Quarterly Index (4/1/16 - 6/30/16)

How To Lose Your Trademark Filing Fees:

• File REMOTE DRUG TESTING for remote drug testing services [merely descriptive]
• File LAS VEGAS BREWING COMPANY for a brewery [geographically descriptive/misdescriptive]
• File SNACKABLE GRANOLA for granola snacks [merely descriptive; generic]
• File PINT NIGHT for restaurant services [informational matter]
• File SUNDIAL FILM FESTIVAL [likelihood of confusion]
• File t-shirt slogans [ornamental use]

Entertainment Trademark Filings:

• DOUG THE PUG Files Trademark Application for Name, Covers "Live Appearances by a Celebrity Dog" [6/24/16]
• Capcom Files Trademarks for Resident Evil 7 [6/16/16]
• How I Met Your Father? Fox Files Trademarks For Potential Spinoff Show [6/14/16]
• HODOR Trademark Filed for Door Stops [6/9/16]
• Trademark Applications for New Instagram Logo Filed [5/16/16]
• DC Comics Files 11% of All Trademarks Filed With USPTO Last Saturday [5/12/16]
• Buzzfeed Files Trademark Application for Video App Icon [5/10/16]
• John R. Cash Revocable Trust Files 13 Trademark Applications [5/3/16]
• Universal City Studios Files 7 Trademark Applications for PETMOJI [4/27/16]
• ANOTHER ONE - DJ Khaled Files 9 Federal Trademark Applications [2/17/16]
• 26 Dr. Seuss Related Trademark Applications Filed [4/19/16]
• Netflix Files Trademark Application For Title Screen Sound [4/5/16]
• NBCUniversal Files Trademark Application for SONGLAND [4/4/16]
• Vintage Baywatch Trademark Filed As New Movie Develops [4/1/16]

Sports Trademark Filings:

• Steph Curry Files Multiple Trademark Applications Days Before Game 7 of NBA Finals [6/21/16]
• Trademark Filings Hint at Tucson AHL Team's New Name [6/8/16]

Food and Drink Trademark Filings:

• Boston Beer Company Files Trademark Application for BREXIT [6/29/16]
• Whole Foods Files Trademark Application for WORLD'S HEALTHIEST GROCERY STORE [6/28/16]
• JOE CUERVO - A Jose Cuervo Beer? [6/17/16]
• Frito-Lay Files Trademark Application for New Cracker Jack Logo [6/7/16]
• CHONUT Sandwich Specimen is Delicious...But Will Be Rejected [6/3/16]
• Is This DRUNKEN FRUIT Trademark Merely Descriptive? [6/1/16]
• Hershey Hints At New Candy With Recent Trademark Filings [5/4/16]
• BEER FOR BREAKFAST? Dogfish Head Files New Beer Trademark [4/25/16]
• Want to Drink Your Lemonheads? Your Favorite Candies Might Be Ciders Soon [4/20/16]

Other Unique Filings:

• Physician Files Trademark Application for WEB MD, But That's Not The Only Issue [5/27/16]
• eos Files Trademark Application for Popular Lip Balm Oval - Is It Functional? [4/29/16]
• Apple Files 1,135th Trademark Application with "Add to Apple Wallet" Icon [4/18/16]
• Amazon Files Trademark Applications For Wind, Solar Farm Logos [4/13/16]
• Is Michael Kors Developing a Smart Watch? [4/8/16]

Boston Beer Company Files Trademark Application for BREXIT

On June 24th, as the world was contemplating the consequences of the United Kingdom's "Brexit" vote to leave the European Union, others were filing applications to register the term as a trademark. One of those entities was the Boston Beer Company (the owner of the Sam Adams trademark).

On that day, the beer company filed a trademark application with the Trademark Office for BREXIT in Class 033 for "[h]ard cider." The application was filed on an intent-to-use basis. Don't be surprised if the Boston Beer Company comes out with a BREXIT Cider soon.

Applications to register BREXIT as a trademark were also filed on June 24th by an individual in Chicago in Class 025 for clothing and by a company in Colorado in Class 005 for dietary and nutritional supplements.

Whole Foods Files Trademark Application for WORLD'S HEALTHIEST GROCERY STORE

A recent trademark application shows Whole Foods is attempting to secure its place as the "world's healthiest grocery store" (or rights to that phrase, at least). 

