Friday, December 25, 2015

Happy Holidays from Tantalizing Trademarks

Happy holidays from Tantalizing Trademarks! I hope all your Christmas gifts were officially licensed merchandise. Here's a throwback to a holiday trademark filing from earlier this year.

Thursday, December 24, 2015

TESS is Down

The Trademark Electronic Search System (TESS), and almost every other online service at the U.S. Patent and Trademark Office, has been down for over 24 hours. According to the USPTO, a major power outage occurred on Tuesday, December 22 that resulted in damaged equipment and a shutdown in many of the office's online and IT systems. No word yet on a cause. Unfortunately, this outage prohibits me from searching recent trademark filings and updating this blog. As soon as the system are back online, I will be back!

Monday, December 21, 2015

Disney Files Series of DONALD DUCK Trademarks

On December 16th, Disney Enterprises, Inc. filed four federal trademark applications for DONALD DUCK related to a variety of unusual items. The four trademark applications related to "tea," "curtains," "soap dishes; waste baskets; paper cups; paper plates," and "furniture."
Quite a random list. However, the intent-to-use basis of each application means that Disney does have a bona fide intention to use the phrase DONALD DUCK on each one of the items listed in the applications. This does not mean Disney is legally required to use the mark on those items, but it does require some sort of planning to use the term that is more than just an idea (i.e. a marketing plan for the items, orders placed for the required materials, prototypes developed, etc.).

These recent filings add to Disney's growing list of trademark applications or registrations in the U.S. Patent and Trademark Office, which numbers almost 5,500 as of the date of this post. It also serves as an important reminder to anyone trying to sell their own Donald Duck (or any Disney) items - don't do so without a license from Disney. Disney owns a huge intellectual property portfolio and is aggressive about protecting its valuable intellectual property. Trying to profit off Disney's intellectual property will only lead to cease and desist letters from Disney's counsel.

Friday, December 18, 2015

Chicago Bulls Name Change or Nicknames? Multiple Trademark Applications Filed By Team

On December 14th, the Chicago Bulls (well, technically Northwest Sports, LLC d/b/a Chicago Bulls) filed six federal trademark applications for HEARTLAND BULLS, WINDY CITY BULLS, and GREAT LAKES BULLS. The address listed for Northwest Sports, LLC matches the address listed for the Chicago Bulls' executive offices, suggesting that this is the legal entity that owns the team (or at least holds its trademarks).
The Bulls filed two applications for each nickname. One set of applications relates to "[e]ntertainment and educational services in the nature of ongoing television and radio programs in the field of basketball and rendering live basketball games and basketball exhibitions.." and various related services while the other set relates to a wide range of clothing items.

The Bulls filed all of these applications on an intent-to-use basis, which means the team is not using the names in commerce (i.e. selling the related goods or offering the related services under the marks) yet but has a plan to do so in the near future. Unless the Chicago Bulls plan on changing their team name, these trademark applications probably relate to potential nicknames the team plans to use in referring to itself and on related team merchandise. By filing the applications, the team is trying to secure the exclusive, nationwide right to use the terms on the goods and services listed in the trademark applications.

Wednesday, December 16, 2015

KISS Wine and Spirits Coming Soon?

Fans of the band Kiss may be able to enjoy KISS-branded spirits or wine soon. On December 11, Kiss Catalog, Ltd. filed two federal trademark applications for the design marks shown below. I am assuming Kiss Catalog, Ltd. is the legal entity holding the band's intellectual property given the 119 other trademark applications filed by the entity in the past.
These applications do not relate to music, however (the band owns other registrations for music services). These particular applications list "distilled spirits" or "distilled spirits; wines" in Class 33 as the related goods. Kiss Catalog filed both applications on an intent-to-use basis, which means the band is not using these marks in conjunction with distilled spirits or wine yet but does have a bona fide intention to do so in the near future. In other words, a KISS-branded spirit and/or wine may be hitting liquor stores near you soon.

Monday, December 14, 2015

Emojis Strike Again - EMOJIBALMS Trademark Filed

Several federal trademark applications related to emojis have been filed in 2015. I've blogged about EMOJI CARDS and EMOJI BANDAGES myself. The most recent offender is a federal trademark application for EMOJIBALMS filed on December 9th. The application is for "non-medicated balms for use on lips" and was filed by IP Branding Group, LLC out of Highland Park, Illinois.
This is a design mark application for the logo above. IP Branding Group filed this application on an intent-to-use basis, so [unfortunately] you cannot find EMOJIBALMS in the stores yet (because the intent-to-use basis means company has not yet started selling the lip balm).

To recap, I've found emoji-related trademarks for a card game, bandages, and lip balm in 2015. As the emoji trademark field gets more crowded, it will become more difficult to file emoji-related trademarks (for example, if the EMOJIBALM application matures to a registration, you will likely be precluded from filing another trademark containing the term EMOJI for anything related to lip balm). So, if you have an emoji-related product, hurry up and get the trademark filed so you can claim exclusive rights to the term as it relates to your particular goods or services. I expect to see many more EMOJI trademark applications filed in the future.

Thursday, December 10, 2015

Happy, Merry Beer Trademark Filed by Utah Based Red Rock Brewing Company

It's that time of year. On December 6th, the Red Rock Brewing Company in Salt Lake City, Utah filed a federal trademark application for its FROHLICH Pils beer. The trademark application states that the English translation of Frohlich means "happy, merry" (presumably how you feel after drinking a couple of these high alcohol beers).
According to the company's website, this beer "features a dry, clean, crisp body with a notable hop bitterness." Although Red Rock Brewing filed this application in December, the application itself indicates that the company has been selling this beer since August 2014.

