Wal-Mart Files 15 Trademark Applications for Member's Mark Logo

Wal-Mart Stores, Inc. had a busy day at the U.S. Patent and Trademark Office on September 12th, filing 15 trademark applications for the logo seen below.

Why 15 applications for the same thing? Each application was filed in a separate class of goods. Because the Trademark Office allows an applicant to file for the same mark in multiple classes, multiple applications for the same mark are not uncommon.

The goods covered by these applications are extremely broad and it appears this is a filing for the Sam Club's Member's Mark logo. Wal-Mart owns registrations for the old "M" logo seen below but, as often happens when a logo changes, the old registrations may not be sufficient to protect the new mark given the differences.

Some of the goods covered by these applications include lace and embroidery (in Class 026), meat, fish, poultry, and game (Class 029), tea and coffee (Class 030), furniture (Class 020), and pharmaceuticals (Class 005).

Given the intent-to-use nature of these applications, Wal-Mart will need to actually start using this logo in commerce in conjunction with these products for the mark to actually register in that class. Wal-Mart filed similar "M" applications in even more classes on September 9th.

According to my quick search, these new applications bring Wal-Mart's total trademark portfolio at the Trademark Office to 826 live applications or registrations.

Zipcar Files Trademark Applications for ZIPBIKE

The popular car sharing service Zipcar may be moving into bike sharing if recent trademark applications are any indication.

On September 8th, Boston-based Zipcar, Inc. filed two federal trademark applications in Class 039 for "Bicycle sharing services; vehicle sharing services, namely, providing temporary use of bicycles." One application was for the word ZIPBIKE while the other was for the logo seen to the right. The company filed both applications on an intent-to-use basis, which indicates Zipcar has a bona fide intention to use these marks in conjunction with the services listed in the applications in the near future.

These are the first bike-related trademark applications filed by Zipcar, Inc. The company does have a federal trademark registration for the logo seen above covering its motor vehicle sharing services, along with several other applications or registrations related to its car sharing service.

NBA Files 14 Trademark Applications Related to 2017 All-Star Game

September 7th was a busy day at the U.S. Patent and Trademark Office for NBA Properties, Inc. On that date, just one day before the NBA announced the new All-Star game logo, NBA Properties filed 14 trademark applications for various 2017 All-Star Game related logos (seven logos total - each logo was filed in two classes).

The NBA filed each application on an intent-to-use basis, which means the league is probably not using the marks in commerce yet, but has a bona fide intention to do so in the near future (which makes sense given the game is not until next year).

The goods and services covered by these 14 applications are broad. Some of those goods and services include entertainment and educational services in the nature of ongoing television and radio programs in the field of basketball and rendering live basketball games, coaches clinics and camps, video stream recordings, online games, and online publications (all in Class 041) and a variety of clothing in Class 025.

According to NBA.com, New Orleans was selected as the site of the 2017 NBA All-Star game a couple weeks ago. The game will be played on Sunday, February 19 at the Smoothie King Center (home of the New Orleans Pelicans).

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.

RoboCop Reboot? New Trademark Applications Related to Potential Streaming Show Filed

Recent trademark applications filed at the U.S. Patent and Trademark Office hint that RoboCop may be coming back in the form of a streaming internet series. On August 26th, Orion Pictures Corporation in Beverly Hills filed two new trademark applications for ROBOCOP (the company owns four other registrations for ROBOCOP covering other goods and services).

Orion filed the first application in Class 041 for "Entertainment services, namely, production and distribution of a series of motion pictures featuring drama, action, crime, science-fiction and suspense." The first use date listed for those services is December 8, 1986 (probably when promotion of the July 1987 release of the original movie commenced).

It is the second application for ROBOCOP, however, that is more interesting. Orion filed that application in Class 041 for "Entertainment services, namely, an ongoing series featuring scripted action/drama provided through the internet; entertainment services, namely, providing ongoing webisodes featuring scripted action/drama via a global computer network[.]"

An ongoing series provided through the internet and webisodes (aka streaming)? Like a Netflix series? Amazon Prime? As a RoboCop fan, that all sounds good to me.

Orion filed the second ROBOCOP application on an intent-to-use basis, suggesting the film company is not using the mark in conjunction with an online streaming show yet but has a bond fide intention to do so in the near future. In other words, a streaming RoboCop series may be in the works. Stay tuned.

Is Korn Bringing Back The Family Values Tour? Recent Trademark Applications Provide Hints

The metal band Korn created The Family Values Tour back in 1998 with the hopes of starting an annual rock and hip hop tour. In its heyday, the Tour included the likes of Limp Bizkit, Ice Cube, Stone Temple Pilots, Linkin Park, Method Man and Redman, DMX, and Evanescence. The Tour, however, has not seen any life since its one day festival in 2013. Until now.

On August 25th, an entity called Family Values Returns, LLC filed three federal trademark applications for THE FAMILY VALUES TOUR. The goods and services covered by these applications include:

• Class 041 - Entertainment services, namely, organizing touring festivals featuring heavy metal bands;
• Class 016 - posters, postcards and stickers;
• Class 025 - t-shirts, jackets and hats; and
• Class 009 - Musical sound recordings, namely prerecorded compact discs and audio tape cassettes featuring music; video recordings, namely prerecorded video tape cassettes and digital video discs featuring musical performances and entertainment.

Sounds a lot like a music tour to me. These applications were filed on an intent-to-use basis, meaning the mark is [probably] not being used in commerce yet, but the applicant has a bona fide intention to use it on the listed goods and services in the near future. TMEP 1101; 15 U.S.C. 1051(b).

The original THE FAMILY VALUES TOUR trademark registrations (now dead) were filed back in 1998 and 2003. Those registrations covered the exact same goods and services listed above and were owned by an entity called Family Values Tour, LLC.

While these new trademark applications do not guarantee THE FAMILY VALUES TOUR is coming back, the intent-to-use basis of the applications does suggest some sort of plans to bring the tour back are in the works.

Oakland Raiders File Multiple Trademark Applications for LAS VEGAS RAIDERS

Just days before Senator Harry Reid voiced support for a new football stadium that could bring the Oakland Raiders to Las Vegas, The Oakland Raiders limited partnership filed three federal trademark applications for LAS VEGAS RAIDERS covering a variety of goods and services. The team filed the applications with the U.S. Patent and Trademark Office on August 20th.

Some of the goods and services covered by these applications are:

• "Education and entertainment services in the nature of professional football games and exhibitions; providing sports and entertainment information via a global computer network or a commercial on-line computer service or by cable, satellite, television and radio; arranging and conducting athletic competitions, namely, professional football games and exhibitions" in Class 041; 
• Clothing, footwear, and headwear in Class 025; 
• "Downloadable software in the nature of mobile applications for displaying information relating to football exhibitions, football schedules, media guides, and audio and visual recordings relating to football exhibitions; downloadable electronic game software for use on mobile devices, computers, and video game consoles" in Class 009; 
• Football helmets in Class 009; and
• Trading cards in Class 016.

The NFL team filed each application on an intent-to-use basis, signifying the team is not yet using this mark in commerce (obviously), but has a bona fide intention to do so in the near future.

Does this mean the Oakland Raiders are officially moving to Las Vegas? Not necessarily, but it's a step in that direction. As I've blogged about before, the San Diego Chargers filed federal trademark applications for LA CHARGERS before considering a move to Los Angeles earlier this year.

The August 20th applications are the first trademark applications for LAS VEGAS RAIDERS filed by the Oakland Raiders.