For the past several years, DuetsBlog has covered fashion house Louis Vuitton’s outlandish trademark “bullying” against law schools, dog toys, photographers, and movie studios. Most recently, we discussed the brand’s latest high-profile lawsuit against rival luxury canvas tote maker (sarcasm), My Other Bag, for trademark infringement and dilution.

To the casual observer, one might not be able to distinguish My Other Bag’s signature tote (which on one side says “My Other Bag,” and on the other has a cartoon picture of a bag) from that of Louis Vuitton’s “Speedy Satchel.” Case in point:

Too bad for Louis Vuitton the test for parody is largely based on the casual observer–or, at least those with “a modicum of intelligence.” Even they can tell that My Other Bag’s product was a joke, the District Court held.

My Other Bag Seeks Reimbursement for Louis Vuitton’s Obviously-flawed Lawsuit

After successfully defending itself against Louis Vuitton’s claims, My Other Bag filed a motion for attorneys’ fees incurred in responding to Louis Vuitton’s highly questionable suit, citing the Supreme Court’s recent decision in Octane Fitness v. Icon Health & Fitness, 134 S. Ct. 1749, 1758 (2014). The Lanham Act provides for attorneys’ fees in “exceptional cases,” and it is hard to see how this case might not be one of them, where the parody was–in the words of the District Court–“obvious.” Octane Fitness interpreted “exceptional” under the Patent Act’s identical language to depend on the circumstances and strength of a party’s litigating position (as compared to the typical case).

On January 8, 2018, the District Court–to the surprise of many–denied My Other Bag’s motion, sidestepping whether Octane Fitness applies to the Lanham Act and holding that fees were not appropriate for “several reasons.” Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., No. 14-CV-3419 (JMF), 2018 WL 317850 (S.D.N.Y. Jan. 8, 2018). They include:

  1. Although the District Court and the Second Circuit “did not find this case to be a particularly close call, it cannot say that Louis Vuitton’s arguments were so objectively unreasonable (as either a legal or factual matter) that no party ‘could see an opening . . . through which the argument[s] could be squeezed,'” primarily because dilution by blurring and infringement are fact-intensive and based on “subtle” multi-factor analyses.
  2. That a use is parody does not necessarily resolve a dilution or infringement claim, such as when a trademark is used as as designation of source, “and Louis Vuitton advanced colorable (albeit unsuccessful) arguments that [My Other Bag’s] totes designated Louis Vuitton as their source.” The District Court also ironically pointed to a “flawed and distinguishable” case that Louis Vuitton has previously won as evidence that its position was not objectively unreasonable.
  3. The fact that Louis Vuitton did not show loss of sales or diminution of status is irrelevant because dilution is actionable regardless of actual or likely confusion (citing 15 U.S.C. § 1125(c)(1)).
  4. Louis Vuitton did not litigate the case “in an exceptionally vexatious and coercive manner,” but rather using merely “acceptable, if aggressive, litigation tactics” that were in some instances “regrettable,” but not exceptionally bad.
  5. “Louis Vuitton’s aggressive efforts to protect its trademarks have, on occasion, veered toward the unseemly.” The David-and-Goliath match-up was also concerning. However, Louis Vuitton had good reason to aggressively seek enforcement of its marks because if it didn’t, it could risk losing its rights. Moreover, Louis Vuitton has a history of winning many of its cases.

The District Court’s Precedent Will Likely Lead to More Undeserved Settlements in Parody Defense Cases

It is difficult to agree with the District Court’s conclusion on fees in this case, especially in view of the fact that Louis Vuitton is branded as “one of the biggest trademark bullies around.” There is something to be said for diligent protection of trademark rights, but it’s one thing to go after a counterfeiter and quite another to cause a non-competing humorist to expend over $800,000 in its defense. That both the District Court and the Second Circuit actually called Louis Vuitton out for its failure to take a joke shows that the company’s litigating position was exceptionally laughable.