It's common for craft beer companies to file trademarks for the unique names they come up with for their beers and I've seen many of these filings this year. With a federal trademark, these breweries can obtain the exclusive, nationwide right to use the term on alcohol (and the design of the label depending on the application). A federal trademark registration also makes it easier for these breweries to license their trademark for collaborations with other breweries or companies (New Belgium recently did this with Ben and Jerry's).

Wednesday, December 9, 2015

Vintage Batman Trademarks Filed by DC/Warner

On December 4th, the partnership of DC Comics E.C. Publications, Inc. and Warner Communications, LLC filed four federal trademark applications for the vintage Batman logo below.
Each application listed a different class of goods, which ranged from glass and ceramic mugs and cups, to clothing items, to pre-recorded disks, and to printed paper goods. According to the applications, this logo has been in use on these goods since at least February 2013.

In reviewing the specimens, it looks like these trademarks relate to various vintage items being sold on (which apparently sells a huge amount of Batman merchandise). 

A very quick search of the USPTO's database revealed 928 other trademark applications or registrations owned by DC Comics. These Batman applications will be the newest members to DC's ever growing trademark portfolio.

Tuesday, December 8, 2015

SWIFTMAS Is Coming - Taylor Swift Files 20 Federal Trademark Applications

On December 3rd, Taylor Swift, through her IP management and holding company TAS Rights Management, LLC, filed 20 federal trademark applications with the U.S. Patent and Trademark Office.
As seen above, trademark applications for SWIFTMAS, BLANK SPACE, AND I'LL WRITE YOUR NAME, A GIRL NAMED GIRL, and 1989 were filed on that date. 

Why are there multiple applications for the same trademark? TAS Rights Management filed each trademark in a different class of goods and services. For example, one SWIFTMAS application related to music services and live concerts while another related to various clothing and apparel. Because trademarks are divided into classes of goods and services, the same trademark is sometimes found on multiple applications.

Each of Taylor's trademarks filed on December 3rd relate to a variety of goods and services, including live music performances, clothing, printed materials (i.e. books, magazines, brochures), websites, and online retail services. All of these trademark applications were filed on an intent to use basis, which means Taylor Swift is not yet using these trademarks in relation to the underlying goods/services (which is surprising considering some of the marks filed).

This mass filing comes weeks before Christmas and is probably designed to protect primarily a variety of Taylor Swift apparel and merchandise during the holiday season (and thereafter). Merry SWIFTMAS everybody.

Monday, December 7, 2015

LA Sports & Entertainment Company Files 11 Rugby-Related Trademarks

On December 2, Grand Prix Entertainment, Inc. filed eleven trademark applications that may hint at the establishment of a professional rugby league in the United States. Apparently, Grand Prix Entertainment has been making moves to establish such a league over the past couple years.

The trademarks, seen above, all listed the following services on each application:
Arranging and conducting athletic competitions; Entertainment in the nature of competitions in the field of athletics and sports; Entertainment services, namely, arranging and conducting of competitions for athletic and sporting events, organizing and conducting exhibitions for entertainment purposes, organizing and conducting rugby tournaments and international rugby tournaments, all rendered live and through broadcast media including television and radio, and via a global computer network or a commercial on-line service; Entertainment services, namely, organizing and conducting an array of athletic events rendered live and recorded for the purpose of distribution through broadcast media; Production and distribution of motion pictures; Production and distribution of radio programs; Production and distribution of television shows and movies; Production of cable television programs; Providing news and information in the field of sports; Providing various facilities for an array of sporting events, sports and athletic competitions and awards programmes; Radio program syndication; Television program syndication
Additionally, Grand Prix filed all these trademarks on an intent to use basis, which means they are not yet being used in commerce but there is a bona fide plan to do so in the near future. The scope of these applications protects a wide variety of names that may be used for the league, which indicates Grand Prix Entertainment is in the process of deciding on a name (and does not want any other entity to file an application for a rugby league-related trademark in the meantime). If the league takes off, expect to see some of these trademarks mature into a full registration.

Wednesday, December 2, 2015


On November 26, Hilton Head Distillery, LLC filed a federal trademark application for the mark below in Class 33 for "distilled spirits." Although the LLC appears to be organized in South Carolina, it has an office address in Harvard, Massachusetts. According to the application, the applicant first used the mark below on November 2, 2015.
Typically, Section 2(e)(2) of the Trademark Act would prohibit the registration (on the Principal Register at least) of a mark that is geographically descriptive (other sections prohibit the registration of geographically misdescriptiveness marks as well - especially for spirits). The purpose of this prohibition is the prevent one person or company from claiming exclusive rights to a geographic place. For example, if this applicant could claim exclusive rights to Hilton Head as it relates to spirits, no other distillery could describe their goods using the term without facing liability, even if they were actually in Hilton Head.

A mark is considered geographically descriptive when:
  1. the primary significance of the mark is a generally known geographic location;
  2. the goods or services originate in the place identified in the mark; and
  3. purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark. TMEP 1210.01(a).
In this case, Hilton Head is surely a generally known geographic location. If this distillery is actually located in Hilton Head, it would be refused registration on the Principal Register under Section 2(e)(2). 

However, this application is for the logo above, not the term HILTON HEAD DISTILLERY. In fact, the applicant disclaimed the words HILTON HEAD DISTILLERY from the mark. By doing so, it is seeking to protect the look and feel of the logo without necessarily claiming exclusive rights to the term. This might be enough to overcome any geographically descriptive bar to registration. We will find out in approximately three months when this application is assigned to an examining attorney at the Trademark Office.

