Monday, February 29, 2016

Creators of "Damn, Daniel" Meme File Trademarks For DAMN DANIEL Phrase

You may have heard about the viral "Damn, Daniel" meme that broke the internet over the last two weeks. The video, which is only 30 seconds long, features Josh Holz filming his friend Daniel Lara in a variety of outfits and exclaiming "Damn, Daniel" over and over again. Josh also uses the now popular phrase "back at it again with the white Vans" in response to Daniel's shoes. The two friends are sophomores at Riverside Polytechnic High School in California.

Apparently, the popularity of the video (the friends even appeared on Ellen recently) led the two teens to file federal trademark applications for the phrase DAMN DANIEL in the United States Patent and Trademark Office on February 24th (with the help of attorneys at Varner & Brandt, LLP).

The teens filed one application in Class 041 for "[e]ntertainment in the nature of viral video media, namely, online videos broadcast through social media networks" and the other in Class 025 for "[c]lothing items, namely, t-shirts, hats and shoes." The application in Class 025 was filed on an intent-to-use basis (meaning the teens are not using the trademark on those goods yet but have a bona fide intention to do so soon) but the application in Class 041 is based on actual use in commerce, with a first use date of February 15, 2016 (the date Josh posted the video on Twitter).

The specimen submitted with the application in Class 041 is seen above. 

If successful in obtaining these federal trademark registrations, the teens will obtain the exclusive, nationwide right to use the term DAMN DANIEL on goods or services related to those listed on their applications. Whether those rights are enforced by the teens is yet to be seen. Given the viral nature of the video, I have a feeling enforcing them will not be easy.

Thursday, February 25, 2016

Travel to the St. Thomas for SCOOPS & BREW

Next time you're in St. Thomas and have a craving for coffee and ice cream at the same time, stop by Scoops & Brew.
On February 22nd, the individual who owns the restaurant/coffee/ice cream shop filed a federal trademark application for the design mark seen above in Class 043 for "combination coffee bar and ice cream shop, and coffee and ice cream shop services in the nature of a restaurant." [I was hoping the "Brew" stood for beer, but coffee will do - ed.]. This trademark application, if it registers, will give the applicant the exclusive, nationwide right to use the logo above on coffee and ice cream shop related services.

According to the trademark application, the restaurant first started using this trademark on October 24, 2014. And after looking at their website, it looks delicious.

Wednesday, February 24, 2016

Crocs Files Trademark Applications For Shoe Designs...But Are They Functional?

On February 19th, Crocs, Inc. filed two federal trademark applications in the United States Patent and Trademark Office (USPTO) for the shoe designs seen below, each in Class 029 for "footwear." These applications can be found here and here.
As far as I can tell, this is the first time Crocs has attempted to obtain trademark protection for the look of its shoes. The broken lines show portions of the shoe that are not claimed as part of the mark, so it appears Crocs is attempting to claim most of the shoe (as seen above) but if that doesn't work, claim only certain parts of it (see below).
As I blogged about before, the design of a product is generally registerable as a trademark as long as it is not functional. To determine whether an article is functional, and thus not protectable as a trademark, the USPTO will consider the following factors:
  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). Crocs will need to prove to the USPTO that the portions of the shoe design claimed in these trademark applications are not functional aspects of the shoe. Claiming something like a shoe design is not functional is probably more difficult than claiming the highly decorative aspects of a beer tap are not (as with the Shock Top mark). Crocs may be in for a battle with the USPTO.

Although not exactly the same situation, Louboutin was successful in registering and protecting the red sole of its shoes as a trademark.

Tuesday, February 23, 2016

Ohio State University Files Trademark Application to Protect Jersey

The Ohio State University is aggressive about protecting its trademark rights and holds 111 live applications or registrations with the United States Patent and Trademark Office. The University also claims ownership of a broad range of unregistered common law trademarks (I know from personal experience, having represented a client who received a cease and desist letter from them).

On February 18th, the University filed its most recent federal trademark application, which seeks protection for the design elements of the football jersey seen below. It was filed in Class 025 for "[c]lothing, namely, football jerseys."
The application claims the colors red, black, and white as a feature of the mark, and it describes it as "a two-dimensional representation of the mark, which consists of the design elements and color combinations appearing on a three-dimensional scarlet or red football jersey with the stripe pattern on both sleeves." According to the application, this jersey has been in use since at least September 22, 1979.

