Today's Tip for Saving Your Trademark Filing Fee - Avoid Descriptive Marks

I've blogged about it many times before. Descriptive words and phrases are weak trademarks and cannot be registered with the U.S. Patent and Trademark Office, on the Principal Register at least, without acquiring distinctiveness (which isn't that easy). 15 U.S.C. 1052(e)(1); 15 U.S.C. 1052(f).

Descriptive terms do not typically serve as source indicators (aka trademarks) but rather describe the underlying goods or services (which, in theory, everybody should be allowed to do without risking infringement).

Consider the federal trademark application for COOLING MATTRESS PAD filed by a company in Pennsylvania on September 3rd. The company filed this application in Class 024 for "[b]ed sheets, fitted bed sheet covers, bed flat sheets, and pillow cases used in the bedding, health care, home-health care and nursing home industries made of biodegradable film created from renewable bio-polymer resources."

Is COOLING MATTRESS PAD merely descriptive of the underlying goods? Possibly. A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. TMEP 1209.01(b).

Therefore, if the bed sheets, bed sheet covers, and/or pillow cases sold under the COOLING MATTRESS PAD mark have cooling features, this application will likely receive a refusal under Section 2(e)(1) of the Trademark Act for being merely descriptive of the underlying goods. Whether these goods actually have a cooling feature is unclear from the description, so the Examining Attorney who reviews this application will likely request additional information. TMEP 814.

In any event, the applicant will need to correct the specimen it submitted with the application. A specimen shows the manner in which the mark is seen by the public. TMEP 904. For goods, a good specimen typically shows the mark on the goods labels, tags, or commercial packaging. See TMEP 904.03.

The applicant, however, only submitted the text seen above. The Examining Attorney should give the applicant an opportunity to submit a substitute specimen, which must have been being used in commerce at least as early as the filing date.

If the Examining Attorney does refuse registration of this application for being merely descriptive (or any other reason), and the applicant cannot overcome the refusal, the applicant's $225 nonrefundable filing fee will be lost.

CHONUT Sandwich Specimen is Delicious...But Will Be Rejected

On May 30th, an individual in New Jersey filed a federal trademark application for CHONUT. The applicant filed the application on a 1(a) basis in Class 030 for "[h]amburger sandwiches." According to the application, he has been using the term since February 2015.

All is good so far, until the applicant's specimen is examined (see above). While this may be a literal "specimen" of the sandwich, this is not the specimen the Trademark Office needs to register a trademark.

A specimen, for Trademark Office purposes, shows the manner in which a mark is seen by the public. TMEP 904. For goods, labels and tags, stampings, and commercial packaging showing the mark are all acceptable specimens. See TMEP 904.03(a)-(c). Websites can also be good specimens so long as the identified goods are displayed in close conjunction with the mark and there is a means for ordering the goods. TMEP 904.03(i).

Unfortunately for this applicant, his "specimen" shows the goods, not the mark. Fortunately for the applicant, the Trademark Office will give him an opportunity to fix the deficient specimen. To save his application (and filing fee), the applicant will need to submit a substitute specimen that shows the mark being used in commerce in conjunction with the goods. The substitute specimen must also have been in use in commerce at least as early as the filing date (in other words, he can't create a new specimen now).

On another note - the specimen was described as a "barbecue sandwich on a donut." Would that be good?

Is This DRUNKEN FRUIT Trademark Merely Descriptive?

On May 27th, two enterprising individuals from Brooklyn, New York filed a federal trademark application for DRUNKEN FRUIT. The individuals filed the application in Class 029 for "[f]ruit preserved in alcohol; [f]ruits preserved in alcohol; [f]ruits in preserved form." Sounds pretty good to me.

Is the trademark merely descriptive though? A mark is merely descriptive "if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services." TMEP 1209.01(b). I have a feeling the Trademark Office will deem DRUNKEN FRUIT to be merely descriptive of an ingredient, quality, or characteristic of the underlying goods (namely, fruits preserved in alcohol).

Merely descriptive terms cannot be registered as trademarks under Section 2(e)(1) of the Trademark Act until and unless they acquire distinctiveness in the marketplace.