Tuesday, December 1, 2015

Snoop Dogg Files LEAFS BY SNOOP Trademark

On November 25, 2015, Calvin Broadus (aka Snoop Dogg) filed a federal trademark application for the phrase LEAFS BY SNOOP in Class 34 as it relates to "cigarette lighters not made of precious metals."
Above is a picture of the specimen filed with the trademark application (I'm not sure these are truly cigarette lighters - ed.). According to the application, Snoop started selling these lighters on November 10, 2015. Snoop filed a similar trademark application on November 17th for the actual leaf design (which is coded with a "marijuana pants" design code despite the "cigarette lighter" description).

Calvin Broadus has filed ten other federal trademarks in the past, although not all are live registrations. Other trademarks filed by Snoop include SNOOPERMARKET, SNOOP LOIN, and SNOOP JUICE.

Monday, November 30, 2015

GRONKIN' GONUTS Trademark Application Is Out of Bounds

On November 24, a man from New Hampshire (who I assume is a big Patriots fan) filed a federal trademark application for the mark below as it relates to "[h]ats; [h]ooded sweatshirts; [s]hirts; [s]weatshirts[.]"
Unfortunately for the applicant, he did not appear to work with an attorney and his nonrefundable filing fee for this application is lost.

Why? First, this application is clearly based on the DUNKIN' DONUTS logo, slogan, and business name. The main purpose of trademark laws is to prevent others from confusing customers as to the source of a good or service and to prevent others from riding off the goodwill of more established companies. Specific to trademark registrations, Section 2(d) of the Trademark Act prohibits the registration of a mark that "[c]onsists of or comprises a mark which so resembles a mark [previously] to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive..."

Dunkin' Donuts owns several trademark registrations, some of which fall within the same class of goods listed on this GRONKIN' GONUTS application. Given the similarity of this application to those DUNKIN' DONUTS applications, the Trademark Office will issue an office action refusing to register this mark due to that likelihood of confusion.

But that is not the applicant's only problem. The mark also clearly incorporates Rob Gronkowski's likeness. Whenever a trademark application incorporates the "name, portrait, or signature...[of] a particular living individual..." that person's consent must be of record with the Trademark Office. 15 U.S.C. 1052(c). This applies to stage names and nicknames as well. TMEP 1206.03. The purpose of this requirement is to "protect rights of privacy and publicity that living persons have in the designations that identify them." TMEP 1206. This applicant did not file Rob Gronkowski's consent to registration this mark, so the Trademark Office will also refuse to register it for that reason.

This application highlights the complexities of filing a federal trademark application and demonstrates the importance of working with a trademark attorney. Any qualified trademark attorney would have told this applicant right away that this particular trademark could not be registered for the reasons stated above. Luckily, this application was filed on an intent-to-use basis, which means the applicant is not actually selling anything containing this mark yet. If he was doing so, any money he spent on marketing and producing the goods would also be lost, and the actual sale of these items could have opened him up to further liability.

Monday, November 23, 2015

New Restaurant From Dogfish Head Brewery?

On November 18, Dogfish Head Marketing, LLC (an entity with the same address as the Dogfish Head Brewery) filed a federal trademark application for CHESAPEAKE & MAINE in class 43 for "[r]estaurant and bar services; Serving food and drinks[.]"
According to Dogfish Head's website, the company does serve food at its brewery and operates three Dogfish Head Alehouses around the Washington, D.C. area. However, the website does not mention a Chesapeake & Maine restaurant, which this trademark application clearly seems to indicate. Given that Dogfish Head filed the trademark application on an intent-to-use basis, this makes sense (it means Dogfish Head is not using the trademark in commerce yet). It appears this Chesapeake & Maine restaurant may be in the early stages of development but is not yet open. Keep an eye out for a possible new restaurant announcement from Dogfish Head within the next year or so.

Friday, November 20, 2015

How to Lose Your Trademark Filing Fee - File IPHONE mark

In another lesson on what not to do, an individual in Texas (without the help of an attorney, it seems), filed a federal trademark application for IPHONE AIR as it relates to cell phones, cell phone software, cell phone accessories, and a variety of other related products. This application is in serious trouble considering when I first clicked on it, I thought Apple was in the process of developing an "Air" version of the iPhone, only to find out this application was not filed by Apple, Inc. (this is the kind of confusion trademarks laws are designed to prevent).
It goes without saying that Apple, Inc. holds many, many trademark applications or registrations for both iPhone and the iPad Air and that the above application clearly conflicts with Apple's previous registrations. Given that Section 2(d) of the Trademark Act prohibits the registration of any mark that so resembles a previously registered mark that it is likely to cause confusion among consumers, the Trademark Office will surely issue the above application an Office Action refusing to register it on those grounds.

Even if the Trademark Office did not issue an office action (which is impossible), Apple would file an opposition to this mark during the publication phase at the end of the registration process. During this phase, a pending trademark application is published in the Trademark Office's Official Gazette for 30 days. During that time, anyone who feels they may be damaged by the registration is allowed to file an opposition to the application. Filing this opposition will initiate a lawsuit-like proceeding in front of the Trademark Trial and Appeal Board (TTAB).

The lesson? Work with a trademark attorney who can help you identify issues like the above. At the very least, an attorney can help you reduce the risk of losing your nonrefundable filing fee like the applicant above. His $225 fee is all but lost.