How can a university claim trademark protection for a simple looking jersey? By showing that the jersey has become distinctive through the university's exclusive and continuous use of the mark for decades. Essentially, that means the University is claiming that the jersey does not just depict a red, black, and white jersey, but it depicts a jersey that is so well known it is associated with the University. If a descriptive trademark acquires this distinctiveness, it is capable of obtaining a federal trademark registration.

The recent trademark application is not the first filed by Ohio State to protect its uniforms. The University obtained trademark registrations for the uniform designs above in 2015. In those applications, the University successfully claimed the uniforms had acquired distinctiveness and were thus capable of trademark protection.

The University appears hopeful that a claim of acquired distinctiveness will also protect its most recent jersey filing.

Monday, February 22, 2016

Frontier Airlines Files Trademark Applications for Tail and Rudder Designs

If you've been to an airport recently, you may have seen bears, wolves, rams, deer, eagles, or other animals on the tail and rudder of a Frontier Airlines' aircraft. The airline regularly incorporates wildlife photographs onto the tail of its planes. According to recent filings at the United States Patent and Trademark Office, the airline is also seeking federal trademark registrations for the same.
On February 17th, Frontier Airlines, Inc. filed three federal trademark applications for polar bears (seen above), an orca whale (seen below), and a buffalo, each in Class 039 for "[a]ir transportation services, namely the transportation of cargo, freight and passengers."
These applications are for design marks consisting of "a live-action photograph of a wild animal printed on both sides of the upright sections of the tail and rudder." According to the applications, Frontier is already using these trademarks in commerce, so there are likely planes already in the fleet with these designs.

Frontier also has five other federal trademark registrations for similar tail and rudder designs. The existing trademark registrations are for bunnies, wolves, polar bears (in the form of a different photograph), a lynx, and a brown bear. By securing these registrations, Frontier is effectively prohibiting any other airline from displaying similar designs on the tail of its aircraft.

Thursday, February 18, 2016

Apple Files Trademark Applications for SMART CONNECTOR Interface

On February 13th, Apple, Inc. filed federal trademark applications for SMART CONNECTOR and APPLE SMART CONNECTOR in Class 009 for "electrical and electronic connectors; electronic connectors for handheld mobile digital electronic devices and keyboards." These applications refer to the new design interface that allows communication between Apple's Smart Keyboard and the iPad Pro, as seen below.
These trademark applications are not to be confused with patent applications. Trademarks will only protect the terms SMART CONNECTOR and APPLE SMART CONNECTOR as used on electronic connectors. In other words, it would prevent another person or entity from using a term similar to "Smart Connector" to describe some sort of electronic connector. It does not protect the way the Smart Connector works. A patent application is required for that.

These two applications bring the total number of federal trademark applications filed by Apple, Inc. to 936 (that's a lot of filing fees), with 716 of these filings still being active (applications not yet registered plus registrations), and 553 live, registered trademarks. That's quite a portfolio.

Wednesday, February 17, 2016

ANOTHER ONE - DJ Khaled Files 9 Federal Trademark Applications

A couple weeks ago, I blogged about DJ Khaled filing a federal trademark application for WE THE BEST related to music recordings and entertainment services. The phrase is commonly used by the artist to promote himself, namely on social media.

Those of you who follow DJ Khaled on social media know WE THE BEST is only one of the phrases the DJ uses to promote himself. On February 12th, he filed 9 other federal trademark applications for his other common phrases, seen below, including KEYS TO MORE SUCCESS, ANOTHER ONE, and BLESS UP.
The first three marks seen above were filed in Class 041 for a variety of entertainment and education services. The last seven applications were filed in Class 025 for "[s]hirts, tops, headwear, and footwear" (the application for ANOTHER ONE was filed in both Class 041 and Class 025).

According to the applications, DJ Khaled is currently using all of these trademarks in commerce, with the earliest date of use being 2003 (for KEYS TO MORE SUCCESS) and the most recent date being just December of last year (for most of the applications in Class 025).
DJ Khaled even went so far as to file a trademark application the emoji key seen above in Class 041. The specimen of use for that trademark (i.e. evidence showing use of the mark in commerce) is shown below.
As with his previous trademark application in late January, all these applications were filed by Sedlmayr & Associates. If the applications filed by DJ Khaled mature into registrations, he will obtain the exclusive, nationwide right to use the terms (and emoji "key") on the goods and services listed in the respective applications. And that's a major key to success.

