Tantalizing Trademarks™

Friday, October 9, 2015

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.

Wednesday, October 7, 2015

SOUTHERN TIER BREWING Trademark Filed For Cornhole Boards

On October 1st, the Southern Tier Brewing Company, LLC filed a federal trademark application for the stylized SOUTHERN TIER BREWING COMPANY logo seen below as it relates "[e]quiment sold as a unit for playing tossing games" (aka cornhole).

Why does the Southern Tier Brewing Company feel the need to file a trademark application specifically for cornhole boards? The move is probably designed to give them a leg up in fighting any unauthorized distributors of cornhole boards that bear the company's trademark.

While Southern Tier would have some legal rights to prevent such unauthorized use even without this registration, the registration will act as an extremely persuasive deterrent if attached to a cease and desist letter. Additionally, the Trademark Office will use this application as a basis for denying the registration of any similar names and logos if used on anything related to cornhole boards (because Section 2(d) of the Trademark Act prohibits the registration of a trademark that is confusingly similar to a previously filed mark).

This trademark filing is also an important warning to individuals and companies that create cornhole boards, apparel, or other items bearing the trademarks of others. Most companies are very aggressive in protecting their brand and will go after sellers of unauthorized products. Such sales can even result in criminal liability. Do not create items bearing the trademarks of others without seeking a license from the trademark owner (or at least speaking with a trademark attorney first).

Tuesday, October 6, 2015

Kansas Bank Files Trademark for FRAT CARD

For some reason, the Bank of Prairie Village in Prairie Village, Kansas has apparently decided to develop a line of debit cards directed at fraternity men and sorority women. The Bank filed four different federal trademark applications on October 1st for the following marks: FRAT CARD, FRATERNITY MAN CARD, SORORITY GIRL CARD, and SORORITY CARD.

All of these applications are intent-to-use applications (which means the bank is not selling these cards yet but has a plan to do so in the near future) and are related to "Banking services; Debit card services[.]"

Is Prairie Village even near a campus? Are these cards available to all college students or is a fraternity membership card required? What about alumni? Does the front of the card depict a game of beer pong?

Many questions surround this card but they start to make sense when one see the picture of the Bank's office on St. Patrick's Day - they are definitely fraternity men (as a fraternity man myself it is acceptable to make these judgments). I wouldn't be surprised to see a trademark application for FRAT BANK follow the trademarks above.

Monday, October 5, 2015

ED HARDY Water?

Remember that Ed Hardy apparel brand that was popular for about six months in 2009 (thanks Jersey Shore)? The brand featured gaudy tattoo-like patterns inspired by its creator, Don Ed Hardy, and his California tattoo shop.

For better or for worst, a recent trademark filing for ED HARDY at the U.S. Trademark Office suggests that the brand is still alive and moving into different areas...into the areas of "nutritionally fortified water, energy drinks, mineral waters, aerated waters, flavored waters and soft drinks." Hardy Way, LLC filed this ED HARDY trademark application on September 30th and made Don Ed Hardy's signature of record, which is required when a trademark identifies a living individual.

Ed Hardy water? It may be coming soon. Hardy Way, LLC filed this trademark application on an intent-to-use basis, which means they are not yet using this trademark in commerce but have a bona fide intention to do so soon.

I am picturing a gaudy, rhinestone covered water bottle selling for $19. We will find out if I'm right in the next year or so when it comes time for Hardy Way, LLC to file their Allegation or Statement of Use showing the trademark being used in commerce.

Friday, October 2, 2015

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.

Thursday, October 1, 2015

Trademark For Beer Pong Washer Filed

The game of beer pong just got more sanitary (note - is that possible?). No more dirty water cups filled with hair, dirt, and everything else on the floor of a college house. THE CLEAN CUP is here.

This trademark application, filed on September 25th by House Rules, LLC, is for "automatic game ball washers; game balls; table tennis balls; portable automatic game ball washers [and] [o]n-line retails store services featuring automatic game ball washers, table tennis balls, portable automatic game ball washers, and game balls."

If House Rules, LLC is successful in obtaining this trademark registration, it will have the exclusive, nationwide right to use THE CLEAN CUP as it relates to the listed services.

Is there a descriptiveness issue under 2(e)(1) of the Trademark Act though? Under that provision of the Act, a trademark that "merely describes" the goods or services listed on the application cannot be registered on the Principal Register. As mentioned in previous posts, 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).

Does THE CLEAN CUP describe an automatic game ball washer? In other words, a cup that cleans game balls? I could see it. If House Rules, LLC gets an Office Action citing Section 2(e)(1), it'll need a strong rebuttal shot to win this registration.