Thursday, November 19, 2015

Lionsgate Files 16 Trademarks For Comedy Featuring YouTube Stars

On November 14, Lionsgate Entertainment filed 16 different federal trademark applications for Dirty Thirty and Dirty 30 [necessary? - ed.]. As often precedes the release of a new show or movie, these trademark applications cover not only the "[p]roduction and distribution of motion pictures" but also a variety of products used to promote the show/movie (i.e. clothing, bags, post cards, books, even nail polish).
According to, DIRTY THIRTY is a comedy featuring YouTube stars Grace Helbig, Mamrie Hart, and Hannah Hart. It appears this will be a film "about a birthday party that goes off the rails." 

By filing these trademarks, Lionsgate is establishing a wide net of legal protection for the film's name and related accessories (which it can also license if it desires). 

Wednesday, November 18, 2015

How To Lose Your Trademark Filing Fee - File "F*ck"

I've blogged about trademark applications containing the word "fuck" on multiple occasions. My most recent post is here. Nevertheless, every few weeks I run across a trademark application containing the term. Most recently, an individual in Indiana filed a design mark application for the graphic shown below.
This guy sounds like he's pretty frustrated in the dating world, but he's going to be even more frustrated when he finds out the Trademark Office will not register this mark and his $225 nonrefundable filing fee is lost.

The USPTO will not register a mark containing any variation of the work "fuck" pursuant to Section 2(a) of the Trademark Act. Section 2(a) prohibits the registration of any mark containing "immoral, deceptive, or scandalous matter.The USPTO considers the word "fuck" obscene and therefore egregiously scandalous.
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.

This application again demonstrates the importance of working with a qualified trademark attorney. Any good attorney would have told him right away that he had no chance of obtaining a registration for his phrase had the applicant contacted an attorney (and probably free of charge too). Since Trademark Office filing fees are almost always nonrefundable, this quick phone call could have saved this applicant $225, which is now lost.

Tuesday, November 17, 2015

Major League Baseball Files New Design Mark

On November 12, Major League Baseball Properties, Inc. filed two trademark applications for the same design, shown below (the goods/services were in two different classes, hence the two applications).
The services listed on the first application are "Entertainment services, namely, baseball games, baseball skills competitions, and baseball exhibitions; Organizing and conducting youth programs in the field of sports; Hosting and conducting events in the nature of awards ceremonies; Providing news and information in the field of youth sports competitions[.]" On the second, the goods are listed as "Clothing, namely, headwear, shirts, jackets, sweatshirts[.]"

The MLB filed both these applications on an intent-to-use basis, meaning it is not using the mark in commerce yet. From the goods/services listed, it appears the MLB plans to use this mark in conjunction with baseball games, including youth games, and on apparel promoting the games. Given the timing, this logo might be making an appearance next season.

Monday, November 16, 2015

WINO WORKOUTS Trademark Filed

On November 11th, an individual in California filed a federal trademark application for WINO WORKOUTS.
The service listed on the application is "[p]roviding on-line videos featuring working out with wine, not downloadable[.]" Unfortunately this is an intent-to-use application so the applicant did not have to submit any evidence showing use of this trademark in commerce yet. It would be interesting to see how these wine workouts are marketed.

If the applicant is successful in obtaining this registration, he will obtain the exclusive, nationwide right to use the term WINO WORKOUTS as it applies to workout videos. However, I have a feeling the Trademark Office will consider this mark "merely descriptive" because the underlying service is essentially described by the trademark itself. Section 2(e)(1) of the Trademark Act prohibits the registration of a term that merely describes the underlying goods or services.

This mark may need to be amended to the Supplemental Register, where merely descriptive marks are allowed to hang out as they acquire distinctiveness in the marketplace. We will see in approximately three months when this application is assigned to an Examining Attorney at the Trademark Office.

Thursday, November 12, 2015

NOT CHOCOLATE Not Merely Descriptive?

On November 8th, a Chilean-based business called The Not Company filed five different federal trademark applications in the U.S. for a variety of goods that are "not" what they appear. Those applications are:
The applications are for the respective design show below.
All these applications are on the Principal Register. As such, they cannot be merely descriptive if they are going to be fully registered. As I've blogged about many times before, the Trademark Office considers a mark merely descriptive if "it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services." TMEP 1209.01(b).

For example, in July I blogged about a trademark for CHORIZO DOG that was filed for preserved meats and sausages. As I predicted, this mark received an office action for being merely descriptive.

Is a mark like NOT CHOCOLATE merely descriptive of a chocolate substitute that is not actually chocolate? Maybe. We will find out in approximately three months when an examining attorney at the Trademark Offices looks over this application.

Wednesday, November 11, 2015

Lawyer's Rejoice - LOVE YOUR LAWYER DAY Trademark Filed

Last Friday, my girlfriend sent me an article about November 6th being "Love Your Lawyer Day." That was news to me. Apparently, a lawyer-marketer in Florida created the "holiday" to help offset the negative views of attorneys generally held by the public.
On that same day, the American Lawyers Public Image Association (ALPIA), the association created by the lawyer-marketer, filed a federal trademark application for LOVE YOUR LAWYER DAY and listed "[p]ublic relations" as the services offered under the mark. The application indicates the ALPIA first started marketing this "holiday" on October 22, 2015.
Ironically, for an application filed by a lawyer, for lawyers, by a lawyer marketing association, for a LOVE YOUR LAWYER DAY mark, the application has a glaring deficiency. The specimen for this application (which is supposed to show the mark being used in commerce on the associated goods or services) is shown above but is not sufficient.

