Today's Tip For Saving Your Trademark Filing Fee - Avoid Descriptive Trademarks

If you want to successfully obtain a federal trademark registration, you must avoid trademarks that are generic or highly descriptive of your goods or services. With few exceptions, these terms are incapable of serving as trademarks and cannot be registered with the United States Patent and Trademark Office (USPTO).

An example of a trademark that is highly descriptive is the recently filed mark above. The applicant filed this application in Class 032 for "[l]emonade" on March 13, 2016.

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). Additionally, slogans are not registrable with the USPTO if the slogan is "merely informational in nature, or...common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry." TMEP  1209.03(s). 

The reason these types of marks are not registrable as federal trademarks is because the law believes everybody should have the opportunity to use descriptive words and phrases to describe their goods or services (rather than give one entity a monopoly over the term).

Is the phrase FRESH SMASHED LEMONADE descriptive of an ingredient, quality, characteristic, or feature of lemonade? Is it informal or a common laudatory phrase ordinarily used by lemonade sellers? Probably, especially if the applicant is offering lemonade that is made by smashing fresh lemons. 

When this application is assigned to an examining attorney at the USPTO in approximately three months, I have a feeling an office action refusing to register this mark for being merely descriptive of the goods offered with it will be issued.

Name and Logo For Worcester, MA's New ECHL Team Possibly Revealed in New Trademark Application

Last month, it was announced that Worcester, Massachusetts would be getting an ECHL hockey team. Beyond that, little else has been announced. Speculation surrounded the team's name. Would it be the Worcester Whitehawks? The Railers? The Six?

A federal trademark application filed by ECHL Inc. on March 11, 2016 may provide the answers. On that date, the minor league hockey league filed an application for the logo mark seen above. The league filed the mark in Class 025 for "[c]lothing goods, namely, shirts, hats, jerseys, sweatshirts, jerseys [sic], pants, visors, and t-shirts" and in Class 041 for "[e]ntertainment services, namely professional hockey exhibitions."

Interestingly, Worcester ProHockey, LLC filed a federal trademark application for WORCESTER BLAST on February 22, 2016 for similar services, including "[p]rofessional ice hockey contests."

Which one will be the team's name? Likely the ECHL application, since that league owns the trademarks to every other ECHL team. 

One caveat - both these applications were filed on an intent-to-use basis. While this basis requires a bona fide intention to use the trademark in commerce, it is not a guarantee that the mark will actually be used (or that it is not being used already).

What Is This Trademark Filed by Google?

Google, Inc. filed an interesting federal trademark trademark application on March 4th. Is it a new version of the company's logo?

According to the application, this trademark is actually a motion mark. Google describes it as follows:

The nature of the motion is that of the word "Google" appearing from left to right in blue, red, yellow, blue, green and red which dissolves into four small solid colored circles of, from left to right, blue, red, yellow and green which slightly undulate then dissolve into four short vertical lines which are, from left to right, blue, red, yellow and green, forming the image of an equalizer. The vertical lines dissolve back into four small solid colored circles of, from left to right, blue, red, yellow and green which sharply bounce and come to a rest, ending the animation.

Google filed the application on an intent-to-use basis in Classes 009 and 038 for a variety of goods and services that seem to cover many of the well known, existing goods and services offered by the company.

Some of the listed goods and services include:

• computer software used for the control of voice controlled information and communication devices;
• computer software for accessing and searching online databases; and
• computer services, namely, providing a voice-controlled search engine for obtaining data, images, audio and video via a global computer network, namely, providing the following: satellite imagery, street maps, real-time traffic conditions, and route planning information, weather information, business and financial information; information, news and commentary in the fields of entertainment, cultural events, sporting events, popular culture, educational activities and events, recreational events, and technology; music, electronic books, and video clips, language translations, local business location information and recommendations, food and restaurant information.

The fact that Google filed this trademark on an intent-to-use basis indicates that the company is not using this trademark in commerce yet but has plans to do so soon. Keep an eye out for this moving trademark in the near future.

21 Beer Trademarks Filed on Single Day as Craft Beer Industry Continues to Grow

Every time I search the United States Patent and Trademark Office's (USPTO) website I run across multiple trademark applications for beers and breweries. As I've blogged about before, many breweries will file federal trademark applications for their brewery's name and for each new beer they release.

For example, on March 3rd twenty one federal trademark applications related to beer were filed by various breweries. A snapshot of those applications are seen below.

