Get to the Chopper: A Service Mark on a Helicopter?

-Wes Anderson, Attorney

When a business uses its trademark in connection with an ordinary billboard advertisement, should it try to register the billboard as another trademark unto itself?  I venture that nearly every trademark attorney would say no.  But what if the billboard was a helicopter?

MedLegal Network, out of Santa Monica, California, promotes personal injury and worker’s compensation legal services for Spanish-speaking consumers under the mark GRUPO MEDLEGAL, and also uses a Lion Design.   To advertise its services, MedLegal has sponsored traffic helicopters for Spanish-language television stations.   (I am reminded of the Sklar Brothers’ classic stand-up routine on “Chopper Four.”) They also feature these helicopters in television advertisements, as shown in two separate YouTube videos.

They’ve  already registered the MEDLEGAL word mark and have a pending application for a Lion Design, so what’s next?  Well, look no further than Application Serial No. 86/489,863, for” general business networking services” and “providing attorney referrals,” among other services.

According to the application, “The mark consists of the words GRUPO MEDLEGAL and a stylized depiction of a lion as placed on a helicopter.”   As the dotted lines indicate, no claim is made “to the specific shape of the helicopter.”

Add another to the file of non-traditional trademarks.  But is it registrable?  In order to register this mark for services, MedLegal must provide a specimen must “show[s] an association between the mark and the services for which registration is sought.”  Showing off the mark itself is not enough — the specimen needs some additional material referencing or describing the services.  Here, MedLegal provided four specimens — two screenshots of the aforementioned YouTube videos, and two shots of the helicopter itself, with MedLegal’s phone number displayed on the fuselage.

Is this an adequate specimen?  The videos themselves do appear connect the actual helicopter to MedLegal’s services (at least to a non-Spanish speaker).  And I’ve seen the USPTO accept far worse specimens.  But I wouldn’t be surprised to see this application receive an Office Action from a perplexed Examining Attorney.

I’m also left to wonder: what’s the benefit of this registration?  This is a very specific, and therefore narrow, mark.  A registration provides some protection for the GRUPO MEDLEGAL word mark, but is not nearly as effective as a standard character mark.  It will likely only prevent others from using wording similar to GRUPO MEDLEGAL and a Lion’s head design…on a helicopter.  And MedLegal is now obligated to continue to run advertisements featuring the helicopter in this configuration to support its use of the mark in future maintenance filings.

In essence, MedLegal isn’t much better off with this registration compared to the registrations they own now.  Their current Lion Design application, should it mature to registration, would be enough to go after a confusingly-similar mark, whether it was on a helicopter, a billboard, or a space ship.

The inimitable John Welch frequently asks on the TTABlog, “WYHA?” (Would You Have Appealed?).   After reviewing this mark, I’m left to wonder: Would You Have Applied?