According to TMEP 1301.04, a specimen for a service mark "must show proper use in commerce of the mark, which may be established by (1) showing the mark used or displayed as a service mark in the sale of the services, which includes use in the course of rendering or performing the services, or (2) showing the mark used or displayed in advertising the services, which encompasses marketing and promotional materials."

A textual display of the mark with nothing more may be sufficient for the drawing, but not the specimen. This application will get an Office Action in approximately three months when it is assigned to an examining attorney at the Trademark Office. That Office Action will request a substitute specimen that actually shows the mark being used in commerce in relation to public relations services. Fortunately, from the looks of the ALPIA's website, it has some decent specimen material it can submit as a substitute, although it should have just submitted those materials with the application in the first place.

Tuesday, November 10, 2015

Fox May Be Planning Live Ice Age Show

The popular children's movie Ice Age (and all its sequels) may be getting a live show in the near future if a recent trademark application by Twentieth Century Fox is any indication. On November 5th, the company filed a federal trademark application for ICE AGE LIVE!
The goods listed on the application are numerous:
Presentation of live show performances related to motion picture films; providing on-line information in the field of motion picture film and video entertainment and live show performances related to motion picture films via the Internet; entertainment services in the nature of non-downloadable videos and images featuring motion picture film and live show performances related to motion picture films transmitted via the Internet and wireless communication networks; on-line journals, namely, blogs featuring personal opinions in the field of adventure, comedy and family entertainment; entertainment amusement park and theme park services related to motion picture films; entertainment services in the nature of musical, comedy and dramatic performances related to motion picture films[.]
Fox filed this application on an intent-to-use basis, which means the company is not currently using this trademark but has a bona fide intention to do so in the near future. In other words, it may be in talks to create a live Ice Age show. If you're an Ice Age fan, pay attention to this application.

Friday, November 6, 2015


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.

Thursday, November 5, 2015

BACONARA For Pizza Sauce Filed

Every once and a while I find a delicious trademark filing, and this is one of them. A creative (and hopefully culinary-inclined) individual in Florida filed a federal trademark application for BACONARA on November 1st. The only goods listed on the application are "pizza sauce."
A bacon flavored marinara sauce? Sounds good to me. If this applicant secures a registration for this trademark, he will obtain the exclusive, nationwide right to use the term BACONARA on goods related to pizza sauce.

However, the applicant filed this mark as an intent-to-use application. Section 1(b) of the Trademark Act allows the filing of "a trademark or service mark application based on a bona fide intention to use a mark in commerce 'under circumstances showing the good faith of such person.'" This means an individual can file a trademark for a term they are not yet using as long as that individual has a bona fide intention to use the mark in the near future.

At some point, the applicant will need to file an Allegation or Statement of Use showing the use of this mark in commerce (i.e. him selling BACONARA sauce). If he cannot do this, he will not be awarded a federal registration for his term. This applicant did not work with an attorney, so whether or not BACONARA is completely off the table for sauce makers is yet to be seen.

Wednesday, November 4, 2015


Following the trend of monthly subscription services, an individual in Colorado (hopefully a dentist) filed a federal trademark application for DOLLAR TOOTHBRUSH CLUB on October 30th. The services specified In the application are "online ordering services in the field of oral and dental products; online retail store services in the field of oral and dental products; online retail store services featuring oral and dental products."

According to the specimen submitting with the application (seen above), this service works similar to Dollar Shave Club or Dollar Beard Club in that a customer can receive a new toothbrush every month for a low subscription price. The application indicates this individual has been selling these toothbrushes since May 25, 2015.

However, if the current status of the DOLLAR BEARD CLUB applications are any indication, this application may be at risk of receiving a likelihood of confusion office action from the Trademark Office. The Trademark Office issued an office action refusing to register DOLLAR BEARD CLUB for various beard grooming products due to, among others, a registration for DOLLAR SHAVE CLUB for shaving products. If the Trademark Offices believes oral and dental products are related to shaving products, the DOLLAR TOOTHBRUSH CLUB application will receive a likelihood of confusion office action as well. We will find out in approximately three months when this application gets assigned to an examining attorney.

Tuesday, November 3, 2015

University Of Louisville Claims SOCCERVILLE Trademark...But Ornamental Use?

On October 29th, the University of Louisville filed a federal trademark application for SOCCERVILLE as it applies to shirts. However, obtaining a registration for clothing items can be tricky. Applicants often get an office action refusing to register their mark because the mark is seen as merely ornamentation and not as a functioning trademark. UL may have that problem with this application.
According to the Trademark Office, "[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." TMEP 1202.03. In determining whether a mark is merely decorative, and thus should be refused registration for being ornamental matter rather than a trademark, the Trademark Office will consider the following factors:

(1) the commercial impression of the proposed mark; 
(2) the relevant practices of the trade; 
(3) secondary source, if applicable; and 
(4) evidence of distinctiveness.

Id. The Trademark Office often finds slogans on apparel to be decorative slogans rather than source identifying trademarks ("[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) citing In re Hulting, 107 USPQ2d 1175, 1181 (TTAB 2013)).

In this particular case, the UL may have trouble convincing the Trademark Office that a SOCCERVILLE slogan across the front of a shirt is a source identifying trademark rather than a decorative slogan. If the UL had used this slogan in the tag of the shirt, or if it has other registrations for the SOCCERVILLE mark (and thus can use a "secondary source" argument), it would have a better chance at registration. However, when this particular application is assigned to an Examining Attorney in approximately three months, I predict an office action on the basis of ornamentation under TMEP 1202.03.

