Monday, February 26, 2018

Baker Mayfield's Agent Files Application to Register BAKER MAYFIELD as Trademark for Variety of Apparel & Entertainment Services (Including a Religious Television Series)

Oklahoma's Baker Mayfield, the 2017 Heisman Trophy winner, is one of the top prospects going into this year's NFL draft. And it he appears he is seeking to capitalize on the popularity of his name (and protect it) by filing an application to register it as a trademark with the U.S. Patent and Trademark Office.
On February 24th, Baker Mayfield's agency - Waterhouse Hayes, LLC - filed an application to register BAKER MAYFIELD as a trademark for a variety of apparel in Class 25 and a variety of entertainment services in Class 41. Jacob Perler of Waterhouse Hayes, LLC signed the application.

Some of the goods and services covered by this application include:
  • Men's, women's and children's clothing associated with a professional sports athlete or entertainment celebrity, namely, sports caps and hats, bandanas, sports pants, sports shirts, swimsuits, fitted shirts...;
  • Football, Basketball, and any Sports coaching;
  • Television entertainment, namely, an ongoing television series featuring content in the field of sports and religion;
  • Electronic and video games;
  • Entertainment services, namely, personal appearances by a celebrity and athlete; and
  • Charitable services, namely, providing sporting goods and camps to underprivileged children
Baker's agency filed this application on an intent-to-use basis, indicating the athlete is not using his name as a trademark in conjunction with all these goods and services yet, but has a bona fide intention to do so in the near future. 15 U.S.C. 1051(b); TMEP 806.01(b). Before this application can register, he'll need to actually start using his name as a trademark in conjunction with these goods or services and submit sufficient proof of same to the Trademark Office. TMEP 1103.

In addition to possibly clarifying some of the listed goods and services (which must be concise and cannot be indefinite), the Trademark Office will require Baker Mayfield to give his written consent to the registration of his name as a trademark. Section 2(c) of the Trademark Act prohibits the registration of a trademark that comprises the name or signature of a living individual without that individual's written consent. TMEP 1206 et seq. That consent was not submitted with the application.

According to my quick search, this is the first trademark application for BAKER MAYFIELD filed with the U.S. Patent and Trademark Office. Additionally, it appears to be the first federal trademark application filed by Waterhouse Hayes, LLC.

Friday, February 16, 2018

Ralph Lauren Files Application to Register RUFF LAUREN as a Trademark for Dog Apparel

Are you a Ralph Lauren fan who loves dogs? Does your dog prefer designer clothing? If so, this potential dog apparel line from Ralph Lauren might be for you.
On February 12th, PRL USA Holdings, Inc. (a holding company that owns many of Ralph Lauren's trademark applications/registrations), filed a federal trademark application for RUFF LAUREN with the U.S. Patent and Trademark Office. The application covers the following goods in Class 18:
Dog apparel; dog collars and dog collar accessories namely, bows and charms; dog leashes; dog parkas; dog shoes; dog carrying bags; pet accessories, namely, canvas, vinyl and leather pouches for holding disposable bags to place pet waste.
Ralph Lauren filed this application on an intent-to-use basis, suggesting it is not currently selling the goods listed in the application under the RUFF LAUREN mark but has a bona (ed. - not bone) fide intention to do so in the near future. 15 U.S.C. 1051(b); TMEP 1101. Before this application can mature into a registration, Ralph Lauren must actually start using this mark in conjunction with the sale of the listed goods and submit sufficient proof of same to the USPTO. TMEP 1103.

It appears Ralph Lauren filed this exact same application back in August 2014, also on a intent-to-use basis. Ralph Lauren filed five six-month extensions of time to show the proper use of this trademark for the purposes of the 2014 application, which is the maximum number allowed. The final deadline for the 2014 application is February 24, 2018. If Ralph Lauren doesn't submit sufficient evidence showing use of RUFF LAUREN by that date, the 2014 application will go abandoned, which is probably why it filed a new application for the exact same mark covering the exact same goods. The owner of an intent-to-use application can request up to three years of additional time, in six month increments, to show use of its mark after the application goes through the examination process (which itself takes several months) and receives a Notice of Allowance. 15 U.S.C. 1051(d)TMEP 1108.01.

According to my quick search, PRL USA Holdings, Inc. owns 327 active applications or registrations with the USPTO.

Thursday, February 8, 2018

First Application to Register CHICAGOWEST as a Trademark Filed, But Not By Who You Think

I've been expecting trademark applications for CHICAGO WEST to follow the birth of Kim Kardashian and Kanye West's daughter last month (after all, Beyonce spent about $12,000 on filing fees to file trademark applications for her twin's names last year), but it appears the first CHICAGOWEST trademark application isn't related to the celebrity couple.
Instead, the first CHICAGOWEST trademark application, which was filed by ChicagoWest, LLC on February 4th, covers "hot dog sandwiches; popcorn; sandwiches" and appears to be related to a food truck (the website actually pokes fun at the situation, thanks Kim and Kanye for naming their daughter after their food truck, and announces the release of a new menu item called BabyWest). According to the trademark application, ChicagoWest, LLC has been using CHICAGOWEST as a trademark since September 15, 2016 (long before the birth of Kim and Kanye's daughter).

Will there be beef (ha!) between ChicagoWest, LLC and Kim/Kanye? It depends. As an initial matter, Kim and Kanye would need to use CHICAGO WEST as a trademark to assert trademark rights in the name. Generally, this means they are selling goods or providing services under the CHICAGO WEST name, rather than merely using it as the name of their daughter.

Further, goods and services offered under a trademark must be related to those offered under another similar trademark for infringement to arise (or for the Trademark Office to refuse to register a later filed application under Section 2(d) of the Trademark Act). If Kim/Kanye do not use the CHICAGO WEST name as a trademark with any goods/services related to sandwiches, hot dogs, and popcorn, it would be difficult to assert infringement of ChicagoWest, LLC's mark (and Kim/Kanye could likely obtain a federal trademark registration for CHICAGO WEST for different goods/services).

Finally, ChicagoWest, LLC apparently started using CHICAGOWEST as a trademark in September 2016, well before the birth of Chicago West. Because the first to use a trademark is generally the senior user, and therefore has priority (at least in conjunction with the goods/services it offers), Kim/Kanye might have difficulty using and registering CHICAGO WEST as a trademark in conjunction with foods (and maybe restaurants). This would also make it difficult for Kim/Kanye to go after ChicagoWest, LLC for using or registering CHICAGOWEST as a trademark for sandwiches, hot dogs, and popcorn.

In sum, it seems unlikely that a fight will cook up between this food truck and Kim/Kanye (at least in the trademark context), but the actions of third parties are impossible to predict. Note that this is a trademark blog, so I won't go into detail about other laws that might be applicable, such as the right of publicity.