Tuesday, May 12, 2020

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

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

Kudos to Bauer for doing its part.

Monday, May 11, 2020

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

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

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

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

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

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

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

Friday, March 13, 2020

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

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

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

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

Tuesday, January 21, 2020

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

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

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

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