Monday, November 2, 2015

Sam Adams Files Trademark for New Beer

Beer companies frequently file federal trademark applications for each beer name they come up with so that they are afforded protection if another company starts using a similar name on beer. Sometimes these applications are filed before the company even starts selling the beer, which gives consumers a sneak peek at potential new beers. In this case, the Boston Beer Corporation (aka Sam Adams) filed a federal trademark application for SAM ADAMS HEAVEN AND HELLES and HEAVEN AND HELLES on October 26th.
The goods listed on each application are simply "beer[.]" The company filed this application on an intent-to-use basis, which means it is not yet being sold but is currently in the works. If you're a fan of helles style beer, keep a look out for this one.

Friday, October 30, 2015


If you wanted to call your golf cart cover a "golf cart poncho" you may be out of luck. On October 24th, a company based in New Hampshire filed a federal trademark application for GOLF CART PONCHO as it relates to "[f]itted covers for motorized golf cart vehicles[.]"
According to the trademark application, the New Hampshire company has been selling these golf cart ponchos since June 2012. If the company is successful in obtaining this registration, they will obtain the exclusive right to use the term GOLF CART PONCHO to describe anything related to covers for golf carts.

My only question about the application is this - how do you get out of the cart when the poncho is on? Also, any descriptiveness issue here?

Thursday, October 29, 2015

Trademark for EMOJI BANDAGES Filed

On October 23rd, a company out of Florida called Kangaroo Manufacturing filed a federal trademark application for EMOJI BANDAGES as it relates to "[a]dhesive bandages; Adhesive for bandages for skin wounds; Bandages for dressings; Bandages for skin wounds[.]"
A couple months ago, I blogged about EMOJI CARDS, a trademark filed for a charades-like card game involving emojis. It looks like Emoji Bandages are next. What a time to be alive.

Unfortunately, Kangaroo Manufacturing filed this trademark on an intent-to-use basis, meaning it is not yet using the mark and therefore we do not have a specimen showing the mark in commerce to see what these bandages might look like.

On another note, does this trademark application have any issues in being "merely descriptive" of the goods offered in conjunction with it? Maybe, if the bandages do in fact display emojis. Kangaroo Manufacturing should pay attention to the EMOJI CARDS application, which will be assigned to an examining attorney relatively soon, to see if an office action get issued by the Trademark Office regarding the potential descriptiveness of that application. If not, Emoji Bandages may be in the clear.

Wednesday, October 28, 2015

BACON FLAVORED BOURBON Trademark Filed...But There's a Problem...Maybe

On October 22nd, Branded Spirits, Ltd. in San Francisco filed a federal trademark application for BACON FLAVORED BOURBON as it relates to "[a]lcoholic beverages, namely, [b]ourbon[.]" 
According to the application, Branded Spirits started selling this flavored bourbon back in August. But unfortunately for the applicant, I believe this application is going to have significant issues in getting registered with the U.S. Patent and Trademark Office.

The problem? Section 2(e)(1) of the Trademark Act prohibits the registration of trademarks that "merely describe" the related goods or services. The U.S. Patent and Trademark Office considers a mark merely descriptive if it "describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services." 

In this case, the goods are bourbon. "Bacon flavored bourbon" certainly describes a quality or ingredient of these goods. Therefore, when an examining attorney at the Trademark Office reviews this application in approximately three months, he or she will almost certainly issue an office action refusing to register this mark pursuant to Section 2(e)(1).

Why can't someone register a merely descriptive trademark? This application is the perfect example. If Branded Spirits could obtain a federal trademark over BACON FLAVORED BOURBON, it would have the exclusive, nationwide right to use that term to describe bourbon. No one person or company could make bourbon and describe it as "bacon flavored bourbon" without risking liability for trademark infringement. Such a result would stifle commerce and is simply unfair. Congress believed every person should be able to use descriptive terms to describe features of their goods. This is the reason it enacted Section 2(e)(1) and the reason why merely descriptive trademarks should be avoided whenever possible.

UPDATE - this applicant sought registration on the Supplemental Register, which does not offer all the benefits of a full registration on the Principal Register, but will permit a merely descriptive trademark to register there until it "acquires distinctiveness" and becomes capable of registration on the Principal Register. However, a generic trademark is never capable of registration on either Register. 

The USPTO uses a two part test to determine whether a trademark is generic:  (1) What is the genus of goods or services at issue? and (2) Does the relevant public understand the designation primarily to refer to that genus of goods or services? What do you think? Is BACON FLAVORED BOURBON merely descriptive (and capable of residing on the Supplemental Register) or generic (and incapable of any type of registration)?

Tuesday, October 27, 2015

Viacom Files Trademark for THE SPONGEBOB MUSICAL

A couple months ago, a variety of outfits reported on the announcement of a SpongeBob SquarePants Broadway musical. Viacom took another step towards making this musical a reality by filing a federal trademark application for the musical's name on October 21st.
Viacom filed the application as an intent-to-use application (which makes sense considering the musical isn't set to premier until June/July 2016) for "[e]ntertainment, namely, live entertainment performances in the nature of live instrumental, musical, live comedy and live drama, live musical variety and dance performances; organization of exhibitions for educational and cultural purposes; production and provision of entertainment news, and entertainment information via communication and computer networks[.]"

This particular trademark application is for the "stacked format" of the title, which suggests this design is how the title will appear on marketing materials.

