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent..." This prohibition applies to nicknames as well. TMEP 1206.01. The USPTO will require this declaration from Joe before the marks can be registered.

Both applications were filed in Joe Burrow's name individually by Randy Cangelosi, an attorney at Kean Miller LLP in Baton Rouge, Louisiana. These are the first federal trademark applications listing "Joe Burrow" as the owner.

Tuesday, December 10, 2019

Fans of Tapatio Hot Sauce May Soon Have Tapatio Beer, Potato Chips According to Recent Trademark Applications

Tapatio is well-known for its hot sauce, but the hot sauce company may be moving into different product lines, if recent applications filed with the U.S. Patent and Trademark Office are any indication.
On December 5, Tapatio Foods, LLC filed four federal trademark applications for the marks below:
  • TAPATIO covering "beer" in Class 32;
  • TAPATIO covering "potato chips" in Class 29;
  • The logo above covering "potato chips" in Class 29; and
  • TAPTIO covering "beer" in Class 32.*
* likely a spelling error (will probably result in an abandonment of this application by Tapatio Foods).

Tapatio Foods, LLC filed each application on an intent-to-use basis, suggesting the company is not currently using its name and logo with the listed goods yet, but has a bona fide intention to do so in the near future. TMEP 806.01(b); 15 USC 1051(b). Before these marks can register, Tapatio Foods will need to start selling beer under the Tapatio name and potato chips under the Tapatio name and logo. See TMEP 1103.

While these applications by no means require Tapatio Foods to start selling beer or potato chips, the do suggest something is in the works. Tapatio fans - keep an eye out for Tapatio beer and potato chips in the near future.