This application's saving grace may be the fact that this trademark has apparently been in use since June 2008. Under Section 2(f) of the Trademark Act, if the applicants can show "proof of substantially exclusive and continuous use" of the mark "in commerce for the five years before the date on which the claim of distinctiveness is made," the Trademark Office will accept such use as prima facie evidence of the fact that the mark has become distinctive as applied to the applicant's goods (aka the mark has "acquired distinctiveness"). A showing of acquired distinctiveness is required to register a merely descriptive term as a trademark.

The applicants did not make the 2(f) claim on the application, but may do so if the examining attorney at the Trademark Office deems this mark merely descriptive. On another note - where can I buy this?

Physician Files Trademark Application for WEB MD, But That's Not The Only Issue

Every so often I find a trademark application that provides a great learning experience for applicants and demonstrates that importance of working with a qualified trademark attorney. An application for WEB MD filed by a physician in Mississippi on May 26th is one of those applications.

First, the obvious. The applicant's services listed in this application are in Class 044 for "[u]rology medical care services." You may have heard of a popular website called WebMD. That website has a trademark registration in a variety of classes related to healthcare, including a registration in Class 044 for "Consulting and counseling services in the field of preventative health care..." Given the similarity of the marks and the relatedness of the services, I believe the Trademark Office will refuse to register applicant's application, in part, for a likelihood of confusion with the pre-existing WebMD registration.

While it's true the services listed in the applicant's WEB MD application are not exactly the same as the services listed in the WebMD website registrations, they are in the same class and are related. See TMEP 1207.01(a)(i) ("...the goods and/or services do not have to be identical or even competitive in order to find that there is a likelihood of confusion."). 

Additionally, the WebMD website's services in Class 044 are worded broadly and could encompass the applicant's narrowly identified urology medical care services. See TMEP 1207.01(a)(iii) ("if the cited registration has a broad identification of goods or services, an applicant does not avoid likelihood of confusion merely by more narrowly identifying its related goods."). Finally, since the marks are identical, a likelihood of confusion can be found even if the services are not closely related. See TMEP 1207.01(a) ("... the more similar the marks at issue, the less similar the goods or services need to be to support a finding of likelihood of confusion.").

There are several other issues with this application, including:

• The applicant filed the application on a 1(a) basis but the specimen submitted is a letter to the examining attorney arguing against a likelihood of confusion refusal;
• Applicant added a translation statement stating "the English translation of MD in the mark is physician," but MD is not a word in a foreign language;
• Applicant filed an unnecessary 2(f) claim (and a 2(f) claim would not be available anyway given the limited use of the mark);
• Applicant addressed the unnecessary letter submitted with the application as "letter to patent attorney";
• Applicant invited examining attorney to text her.

In sum, this application is riddled with issues that could have been easily addressed by a trademark attorney. Unfortunately for the applicant, this means her $225 nonrefundable filing fee is all but lost.

PICKLEBALL JUNKIE Trademark Application in a Pickle

One of the most common trademark application mistakes I see, usually by pro se applicants, is filing a trademark application for a phrase on the front of a shirt. That is exactly what a North Carolina corporation did on April 3rd when it filed a federal trademark application for PICKLEBALL JUNKIE. The applicant listed "[a]thletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, [and] athletic uniforms" in Class 025 as the related goods.

The applicant submitted a picture of the t-shirt seen above as its specimen of use. However, phrases on the front of shirts are almost never function as a trademark because they are considered purely decorative (rather than indicating source). The Trademark Office explains "[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.

Specifically relating to apparel, the Trademark Office has said "[s]logans or phrases used on items such as t-shirts and sweatshirts...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).

So how does one protect a clothing related trademark? The Trademark Office again provides some insight - "[a] small, neat, and discrete word or design feature (e.g., small design of animal over pocket or breast portion of shirt) may be likely to create the commercial impression of a trademark..." TMEP 1202.03(a). Additionally, a trademark appearing on the tag of a shirt also typically functions as a trademark. See TMEP 904.03(a). I have blogged about trademarks on clothing before here.

The Trademark Office will not refund filing fees for applications refused registration as ornamental or decorative matter and the $225 filing fee the applicant paid for the PICKLEBALL JUNKIE application is probably lost as well. All the more reason to speak with a trademark attorney before filing a trademark application.

Side note - what is pickleball?

How To Lose Your Trademark Filings Fees - File For Male Genitalia

I don't even know where to start with this application. On January 10, an individual in Colorado filed a federal trademark application for the mark shown below.