According to, "'The SpongeBob Musical' begins previews at Chicago’s Oriental Theater June 7, 2016, for a limited engagement that runs July 3."

Friday, October 23, 2015

Today's Tip for Saving Your Trademark Filing Fee - Don't File an NFL-like Logo

Any trademark attorney will advise you to avoid filing or using any trademark that resembles a professional sports team's colors, name, and/or logo. These leagues and teams are aggressive about policing their intellectual property and typically have trademark registrations for a variety of goods and services.

Unfortunately the applicant that recently filed a LOS ANGELES CHARGERS design mark did not appear to work with an attorney.

On October 17th, an individual in California filed a federal trademark application for the logo below as it relates to "[e]ducation and entertainment services, namely, production and distribution of ongoing television programs in the field of family management and relationships; Educational and entertainment services, namely, a continuing program about football games accessible by means of radio, television, satellite, audio, video, web-based applications, mobile phone applications, computer networks, etc."
I'm not even a big football guy and immediately recognized this logo as almost exactly resembling the San Diego Charger's logo. Undoubtedly the team and NFL will take notice as well, especially considering that the specified services are related to entertainment and football.

When this application is assigned to an examining attorney at the Trademark Office in approximately three months, that attorney will almost certainly issue an office action refusing to register the above mark due to its similarity with a previously filed San Diego Charger's mark. 

If for some incredible reason this application slips past the examining attorney, you can be sure the NFL will file an opposition or otherwise fight this attempted registration. Unfortunately for the applicant, this means his $275 nonrefundable filing fee, and any other money he spent on designing and marketing this logo, is almost certainly lost. This is another instance in which the applicant could have benefited from working with an experienced trademark attorney who would have recognized these issues right away and advised against this application.

Thursday, October 22, 2015

Target Files 20 Trademark Applications For Possible New House Brand

On October 16th, Target Brands, Inc. filed twenty different trademark applications for the phrase MADE BY DESIGN. Target filed each application in a separate class of goods, which accounts for the large number of applications.
Some of the products filed in the twenty different classes include fresh fruit, nuts, and vegetables, jewelry, stationary, baked goods, clothing, bed, kitchen, and bath linens, furniture, carrying bags, kitchen utensils, and cosmetics.  

Is this a new house brand by Target? Maybe. Target filed all of the applications on an intent-to-use basis, which means the company is not yet using the trademark in commerce but has a bona fide intention to do so in the near future. While this might signal Target is going to release a line of products under this trademark, it also might only signal that it is one of the brand names the company is considering. Regardless, a new house brand by Target may be hitting stores soon.

Wednesday, October 21, 2015

CAP'N CRUNCH Files Sweet Trademark

The Quaker Oats Company, the division of PepsiCo that owns the CAP'N CRUNCH brand, recently filed a trademark for a sweet new take on the classic breakfast cereal. On October 15th, the company filed a federal trademark application for CAP'N CRUNCH DELIGHTS.
According to the trademark application, the Quaker Oats Company started selling these "delights" in July 2015. The application describes the product as " [s]weet dough-enrobed foods consisting of balls of dough with sweet fillings[.]" Look for them in a store near you.

Friday, October 16, 2015

Mackinac Island Creamery Attempts to Secure PECAN TURTLE FUDGE For Ice Cream

A Michigan ice cream shop recently filed a delicious trademark application related to ice cream. The Mackinac Island Creamery, which is apparently owned by the General Container Company, LLC, filed a federal trademark application for PECAN TURTLE FUDGE ice cream on October 11th.
Surprisingly, a very quick search did not reveal any other trademark applications containing pecan turtle fudge. Therefore, if the Mackinac Island Creamery successfully registers this trademark, they will essentially be the only company in the U.S. that can sell an ice cream called Pecan Turtle Fudge. According to the trademark application, the Mackinac Island Creamery has been selling Pecan Turtle Fudge since 2007. If you're in the area, check it out.

Thursday, October 15, 2015

Today's Tip For Saving Your Trademark Filing Fee - Don't File Trademark for BURGER QUEEN

In questionable move, an individual in Puerto Rico filed a federal trademark application on October 9th for BURGER QUEEN as it relates to "[b]eef patties; [f]rench fried potatoes; [f]ried meat; [and] [b]urgers contained in bread rolls[.]" The applicant filed the application on an intent-to-use basis.
Does BURGER QUEEN remind you of another entity selling burgers and fries? If so, this trademark application is in serious trouble. 

Trademark laws are designed to prevent customer confusion regarding the source of a product and to prevent junior users from riding off the goodwill of more established senior users. To that end, Section 2(d) of the Trademark Act prohibits the U.S. Patent and Trademark Office from registering any mark that is confusingly similar to a previously filed mark. Although several factors are considered when determining whether two marks are confusingly similar, the analysis generally boils down to (1) the similarity between the marks and (2) the relatedness of the goods and services.

In this case, BURGER QUEEN is very, very similar to BURGER KING and the goods are exactly the same. Also, by last count there are approximately 88 previously filed trademark applications containing BURGER KING owned by the Burger King corporation. When the BURGER QUEEN trademark application is assigned to an Examining Attorney in approximately three months, that attorney will almost certainly issue an Office Action refusing to register this mark due to the many previously filed BURGER KING applications.

Surprisingly, the applicant used an attorney to file this application. Because trademark filing fees are nonrefundable (and due to infringement issues), an attorney should always conduct a clearance search before filing an application to account for issues like the above. Whether a search was done in this case is unclear, but it is clear that the applicant's $450 filing fee (and whatever fee it paid its attorney) has been wasted.

