–Catlan McCurdy, Attorney
The band LMFAO is coming to Minneapolis this May. The band’s name, a mouthful of letters sadly capable of no shorter nickname, is derived from Internet slang that evolved from LOL to LMAO to LMFAO. If you don’t know the meaning behind each acronym, I’ll leave your capable fingers to the Internet searching.
LMFAO has been on my mind a lot lately. A prior engagement is preventing me from attending the concert, and my disappointment has evolved into watching the Party Rock Anthem video daily and constantly pondering where I’m going to wear my silver lamé leggings now. None of this is tongue in cheek – I’m actually really sad.
So, while driving down Portland Avenue the other day, a local radio station’s billboard caught my eye – “LMAO Dave Ryan” – and I wondered if the band’s increasing popularity and strong possibility of being played on that very radio station led the station to choose LMAO rather than LMFAO. Well, if so, it wasn’t because of a federal trademark registration.
LMFAO attempted to register five trademarks, all of which included the band’s name, in early 2008 and 2009. Three of the applications were rejected by the examining attorney on a 2(a) basis for consisting or comprising of immoral or scandalous matter (Ser. No. 77/732,029, 77/732,024, and 77/692,237). Notably, it was the same examining attorney that rejected the three applications on a 2(a) basis. Two different examining attorneys reviewed the other two applications, which did not receive 2(a) office actions. Inconsistent much, USPTO?
At this point, LMFAO and its attorney probably thought, “Well, she got us. We all know what the ‘F’ stands for and there’s no arguing about that.” The “F” in LMFAO could be said to be scandalous matter, and the band might have thought that there wasn’t a way to argue against it.
Enter stage left: an individual filed an application for the mark LMFAO (Ser. No. 85/337,050) in 2011. This applicant received an office action concerning the mark, not as to the scandalous nature of the mark, but as to its meaning. The examining attorney asked whether LMFAO had any significance in the applied for industry (clothing). Now you might think, “Ohh, busted.” “F” obviously stands for a four letter “term of art” I use when expressing my thoughts on Minnesota drivers – so how can one explain the meaning while not setting oneself up for a 2(a) refusal?
Ok, I’m not going to say “lie,” but I am highly suspect of the attorney of record’s response, that “LMFAO appearing in the mark means or signifies or is a term of art for Laughing My Freaking Ass Off in the relevant trade or industry or as applied to the goods/services listed in the application.” Thereafter, the examining attorney (not our friend who rejected the LMFAO band’s applications) approved the application for publication! Currently Ser. No. ‘050 has received a notice of allowance and is this close to registration.
Meanwhile, poor honest LMFAO the band has just been shuffling and getting no trademark love. Conflict. And someone must have told them. LMFAO hired a new atorney and filed four new applications for the LMFAO mark on March 16, 2012. To top it off, the attorney has taken a page out of the ‘050 applicant’s book. The new applications include the miscellaneous statement, “LMFAO stands for ‘laughing my freaking ass off.’”
At this point, who knows what will happen. I’m obviously rooting for LMFAO the band to pull through, but I don’t know if their upfront “disclosure” will save them from another 2(a) refusal, especially if the examining attorney gets on the old interwebs and searches for LMFAO. Will the band argue that the letter “F” has two meanings, the PG version and the R version? Will the examining attorney actually buy that argument? If anything, this situation demonstrates what many trademark attorneys already know – that the USPTO can be extremely inconsistent, and it’s up to us to put forth the best arguments on behalf of our clients. And sometimes we can be “inspired” by the arguments others have made. Good luck to the LMFAO and have fun in the Twin Cities!