Tuesday, February 16, 2016

Quaker Oats Files Trademark for Football Inspired Cereal

Do you love Cap'n Crunch and football? Then Quaker Oats is coming out with a cereal for you. On February 11th, company filed a federal trademark application for CAP'N CRUNCH'S TOUCHDOWN CRUNCH in Class 030 for "[b]reakfast cereals; [r]eady-to-eat cereals."
The company filed this trademark application on an intent-to-use basis, meaning it is not currently selling this cereal. However, this cereal is not something new. The Quaker Oats Company filed the same application back in 2008 when it ran a limited edition version of Cap'n Crunch's Touchdown Crunch.

Why file another application for the same trademark on the same goods over six years later? Likely because the mark was not continuously used in commerce over the past couple years. Between the fifth and sixth year after a registration, a trademark owner must file a sworn statement (called a Section 8 affidavit) claiming that the mark is still being used in commerce to keep a registration alive. 

The Quaker Oats Company did not file that affidavit for the original registration. Although the company can file the affidavit for a period of six months after the deadline for an addition fee (June 1, 2016 in this case), the company cannot do so if it is not actually using this mark. Therefore, it filed an intent-to-use application instead, which does not require actual use in commerce yet.

This sounds complicated from a trademark standpoint, but it essentially indicates that The Quaker Oats Company ran a limited edition touchdown version of the cereal, stopped selling it, and now has plans to do so again.

Monday, February 15, 2016

Parody Mark for NOTSPORTSCENTER Filed...Will It Register?

It's not often an applicant attempts to file a federal trademark application for a parody mark, but that is exactly what a company in Florida did on February 10th (with the help of a Florida intellectual property attorney, I might add).

On February 10th, Notsportscenter, LLC, a Florida limited liability company, filed a federal trademark application for NOTSPORTSCENTER in Class 041 as it relates to "[e]ntertainment services in the nature of online news in the field of athletic sports and humor; entertainment services, namely, providing a web site featuring literature, video clips, film clips and other multimedia materials all featuring athletic sports and humor; providing information in the field of entertainment in the nature of humor relating to athletic sports; entertainment information regarding athletic sports and humor via the Internet, electronic communications networks, computer networks and wireless communications network."
The date of first use is listed as April 1, 2013 and the mark appears to relate to a website and Twitter account (which has over 422k followers) that is a parody of ESPN's SportsCenter.

Those who are familiar with trademarks know that, although several factors go into the analysis, trademark infringement generally occurs when someone adopts a mark that is the same or similar to a pre-existing mark and uses it on goods or services related to those offered by the senior user (thus creating, at least in theory, a likelihood of confusion among consumers). For this reason, the U.S. Patent and Trademark Office will refuse to register trademarks that are confusingly similar to previously filed marks.

Parody marks, however, can sometimes overcome this likelihood of confusion bar because it is obvious that that mark is a parody and not associated with the senior user (in this case, the mark itself, and several disclaimers on the website and Twitter account, make it pretty clear that this entity is "NOT" SportsCenter). This obviousness negates any likelihood of confusion.

However, parody marks do not always survive a likelihood of confusion analysis because "[t]here are confusing parodies and non-confusing parodies." J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §31.153 (4th ed. 2010); see TMEP 1207.01(b)(x). "[P]arody is not a defense if the marks would otherwise be considered confusingly similar." Nike, Inc. v. Maher, 100 USPQ2d 1018, 1023 (TTAB 2011).

In the past, the Trademark Trial and Appeal Board (TTAB) has held CRACKBERRY, when used on clothing and online computer services, to be confusingly similar to BLACKBERRY. Research in Motion Ltd. v. Defining Presence Mktg. Grp., Inc., 102 USPQ2d 1187, 1192 (TTAB 2012). Additionally, LESSBUCKS COFFEE was held to be confusingly similar to STARBUCKS COFFEE when used on identical services. Starbucks U.S. Brands, LLC v. Ruben, 78 USPQ2d 1741 (TTAB 2006).

It's clear that the services offered under the SPORTSCENTER mark and NOTSPORTSCENTER mark are extremely related, if not identical. Therefore, the question becomes: is NOTSPORTSCENTER likely to confuse consumers as to whether the mark is associated with or sponsored by SportsCenter and ESPN? Is the addition of "NOT" to the mark enough to make this a parody? The applicant and its attorney appear to believe so, although they might be up for a fight if ESPN takes notice of this one.

Thursday, February 11, 2016

Shock Top Files Trademark Application For Beer Tap

Beer taps take all kinds of shapes and sizes. Some companies put a great deal of thought and design into how their handle will look to bar patrons. In the case of the Fulton Street Brewery (the operators of Goose Island), who make Shock Top beer, the design and thought that went into their beer tap likely led them to file a trademark application to protect its the look.