Wednesday, October 14, 2015

New Freddie Mac Logo? Mortgage Giant Files Design Trademarks

Mortgage giant Freddie Mac may be in the processing of implementing a new logo based on a recent trademark applications filed by the organization. On October 8th, the Federal Home Loan Mortgage Corporation filed a federal trademark application for the design below as it relates to "financial and real estate services in the field of mortgage loans and mortgage-backed or mortgage related securities[.]" 
Although the color scheme is similar, this mark is a departure from the current logo displayed on Freddie Mac's website
The mark above was also filed by Freddie Mac on the same day for the same services. The intent-to-use basis of these applications (meaning Freddie Mac isn't using them yet), and the fact that I could not find these designs anywhere on the internet, signals that Freddie Mac is in the process of re-branding.

Freddie Mac's strategic use of intent-to-use based trademark applications allows the organization to secure priority in mark before it is even being used. These applications are permissible and lawful as long as Freddie Mac had a bona fide intention to use the marks in the near future prior to filing. Keep an eye out for a logo change by Freddie Mac soon.

Monday, October 12, 2015

St. Louis Blues File Trademark for HEARTLAND OF HOCKEY

According to the St. Louis Blues, the Heartland of Hockey is located in St. Louis, Missouri. On October 7th, the NHL team filed a federal trademark application to maximize its legal rights in that phrase.
The team filed this intent-to-use trademark for professional hockey services and a variety of hockey related merchandise. If this application matures to a federal registration, the St. Louis Blues will be the only hockey team that can use the HEARTLAND OF HOCKEY phrase. Because this application is an intent-to-use application, the Blues will need to file a Statement or Allegation of Use showing use of this trademark in commerce before a registration can be issued by the U.S. Patent and Trademark Office.

That Allegation of Use might be coming sooner rather than later, however. The team is already putting the phrase out there as part of its push to host the 2018 World Juniors Championships. This trademark application follows an announcement in mid-September that St. Louis is one of the three finalists to host the World Juniors Championships. Buffalo and Pittsburgh are also still in the running.

Friday, October 9, 2015

Today's Tip - Don't File LIVEMOMSTRONG for Apparel

In the case of another unfortunate pro se trademark applicant, a women in California filed a federal trademark application for the mark LIVEMOMSTRONG! as it relates to "[s]hirts; [s]horts; [and][w]ristbands[.]" These goods are in class 25.
Unfortunately, as most of you know, there is another very popular trademark for LIVESTRONG owned by the LiveStrong Foundation. The LiveStrong Foundation is the owner of two trademark applications in class 25 and many others in various other classes (see below for examples of LIVESTRONG apparel).
Because these marks are for the same types of goods, and are extremely similar, the LIVEMOMSTRONG! application will almost certainly receive an Office Action refusing to register the LIVEMOMSTRONG! mark pursuant to Section 2(d) of the Trademark Act. This section prevents the registration of any mark that is confusingly similar to a previously registered mark.

Trademark Office filing fees are almost always nonrefundable, so this applicant's $225 filing fee is all but lost.

This case demonstrates the importance of conducting a proper clearance search before filing a trademark application. By working with a trademark attorney, you can avoid Section 2(d) Office Actions and maximize your chances of receiving a federal trademark registration.

Wednesday, October 7, 2015

SOUTHERN TIER BREWING Trademark Filed For Cornhole Boards

On October 1st, the Southern Tier Brewing Company, LLC filed a federal trademark application for the stylized SOUTHERN TIER BREWING COMPANY logo seen below as it relates "[e]quiment sold as a unit for playing tossing games" (aka cornhole).
Why does the Southern Tier Brewing Company feel the need to file a trademark application specifically for cornhole boards? The move is probably designed to give them a leg up in fighting any unauthorized distributors of cornhole boards that bear the company's trademark. 
While Southern Tier would have some legal rights to prevent such unauthorized use even without this registration, the registration will act as an extremely persuasive deterrent if attached to a cease and desist letter. Additionally, the Trademark Office will use this application as a basis for denying the registration of any similar names and logos if used on anything related to cornhole boards (because Section 2(d) of the Trademark Act prohibits the registration of a trademark that is confusingly similar to a previously filed mark).

This trademark filing is also an important warning to individuals and companies that create cornhole boards, apparel, or other items bearing the trademarks of others. Most companies are very aggressive in protecting their brand and will go after sellers of unauthorized products. Such sales can even result in criminal liability. Do not create items bearing the trademarks of others without seeking a license from the trademark owner (or at least speaking with a trademark attorney first).

Tuesday, October 6, 2015

Kansas Bank Files Trademark for FRAT CARD

For some reason, the Bank of Prairie Village in Prairie Village, Kansas has apparently decided to develop a line of debit cards directed at fraternity men and sorority women. The Bank filed four different federal trademark applications on October 1st for the following marks: FRAT CARD, FRATERNITY MAN CARD, SORORITY GIRL CARD, and SORORITY CARD.
All of these applications are intent-to-use applications (which means the bank is not selling these cards yet but has a plan to do so in the near future) and are related to "Banking services; Debit card services[.]"

Is Prairie Village even near a campus? Are these cards available to all college students or is a fraternity membership card required? What about alumni? Does the front of the card depict a game of beer pong? 

Many questions surround this card but they start to make sense when one see the picture of the Bank's office on St. Patrick's Day - they are definitely fraternity men (as a fraternity man myself it is acceptable to make these judgments). I wouldn't be surprised to see a trademark application for FRAT BANK follow the trademarks above.