The applicant filed this application in Classes 016 and 025. The goods listed in Class 016 are primarily related to decals and temporary tattoos. The goods listed in Class 025 are for a strange variety of apparel, including beanies, women's underwear, and "[c]lothing for babies, toddlers and children, treated with fire and heat retardants, namely, pajamas, jackets, shirts, pants, jumpers" (what??? - ed.). The applicant filed Class 025 on an intent to use basis but did not specify a basis for Class 016.

There are three glaring deficiencies with this application:

1. The mark is "scandalous" under Section 2(a) of the Trademark Act and will be refused registration on that basis. See TMEP 1203.01.
2. The applicant unnecessarily filed a TEAS RF application rather than a TEAS Plus, which would have saved him $100 in filing fees.
3. The drawing contains extra information (the URL) that is not part of the mark and is therefore unacceptable. See TMEP 807.01 - 807.02.

Section 2(a) of the Trademark Act prohibits the registration of marks that are immoral or scandalous. Much like trademarks that contain the word "F*ck," trademark applications for marks that involve graphic representations of genitalia will also be refused registration. See In re Wilcher Corp., 40 USPQ2d 1929 (TTAB 1996) (holding scandalous a mark for restaurant and bar services consisting of words DICK HEADS positioned directly underneath caricature of a human head composed primarily of graphic and readily recognizable representation of male genitalia, as it would be considered offensive by a substantial portion of the public).

Additionally, an applicant can secure a filing fee of $225 per class rather than $275, $325, or $375 per class if the application meets certain requirements. Typically, if an applicant can find its goods and services already listed in the Trademark Office's database, it can secure the $225/class filing fee. The common goods listed on this applicant's application are in the database, but the applicant paid $275/class anyway.

Finally, the drawing of the mark submitted (above) contains a URL that, according to applicant's comment in the application, "does not always appear in the image." This makes the drawing defective. Drawings must only contain one mark (the URL could be considered a separate trademark) and must only be limited to the mark and not contain extra information.

In sum, there are a number of deficiencies with this application that will result in an inability to register this trademark. Unfortunately for the applicant, this will be a costly learning experience. He paid $550 in nonrefundable filing fees that are all but lost because he did not consult with a trademark attorney. Now that's obscene. 

How to Lose Your Trademark Filing Fees - File For Unauthorized NFL Apparel

Take a look at the t-shirt design below. Did the combination of the city name and colors immediately bring a professional sports team to mind? Maybe the Pittsburgh Steelers? I'm guessing for most of you it did. That type of association with the goodwill of another, when unauthorized, is exactly the type of harm trademark laws are designed to prevent.

It's also the reason seven trademark applications recently filed in the U.S. Patent and Trademark Office (USPTO) by an individual in Philadelphia are as good as dead. On January 7th, that individual filed six other federal trademark applications for similar t-shirt designs related to other cities and teams as seen below.

The individual filed all these applications in Class 25 for "athletic shirts" and spent $1,575 in filing fees ($225/each). Those filing fees are nonrefundable, even if the applications do not mature into a registration (which is this case is extremely likely).

The Pittsburgh Steelers (like every other professional sports team) own a variety of federal trademark registrations. For example, the team owns a federal trademark registration in Class 25 for a black and yellow design on jerseys. The jerseys are so similar to the athletic shirts, which also claim black and yellow as a feature of the mark, filed by the individual in Philadelphia (both are apparel). The USPTO will almost certainly issue a likelihood of confusion office action refusing to register this individual's mark given the previous registrations.

If that does not happen, the NFL or the team will oppose this trademark application and send a cease and desist to the applicant. As most trademark attorneys, including myself, know from personal experience, professional sports teams are incredibly aggressive about protecting their intellectual property. Besides their federal registrations, most teams claim a broad range of common law trademark rights that encompass use of the team's colors in conjunction with the city name (or anything that could be associated with the team like a mascot, nickname, logo, or design).

Of course, selling merchandise of a professional sports team is perfectly legal with a valid license from the team. In this case, however, it does not appear that the individual who filed these applicants has a license. Unfortunately, that means his $1,575 in filing fees will be lost, he will receive a cease and desist from the NFL or the team (which is more likely now that he made himself known with these public filings), will likely be required to destroy any merchandise he ordered, he may need to turn over his profits to the NFL or the team, and he risks personal liability for infringement because he listed himself individually as an owner of the trademarks rather than a business entity.