More importantly, the ruling lays out an impossibly-high standard in effect; if this case is not exceptional, it is hard to believe any other case with the same procedural history would be. What constitutes exceptionally “vexatious and coercive” behavior if not the bringing of an unreasonable lawsuit? Ultimately, the District Court’s precedent, if adopted by other courts, will likely lead to more undeserved settlements. The jokesters become the butt of their own jokes, and the humorless thread one more feather to their “unseemly” caps.

Thankfully others in the fashion industry, such as Chanel’s Karl Lagerfeld, show some semblance of fun–particularly as to tote bags. But given that the one he’s sporting below was made by Naco Paris in response to winning a trademark suit brought by Chanel, maybe not so much.

We’ve come a long way from April 1, 2017, until now, with the steady drumbeat — and ads galore — in preparation for the upcoming Super Bowl LII in downtown Minneapolis:

As the NFL promotes use of the SBLII hashtag, it is preparing to do battle, or at least stand in the way, of another hashtag mark that the USPTO published for opposition: #HereWeGo.

Turns out, the NFL and the Pittsburgh Steelers appear to be concerned with Jennifer Menichini’s application to federally register #HereWeGo for a variety of clothing items.

I’m guessing that the Steelers believe they have standing to try and block registration of Menichini’s claimed mark based on the Steeler’s fight song, apparently called “Here We Go.”

Stay tuned to see whether this results in a formal trademark opposition, as the deadline for the NFL and Steelers is currently the day before Super Bowl LII: February 3, 2018.

Last Friday was a big day for Erik Brunetti. He won his appeal at the CAFC, opening the door to federal trademark registration of his four-letter-word “fuct” clothing and fashion brand name.

The same door swung wide open for all other vulgar, scandalous, and immoral designations used as trademarks, because the 112-year old registration prohibition was found to violate free speech.

You may recall where I take a knee on the free speech argument as it relates to the government’s issuance of federal trademark registrations, see here, here, here, here, here, here, and here.

I’m continuing to believe Congress has the power under the Commerce Clause to distance itself from and not be viewed as endorsing certain subject matter on public policy grounds, especially when Certificates of Registration are issued “in the name of the United States of America.”

Having said that, I’m thinking the federal government has done a less than stellar job of articulating and advocating for this right, which may very well explain the current state of affairs.

What is striking about the CAFC ruling is its breadth. It isn’t guided by the Supreme Court’s Tam decision — requiring viewpoint discrimination — as the Tam Court found with disparagement.

The CAFC did not decide whether the “scandalous and immoral” clause constitutes impermissible viewpoint discrimination, instead it seized on mere content as lower hanging fruit for invalidation.

The problem with focusing on content alone is that it proves too much. Trademarks, by definition, are made up of content, and many other provisions of federal law limit the right to register based on content, so, if this analysis holds, what additional previously-thought-well-settled provisions of federal trademark law will fall? Importantly, some even allow for injunctive relief: tarnishment.

Asked before, but will dilution by tarnishment survive this kind of strict free speech scrutiny? According to the CAFC in Brunetti, strict scrutiny applies even without viewpoint discrimination.

All that leads me to explore with you Brunetti’s line of “fuct” clothing, and in particular, this t-shirt which is surprisingly for sale online, here.

We’ll see for how long it’s available online, or whether Mr. Brunetti will need to Go Further, to get another brand’s attention, hello, Ford:

It’s hard to imagine the famous Ford logo, consisting of the distinctive script and blue oval, not being considered sufficiently famous and worthy of protection against dilution — without a showing of likelihood of confusion. But, given Tam and Brunetti, is a dilution by tarnishment claim even viable, or is it just another federal trademark provision about to fall, in favor of free speech.

Just because Mr. Brunetti may be anointed with a federal registration for the word “fuct” doesn’t mean his depiction of the word in the above style and design is lawful for use or registration.

So, if Ford does pursue the Brunetti t-shirt, under a dilution by tarnishment theory, and if it were considered to be a viable claim, in the end, might Mr. Brunetti be the one, let’s say, uniquely suited — to vanquish tarnishment protection from the Lanham Act?

Or, will another potty-mouth brand be the one to seriously probe the constitutionality of dilution protection against tarnishment?