On June 23rd, Whole Foods Markets IP, L.P. (which I assume is a limited partnership holding Whole Food's intellectual property assets) filed a federal trademark application for the phrase WORLD'S HEALTHIEST GROCERY STORE.

The grocery store filed this application in Class 035 on an intent-to-use basis for "[r]etail grocery stores; [r]etail and on-line grocery store services featuring home delivery service; [and] [s]upermarkets[.]" If Whole Foods is successful in registering this trademark, it will have the exclusive, nationwide right to use the phrase in conjunction with services related to those listed above.

However, registration of this phrase is far from guaranteed. For one, the store filed this application on an intent-to-use basis. This means the store will need to actually start using the mark in commerce, and provide sufficient proof of such use to the Trademark Office, before the mark will register. See TMEP 902.

Additionally, there is a significant risk that the Trademark Office will deem this phrase to be a common laudatory phrase that is too descriptive or generic to serve as a trademark. See TMEP 1209.03(s). Descriptive and generic phrases are prohibited from registration on the Principal Register under Section 2(e)(1) of the Trademark Act until they acquire distinctiveness. 

For example, in In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) the phrase THE BEST BEER IN AMERICA, as applied to beer and ale, was found to be "so highly laudatory and descriptive as to be incapable of acquiring distinctiveness as a trademark." This decision was based, in part, on the fact "that 'The Best Beer in America' is a common phrase used descriptively by others before and concurrently with Boston Beer's use, and is nothing more than a claim of superiority."

So is the phrase WORLD'S HEALTHIEST GROCERY STORE, as applied to retail grocery stores and supermarkets, so highly laudatory and descriptive as to be incapable of acquiring distinctiveness as a trademark, much like THE BEST BEER IN AMERICA? Are other grocery stores using a similar phrase? Is it nothing more than a claim of superiority? I think so. In approximately three months when this application is assigned to an Examining Attorney at the Trademark Office, we will find out if I am right.

DOUG THE PUG Files Trademark Application for Name, Covers "Live Appearances by a Celebrity Dog"

Live appearances by a celebrity dog? This is the world we live in now, apparently. On June 20th, L. Mosier Creative, LLC filed a federal trademark application for DOUG THE PUG. According to the application, this trademark has been in use since October 2, 2014.

The application was filed in Class 041 for:

Entertainment services, namely, live appearances by a celebrity dog; Entertainment services, namely, personal appearances by a celebrity dog; Entertainment services, namely, providing a web site featuring photographic, audio, video and prose presentations featuring a celebrity dog; Entertainment services, namely, providing images and text featuring animal stories and pictures on-line and in mobile wireless form; Entertainment services, namely, televised appearances by a celebrity dog; Providing a website featuring non-downloadable photographs; Providing a website featuring non-downloadable videos, namely, video presentations of a comedic nature; Providing a website featuring non-downloadable videos, namely, video presentations of a comedic nature; Providing on-line videos featuring a celebrity dog, not downloadable[.]

Not quite sure who Doug the Pug was, I did a quick search. Astounded, I discovered this pug has 1.8 million followers on Instagram, 4.7 million Likes on Facebook, 100k+ follows on Twitter, and his own website - www.itsdougthepug.com. In other words, this dog is much more famous than I will ever be.

If Doug the Pug is successful in registering this mark with the Trademark Office, he can take solace in the fact that he will be entitled to the exclusive, nationwide right to use his name in conjunction with the services listed above (unless some other dog was using this name with these services prior to him, in which case he won't have rights in that particular geographic area).

Doug also has pending trademark applications for his name in Class 022 for a variety of clothing items and in Class 016 for "calendars; greeting cards; holiday cards; gift wrap paper; gift wrapping paper; [and] wall calendars."

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

As I've blogged about many times (here and here, for example), an applicant who applies to register a certain trademark with the U.S. Patent and Trademark Office must take care to avoid marks that are merely descriptive.

Merely descriptive marks can only function as trademarks under limited circumstances and the Trademark Office will not register them pursuant to Section 2(e)(1) of the Trademark Act until those circumstances are met. A mark is considered merely descriptive if it "describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services." See TMEP 1209.01(b).