On February 5th, the Fulton Street Brewery, LLC filed a federal trademark application for the beer tap seen below. The brewery filed this application in Class 020 for "[n]onmetal taps for kegs."
According to the application, Fulton Street Brewery started using this tap on December 31, 2009.

Although most people think of words and phrases as trademarks, this application demonstrates the ability to file a trademark application to protect a design feature of a product. The design of a product is generally registerable as a trademark as long as it is not functional. Section 2(e)(5) and Section 23(c) of the Trademark Act prohibit the registration of "matter that, as a whole, is functional."

A feature is functional if it is "essential to the use or purpose of the article or if it affects the cost of quality of the article." TMEP 1202.02(a)(iii)(A); TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33, (2001). The Trademark Office will consider the following factors when determining if an article is functional, and thus not protectable as a trademark:
  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.
TMEP 1202.02(a)(v). Unlike patent law, trademark law is design to protect a company's reputation and goodwill, not the way something works. Thus, 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." Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995).

The design of the Shock Top tap does not have any apparent utilitarian advantages. It does not make the pouring of beer any easier. It is not the most inexpensive way to make a tap. And it does not prevent others from designing their own versions of a efficient beer tap. Instead, it is highly creative and displays a unique design that is much more artful than fucntional. Thus, I do not think Fulton Street Brewery will have any functionality issues with getting this trademark registered.

Tuesday, February 9, 2016

ALFRED HITCHCOCK Trademarks Filed by Late Director's Estate

On February 4th, Alfred Hitchcock, LLC, the legal entity that owns the rights to Alfred Hitchcock's works and is operated by his estate, filed multiple trademark applications at the U.S. Patent and Trademark Office for the late director's name (word marks) and for the logo seen below (design marks).
Both the word mark applications and the design mark applications were filed in the same classes of goods and services. The applications seek to protect the use of the name ALFRED HITCHCOCK and the logo seen above on recordings of motion pictures and TV shows, computer software, jewelry, clothing, toys, and wines and liqueurs. The applications for these goods were filed on a intent-to-use basis, meaning the estate is not using the trademarks on these items in commerce yet, but has a bona fide intention to do so soon.

Further, the estate is actively engaged in the licensing of photographs, as seen below, and filed a word mark application and design mark application in Class 045 for the "[l]icensing of intellectual property."
Alfred Hitchcock, LLC owns two other trademark registrations, one for ALFRED HITCHOCK'S in Class 016 for "series of mystery books and periodicals; namely, mystery magazines" and the other for ALFRED HITCHCOCK PRESENTS in Class 009 for "a Series of Motion Picture Films for Theatrical and Television Use; a Series of Pre-Recorded Phonograph Records and Pre-Recorded Audio and Video Magnetic Tapes in Cartridges and Cassettes; Optical Viewers for Three-Dimensional Graphic Representations and Pictorial Inserts Therefore[.]"

The use of a deceased celebrity's name and likeness is also protected by right of publicity laws, which vary from state to state, but it is not uncommon to see estates supplement such rights by seeking federal trademark registrations such as these. In other words, just because an estate has not filed a trademark application for a celebrity's name on certain goods or services does not mean use of the name by another is lawful.

Monday, February 8, 2016

D.C. Comics Prepares for Wonder Woman Movie With Ten Trademark Filings

The new Wonder Woman movie isn't set to release for almost another year and a half (June 2017) but D.C. Comics is already taking steps to protect the movie's logo. On February 3rd, D.C. Comic E.C. Publications, Inc. filed ten federal trademark applications for the logo seen below.
D.C. filed each application in a different class of goods or services, hence the ten different applications for the same logo. By being in ten different classes, D.C. is attempting to secure a broad range of legal protection guarding against use of a similar logo on many different goods and services.

Some of the goods and services included in these applications are entertainment services related to video games, movies, and television shows, vegetable juice, cookies, toys and sporting goods, clothing, bags, books, jewelry, and cosmetics. D.C. filed each application on an intent-to-use basis, meaning the company is not currently using the marks in commerce yet (which makes sense given the release date of the movie).

It's not uncommon to see entertainment companies file trademark applications covering a wide range of goods and services prior to the release of a movie or television show. These trademark filings protect not only the show or movie itself, but also a wide range of merchandise associated with the goodwill generated by the production. The trademark filings prevent counterfeiters from filing similar marks, allow the company to more easily license use of the mark on a variety of goods, and help the company prevent counterfeit goods bearing the logo from entering the country.