How do you avoid getting yourself into the same predicament? Obtain a license from the team before selling any merchandise and hire an attorney to assist you. In a brief initial consultation (which probably would have been free), any good attorney would have alerted this applicant that these trademark filings are not advisable and could put himself at significant risk of liability. In other words, a five minute phone call could have saved him $1,575.

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] registered...as 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.

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.

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.

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:

• NOT PASTA for a pasta substitute;
• NOT MAYO for a vegetable based mayonnaise substitute;  
• NOT YOGURT for a dairy free yogurt substitute;
• NOT MILK for a dairy free milk substitute;
• NOT CHOCOLATE for a dairy free chocolate substitute.

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.

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.

Now We Have DOLLAR TAPE CLUB....

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.

DOLLAR TOOTHBRUSH CLUB Confusable with DOLLAR SHAVE CLUB?

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.

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.

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)?

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.

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.

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.

PEEPLE v. PEEPPL - Trademark for Controversial Peeple App in Serious Jeopardy

Yesterday the Internet was in an uproar about a new app called Peeple, which is set to hit Apple's App Store this November. The Canadian based app has been dubbed a "creepy, Yelp-like app that lets you rate people like restaurants." That screams lawsuit to me.

However, the controversy surrounding the ethics of the app isn't the only issue currently facing the developers. The company's U.S. trademark applications are also in serious jeopardy. The U.S. Patent and Trademark Office suspended the applications due to a previously filed, conflicting application. Such a suspension indicates another company may have priority in the name, which will prevent PEEPLE from obtaining a federal trademark registration and potentially result in liability for trademark infringement. 

On February 6, 2015, Peep, Inc., the company that owns the app, filed two different federal trademark applications for PEEPLE. The first application is in Class 9 for "[d]ownloadable software, namely, to read, post, recommend, rate and share opinions on referrals relating to individual persons for the purpose of consumer information[.]" The second is in Class 35 for "[p]roviding a website, namely, to read, post, recommend, rate and share opinions on referrals relating to individual person for the purposes of consumer information[.]"

On May 17, 2015, the Trademark Office issued an Office Action suspending both applications due to a conflict with an earlier filed and similar application. The company's attorney submitted arguments claiming a likelihood of confusion with the earlier application did not exist but the Trademark Office issued suspension letters on June 8, 2015 for both applications, indicating it was not persuaded by the attorney's arguments.

Peeple's nemesis in the Trademark Office is PEEPPL (see the similarity?). This trademark, also filed by a Canadian company, lists a number of services that are similar to those offered by PEEPLE and listed on the PEEPLE application. Namely, PEEPPL listed on its application "[i]nternet social networking services...[c]omputer social networking software for uploading, downloading, retrieval, discussing and sharing of information, video, text and other media or multi-media...[d]ata transmission, namely, transmission of e-mails, personal profiles and information via the internet and messaging services via the internet; providing electronic bulletin boards for users to transmit messages, information, videos and text" and various related services.

PEEPPL filed its U.S. trademark application on April 3, 2014 but is basing its priority on a Canadian application filed December 13, 2013. PEEPLE also claimed priority based on a Canadian application, but its Canadian application was filed on December 8, 2014. Both PEEPPL's U.S. filing date and Canadian filing date clearly precede PEEPLE's, which means the PEEPLE trademark is in serious trouble.

The PEEPLE trademark application will remain suspended until the PEEPPL trademark registers. If it does register, Peep, Inc. will need to again try to convince the Trademark Office that a likelihood of confusion between the two marks does not exist. Given the substantial similaiarity between the marks and the relatedness of the goods and services, this will be very difficult. If Peep, Inc. cannot change the Trademark Office's mind, it will not be entitled to a U.S. trademark registration and won't be able to use the PEEPLE mark in the United States without risking liability for trademark infringement.

Peep, Inc.'s saving grace may be that the PEEPPL trademark application is also suspended. Because the PEEPPL trademark's priority is based on a foreign registration, the owner is required to submit the foreign registration to the U.S. Trademark Office. The owners of PEEPPL have until March 28, 2016 to submit ithe foreign registration or the application will be deemed abandoned (unless it states their foreign registration is still pending, in which case it will be given additional time to respond). If the application is abandoned, it will clear the way for the PEEPLE trademark to finally register.

Peeple is currently causing a stir in the United States but the name might not be around long if it cannot maneuver its way around its suspension in the Trademark Office or work out a deal with the owners of the PEEPPL mark.