Many breweries take advantage of the intent-to-use application offered under the Trademark Act (15 U.S.C. 1051(b)). As long as an applicant has a bond fide intention to use a trademark in commerce in the near future, it can file this application to reserve priority in a name even before it is being used.

The large number of beer-related applications also crowds the field of trademarks in the craft beer industry. This makes a trademark search before using a name even more important (although a search should always be done no matter what). 

Imagine undertaking significant marketing efforts to develop and promote a specific beer only to receive a cease and desist letter from another brewery who started using a similar name before you. The costs of re-branding far outweigh the cost of an attorney to perform that initial search.

The best tip for choosing a beer name - make up a new word or choose something that is arbitrary and has nothing to do with beer. Those are the strongest types of trademarks and the easiest to protect.

Big Ten Conference Files Trademark for MARCH IS ON!

The Big Ten Conference appears to be preparing for March Madness with a recent trademark filing in the United States Patent and Trademark Office (USPTO).

On February 29th, The Big Ten Conference, Inc. filed a federal trademark application for MARCH IS ON! The conference filed the trademark in two classes:

• Class 038 for "[t]elevision transmission services for programming and content relating to sports; streaming of audio and video material on the Internet for programming and content relating to sports"; and
• Class 041 for "[e]ntertainment services, namely, sponsoring and coordinating the presentation of athletic events and contests; Entertainment services, namely, production and distribution of television programs relating to sports and sports entertainment; providing on-line information in the field of sports, television, video and audio entertainment via global communications network"

The application was filed on an intent-to-use basis, meaning the conference is not yet using this mark in commerce (probably because March Madness has not started) but has a bona fide intention to do so in the near future.

As far as the owner of the actual March Madness trademark, that would be the NCAA. The organization owns 12 live registrations for the term with the USPTO. Those applications protect the use of the phrase "March Madness" on a variety of goods and services, including cups and mugs, carbonated soft drinks and apparel, and [of course] basketball tournaments between college teams.

Back At It Again..."Damn Daniel" Meme Creators File More Trademarks

Earlier this week, I blogged about Daniel Lara and Josh Holz filing federal trademark applications for DAMN DANIEL with the United States Patent and Trademark Office. Well, the teens are back at it again.

On February 26th, two days after the DAMN DANIEL filings, the teens filed federal trademark applications for BACK AT IT AGAIN and DAMN DANIEL BACK AT IT AGAIN. These phrases are repeated over and over in the popular internet video released by Josh last month.

The teens filed these trademark applications in Class 025 for "[c]lothing, footwear, headgear" and in Class 041 for "[s]ervices having the basic aim of the entertainment, amusement or recreation of people." The entertainment services in Class 041 list a first use date of February 15, 2016 (the date Josh Holz posted the video to Twitter). According to the applications, the teens are not yet using the trademarks on the apparel listed in Class 025.

As mentioned in my previous post, the teens will obtain the exclusive, nationwide right to use the term BACK AT IT AGAIN and DAMN DANIEL BACK AT IT AGAIN on these goods and services if these applications mature into a federal trademark registration.

Is Amazon Getting Into The Language Learning Field?

Recent trademark applications at the United States Patent and Trademark Office indicate Amazon may be getting into the language learning field. On February 25th, Amazon Technologies, Inc. filed federal trademark applications for AMAZON ENGLISH and AMAZON ENGLISH plus design (seen below).

Amazon filed both applications in identical classes and both on an intent-to-use basis (meaning Amazon is not using these trademarks in commerce yet but has a bona fide intention to do so soon).

The goods and services listed on each application are numerous and include filings in Classes 009, 035, 038, 041, and 042. Those goods and services range anywhere from computer hardware, advertising services, streaming services, education services, and to providing platforms as a service. The services that stand out are "education services, namely, language learning services" in Class 041 and "providing a website featuring online non-downloadable software for assisting users with language learning" in Class 042.

Does this mean Amazon is coming out with some sort of language learning platform? That's a strong possibility. These two trademark applications give Amazon a wide range of legal protection - the word mark application protects the phrase AMAZON ENGLISH in a variety of fonts, sizes, and colors. The design application protects the look and feel of the logo. And of course, the large number of goods and services listed in the applications give Amazon protection if other entities use anything similar to AMAZON ENGLISH or the design on any goods or services related to those listed.

Keep a look out for an announcement regarding AMAZON ENGLISH soon.