Thursday, February 4, 2016

Do Your Fingers Need Socks? Try FINGERSOXX

Are your fingers often cold? Do you wish your fingers had socks like your feet? A recent trademark application may highlight the perfect solution for you. On January 31st, a creative individual in Florida filed a federal trademark application for FINGERSOXX as it relates to (you guessed it) "[c]lothing, namely fabric sleeves for fingers" in Class 025.
Good news - the applicant filed this application on a 1(a) basis, meaning he is already selling this unique creation. According to the application, he has been doing so since December 14, 2015 (although I could not find these items online via a quick search). If this applicant is successful in obtaining a registration for this mark, he will obtain the exclusive, nationwide right to use the term FINGERSOXX on goods related to clothing.

Wednesday, February 3, 2016

NASL Expanding West With Trademark Filings For San Francisco Soccer Team?

The North American Soccer League (NASL) may be expanding westward according to recent applications filed with the U.S. Patent and Trademark Office. On January 29th, a legal entity named FCSF, LLC filed three federal trademark applications for SF DELTAS, SAN FRANCISCO DELTAS, and the design shown below.
FCSF, LLC filed each application in five different classes of goods and services, including "entertainment services, namely, soccer exhibitions rendered live in a stadium, and through the media of television and radio and the internet," soccer balls, apparel, magazines, computer software, and mobile applications. The company filed each application on an intent-to-use basis, which means the entity is not using these marks in commerce yet but has a bona fide intention to do so in the near future. This makes sense given a NASL soccer team is not currently operating in San Francisco. 

According to the Empire of Soccer blog, subscribers to the group spearheading the effort to bring a NASL team to San Francisco received an email notifying them of the future club's name, San Francisco Deltas, on January 31st (just two days after the trademarks were filed).

According to my brief research, the NASL is a professional soccer league with 12 teams and is one league under Major League Soccer. The league has expanded rapidly in the past couple years, adding six teams between 2014 to the present. Most teams are located along the east coast of the United States with no teams being west of Edmonton. However, it appears that will change soon given these recent trademark applications.

Tuesday, February 2, 2016

Is MillerCoors Opening a Line of Bars and Restaurants?

MillerCoors, LLC might be moving into the bar and restaurant space according to a recent trademark filing at the U.S. Patent and Trademark Office. On January 28th, the company filed a federal trademark application for COORS.
Everybody knows the Coors brand of beers, that isn't the interesting part. The interesting part is the services listed on this particular trademark application. The company filed this COORS trademark application in Class 043 for "[b]ar services; [r]estaurant services." This application was filed on an intent-to-use basis, meaning the company is not using the COORS mark in conjunction with these services yet but has a bona fide intention to do so in the near future.

What does that mean? It means MillerCoors has developed some sort of plan to move into the bar or restaurant space (the bona fide intention requires more than just an idea for use). I wouldn't be surprised to see the company announce the opening of a bar or restaurant location sometime within the next year.

Monday, February 1, 2016

Panthers File Trademark for ONE CAROLINA Promotional Slogan

Super Bowl 50 is only days away and the Carolina Panthers are using the slogan and hashtag One Carolina to get fans in both North and South Carolina excited for the game. The slogan seems to be gaining wide appeal, and the Mecklenburg County commissioners even want to designate Super Bowl Sunday as "One Carolina Day."
But it was the team itself that filed a federal trademark application for the term on January 27th. The official owner of the mark is listed as Panthers Stadium, LLC, which is the owner/operator of Bank of America Stadium and is owned by the team's legal entity, Panther Football, LLC. The team filed the application in three different classes:
  • Class 016 for "posters";
  • Class 025 for "shirts"; and
  • Class 041 for "entertainment in the nature of football games; Organisation of sports events in the field of football"
The application was filed on an intent-to-use basis, so the team will still need to submit specimens showing actual use of ONE CAROLINA on the goods and services listed in the application before the trademark will register. However, if it does so the team's priority date in the phrase will relate back to the filing date of the application. In other words, be cautious selling goods related to posters or shirts (and don't organize football games) with the phrase ONE CAROLINA. The team is seeking exclusive, nationwide rights in the phrase, which is understandable considering the phrase is associated with the goodwill generated by the team and its impressive run this season.

The Panthers also filed a federal trademark application for PURRFECT earlier in January.