Last but not least, and sadly for me, last Friday also was a big day for Mr. Daniel Snyder too.

And whatever the man called a living creature, that was its name.

Genesis 2:19

Naming things is a fundamentally personal, human act that sometimes – in a profession all about brand names – we take for granted. It’s easy to forget when we are clearing, registering, and protecting names, that at a basic level we are engaging with an essential part of human existence not so far removed from the story of Adam’s naming of living creatures in Genesis. True, Adam may not have had to concern himself with trademarks and intellectual property rights, but we trademark lawyers do.

Lately, I’ve been thinking a lot about this act of naming and names – not brand names, but specifically, baby names. My wife and I are expecting a baby on December 1, and among many of the things to do, naming the baby is perhaps the most important. So while my wife and I work on that, I thought I’d use the opportunity to take a closer look at a case that reminds us of how a personal name can become something else – a brand name – and what happens next.

Ten years ago, while I was in law school taking my first trademark law course, the famous fashion designer Joseph Abboud was learning about trademark law the hard way: in court. The lawsuit (about suits) against Joseph Abboud claimed that his marketing and promotional activities as Joseph Abboud for a new clothing line called “jaz” infringed trademark rights to the name – you guessed it – “Joseph Abboud.” So how did it come to pass that the real person named Joseph Abboud was being sued for using his own name?

Well, it turns out that in his rise to the top of the fashion industry through the 1980s and 1990s, Joseph Abboud registered his personal name and variations as trademarks in connection with his clothing. Then, in 2000, Joseph Abboud sold his company JA Apparel and its trademarks, including the trademarks “Abboud” and “Joseph Abboud,” for approximately $65 million. As part of the transaction, Joseph Abboud transferred all of his rights to the following:

[T]he names, trademarks, trade names, service marks, logos, insignias and designations [of Joseph Aboud]. . . . and [a]ll rights to use and apply for the registration of new trade names, trademarks, service marks, logos, insignias and designations containing the words “Joseph Abboud,” “designed by Joseph Abboud,” “by Joseph Abboud,” “JOE” or “JA,” or anything similar to or derivative thereof, either alone or in conjunction with other words or symbols . . . for any and all products and services. . . .

In addition, the designer Joseph Abboud further agreed not to compete with the JA Apparel for a period of time.

But wouldn’t you know, the designer Joseph Abboud couldn’t sit idle and, despite his agreement, he began to engage certain third parties in preparation for the launch of a new line called “jaz” and began promoting it as Joseph Abboud, the fashion designer. When JA Apparel found out, it sued to stop Joseph Abboud on the grounds that it had acquired the exclusive rights to use the name Joseph Abboud, not just the trademarks. In other words, while perhaps “jaz” didn’t infringe the trademarks, Joseph Abboud’s use of his own name to promote it did, and furthermore it breached the contract. In a page right out of Mad Men, the attorneys for JA Apparel even published a full-page ad announcing that “The Finest Trademark Attorneys in the World Wear Joseph Abboud®.”

After a bench trial, the district court agreed with these finest trademark attorneys in the world and concluded that the agreement made by Joseph Abboud transferred not just certain trademarks to JA Apparel, but also the right to use his own personal name for commercial purposes, including in the phrases “a new composition by designer Joseph Abboud” or “by the award-winning designer Joseph Abboud.” Nevertheless, although providing “sweeping injunctive relief” was necessary to ensure that JA Apparel received the full benefit of its bargain, the court determined Joseph Abboud could make media appearances as himself or as a fashion expert, but not to promote clothing in competition with JA Apparel.

On appeal, the Court of Appeals for the Second Circuit found the word “name” as used in the agreement ambiguous and vacated the decision of the district court, remanding returning it for a full refund. Additionally, the court of appeals held that if the contract was not breached, then the district court would need to determine whether Joseph Abboud’s use of his own name constituted trademark infringement by examining specific proposed advertisements. For example, one advertisement featured the “jaz” mark prominently with an image of Joseph Abboud and the disclaimer “Designer Joseph Abboud is no Longer Associated or Affiliated with JA Apparel Corp., the owner of the Trademark ‘Joseph Abboud’TM.” Such advertisements presented the “jaz” mark and Joseph Abboud’s name in ways which might not be infringing or could reasonably be fair use.

