Thursday, July 25, 2019

Hot Girl Summer is Here - Megan Thee's Record Label Files Five Applications to Register HOT GIRL SUMMER as a Trademark

It's been dubbed the "catchphrase of summer 2019" and now it's the subject of five federal trademark applications. Rapper Megan Thee reportedly coined the term HOT GIRL SUMMER earlier this year, which she says means "“It’s just basically about women — and men — just being unapologetically them, just having a good-ass time, hyping up your friends, doing you, not giving a damn about what nobody got to say about it." With the phrase taking off, it appears Thee's record company is now taking steps to protect it through federal trademark registrations with the U.S. Patent and Trademark Office.
On July 21, Theory Entertainment, LLC (the legal entity that owns the 300 Entertainment logo trademark registration, which is Thee's record label) filed five trademark applications for HOT GIRL SUMMER, each in a different class (hence the five applications), covering:
The applications were filed on an intent-to-use basis, which means the record label must actually use the phrase as a trademark for the listed goods and services before these applications can mature into registrations. See TMEP 1101 et. seq.

On that same day, Theory Entertainment filed trademark applications for REAL HOT GIRL SHIT, COGNAC QUEEN, and TINA SNOW, all covering the same goods and services. Back in April 2019, the label filed similar applications for HOT GIRL MEG and MEGAN THEE STALLION.

A few days ago, incorrectly reported that Thee filed a trademark application for HOT GIRL SUMMER on July 10. While an application to register HOT GIRL SUMMER as a trademark for clothing was filed on July 10, it was not filed Thee or her label, but rather by an individual in D.C. who appears to have no relation to the rapper. Procedurally, because that application was filed before Thee's applications, it will be a barrier to Thee's registration of the same mark, but Thee has several options for getting over that barrier, both inside and outside the USPTO (a cease and desist letter, obtaining an assignment of the mark, opposing the application, etc.). 

Tuesday, July 9, 2019

Toy Company WowWee Files Application to Register BOTTLE CAP CHALLENGE as a Trademark

Have you heard of the viral Bottle Cap Challenge making its rounds on social media in recent weeks? The challenge involves normal people (and celebrities) unscrewing a bottle cap with a round house kick. Exciting, huh?
One company, however, is trying to register the phrase as a federal trademark. On July 4, Hong Kong-based toy company WowWee filed an application to register BOTTLE CAP CHALLENGE as a trademark with the U.S. Patent and Trademark Office. The application covers "Games, toys and playthings" in Class 28. WowWee filed the application on an intent-to-use basis. TMEP 806.01(b); 15 USC 1051(b).

Does this mean WowWee can prevent others from using the term BOTTLE CAP CHALLENGE? No.

For starters, the vast majority of those using "Bottle Cap Challenge" are not using it as a trademark (i.e., to identify the source of goods or services). They are only using it as the name of a particular viral challenge. And this fact may make it harder for WowWee to register it as a trademark. See TMEP 1202.04(b) ("The more commonly a term or phrase is used in everyday speech or in an associational or affinitive manner by various sources, the less likely consumers will perceive the matter as a trademark or service mark for any goods and services.").

Further, WowWee's trademark application only covers "Games, toys and playthings." If this application actually registers, WowWee's trademark rights are limited to those goods and anything related to them. Selling unrelated goods or offering unrelated services under the same mark will not infringe the toy company's trademark rights.

And finally, because the trademark application was filed on an intent-to-use basis, WowWee must actually start using BOTTLE CAP CHALLENGE as a trademark for "Games, toys and playthings" and submit sufficient proof of such use to the USPTO before this mark can be registered. See TMEP 1103. If they never start selling toys under this trademark, the application will eventually go dead and the mark won't register.

According to my quick search, this is the first and only federal trademark application for BOTTLE CAP CHALLENGE pending with the USPTO.

My best guess as to why the toy company filed this application? They probably want to market some type of toy or game based on the Bottle Cap Challenge.