On June 16th, a company in Cocoa Beach, Florida filed a federal trademark application for REMOTE DRUG TESTING in Class 044 (which I'm not sure is correct because the filing is for a good not a service). The applicant describes its "service" as follows:

Service where a package is sent to a remote location (residence, home, etc) to collect bodily fluids such as urine, saliva, blood, skin, hair, and fingernails etc to perform any number of clinical lab tests including but not limited to toxicology, urinalysis, hematology, chemical analysis, and dna. Many of the kits include a video confirmation for identity and to capture on site test results. The collected specimens are then sent to the lab and the appropriate tests are performed and reported back in a number of ways; paper, text, email, web portal and smartphone apps

The specimen for the mark, which has been used in commerce since June 14, 2016, is seen above.

Is the term REMOTE DRUG TESTING merely descriptive of a feature, characteristic, or function of a drug test sent to remote locations? I think so. And given the applicant's very recent first use date, this mark has not "acquired distinctiveness" to overcome this barrier to registration.

Unfortunately for this applicant, if he wanted a registration on the Principal Register (which affords all the benefits of a federal trademark registration), his $325 nonrefundable filing fee (which could have been lower had it taken advantage of certain application options at the Trademark Office) is all but lost.

Steph Curry Files Multiple Trademark Applications Days Before Game 7 of NBA Finals

Steph Curry and his Golden State Warriors didn't outlast Lebron James and the Cleveland Cavaliers in the NBA Finals, but his attorneys were taking steps during the Finals to make sure his brand will last. On June 16th, Wardell Stephen "Steph" Curry filed four federal trademark applications for the variations of his name seen below.

The applications were each filed on an intent-to-use basis in Classes 009, 016, 025, 028, and 041 for a variety of goods and services. Some of the goods and services covered include: downloadable software applications for smart phones and mobile devices (009), books and magazines (016), sweatpants and sweatshirts (025), basketballs (028), and basketball and golf coaching (041).

Interestingly, these appear to be the only trademark applications filed for Steph Curry's name or listing Steph Curry as the owner of the mark. This may be part of the reason why the goods and services listed in each application are so broad.

One thing noticeably missing from these applications - Steph Curry's written consent authorizing the registration of these trademarks (probably because he was busy trying to win the NBA Finals when these applications were filed).

Under Section 2(c) of the Trademark Act, a trademark containing a living individual's name, signature, or portrait cannot be registered without the consent of that person. See TMEP 1206.01. However, the failure to include this consent with the initial application is not fatal to the registration. As long as Steph's attorneys obtain his consent when requested by the Trademark Office (which will occur in approximately three months after an examining attorney reviews these applications and issues office actions for failing to include this consent), the trademarks can still register.

JOE CUERVO - A Jose Cuervo Beer?

Jose Cuervo, the world's largest producer of tequila, might be moving into the beer market according to a recent trademark application filed by the company.

On June 13th, the tequila company filed a federal trademark application for JOE CUERVO in Class 032 for "[b]eer; brewed malt based alcoholic beverage in the nature of a beer; malt beer and non-alcholic malt beverages; non-alcoholic malt coolers." The company also filed this application in Class 033 for "[a]lcoholic beverages, namely, tequila extracts."

This application seems to indicate Jose Cuervo may be in the process of developing a "Joe Cuervo" beer although the intent-to-use basis of the application does not guarantee a beer will actually be released.

Although an intent-to-use application is only allowed when an applicant "has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce..." it does not guarantee (or require) that an applicant actually use the trademark in the future. See 15 USC 1051(b). All that it requires is a "bona fide intention" to use the mark, which can be found in the development of markets plans, product specifications, prototypes, etc.

This is not the first time Jose Cuervo has filed a beer-related trademark application. In October 2015, the tequila company filed JOSE CUERVO TRADICIONAL in Class 032 for "[b]eer; malt beverages, namely, ale, ale based cocktails, and beer based cocktails." That application was also filed on an intent-to-use basis and was published for opposition in March 2016.

Additionally, in 2012 Jose Cuervo filed an application for MISTICO in Class 032 for, in part, beer. That application was filed on an intent-to-use basis. The company has requested five extensions to file a statement of use (showing use of the mark in commerce and a required filing before registration can be finalized), which is the maximum number of extensions available. See TMEP 1108. If the company does not start using this trademark by November 2016, the MISTICO application will be abandoned.

Although Jose Cuervo has filed three different trademarks for beer in the past four years, none have reached registration yet. Will JOE CUERVO be the first?