On remand, the district court examined additional extrinsic evidence and discovered that the word “names” appeared only in the final draft of the agreement and that nothing in the discussions between the parties explained the reason for its inclusion. Instead, the word “names” was part “laundry list of words” under the “more general penumbra of ‘trademarks’” – essentially a substitute for “brand names” not “personal names.”   Reversing its prior conclusion, the court concluded that Joseph Abboud had not sold his personal name. Unfortunately, for Josheph Abboud, the inquiry did not end there.

The problem, the court explained, was that while Joseph Abboud may not have sold all rights to commercially use his personal name to JA Apparel, Joseph Abboud did register his name as a trademark and he did sell that trademark to JA Apparel. And in such circumstances, Joseph Abboud would be permitted to use his name to advertise his affiliation with other businesses, so long as such use was not in an “overly intrusive manner:”

This is a case in which an individual elected to use his name for many years as a trademark, building up substantial goodwill; he then sold the same, but intends to continue to commercially exploit his name by designing clothes in competition with the purchaser of the trademark. This case therefore presents an inherently difficult scenario, because Abboud’s use of his name in the sale of clothing will inevitably lead to consumer confusion.

The court’s solution was to allow the following ad and similar ads, with the addition of a conspicuous disclaimer making clear that Joseph Abboud, the designer, was no longer affiliated with Joseph Abboud, the apparel brand:

The court was even stronger in its approval of the following possible ad, proposed by JA Apparel, noting that the placement, size, and useage of Abboud’s name, together with the disclaimer (unreadable in the image below), arguably would remove the likelihood of any confusion:

The court was not so enthusiastic about the following ad, which it called “utterly confusing” because Joseph Abboud’s personal name would be used in a virtually identical way as the Joseph Abboud trademark, suggesting “jaz” is merely a sub-line of clothing:


The review of the ads above helped the court craft the following permanent injunction against Joseph Abboud, showing just what happens when a name becomes a brand name:

Abboud may not use his name in any manner on “jaz” clothes, labels, hang-tags, or product packaging.

Should Abboud choose to use his name in promotional and advertising materials, he must do so in a way that is not inconsistent with this Court’s fair use analysis.

Abboud’s name must be used descriptively, in the context of a complete sentence or descriptive phrase, and must be no larger or more distinct than the surrounding words in that sentence or phrase.

Abboud is to prominently display his trademark “jaz” (or any other trademark) elsewhere in the advertisement, both to alert consumers that “jaz” is the source—in the trademark sense—of the new clothing line, and to minimize any resulting confusion.

Finally, should Abboud use his name as proposed in [the ads] or anything similar, he must include a disclaimer of any affiliation with JA Apparel and products sold under the Joseph Abboud trademarks. The disclaimer must be displayed in a font that is no smaller than the accompanying text in which Abboud uses his name.

The lesson for all of us is that a personal name, when it becomes a brand name, becomes something that can be bought and sold just like any other trademark. And after that sale, while some personal uses of a name will be fair use, any use of the name as a brand name will likely result in confusion (if the goods are the same or related).  Sometimes the use of a personal name is inevitable, but business owners and celebrities should take care when they decide to use their personal name as the brand name for their business, especially if they are not exactly ready to retire from what made them famous and successful when they sell their business.  Otherwise, they may find themselves with a name that’s become something they can’t use.

Kim Kardashian West’s (“Kardashian’s”) company Kimisaprincess, Inc. won its motion to transfer a pending case against the company from Illinois to California. Danish makeup artist Kirsten Kjaer Weis (“KKW”) sued Kimisaprincess in Illinois alleging claims of trademark infringement, false designation of origin and unfair competition against Kardashian’s company.

Kim Kardashian and her family are no strangers to Duets Blog or the Courts. See Kardashian/Jenner TrademarksKardashians Caught Without Makeup, But Not The Way You’d Expect, and Keeping Up With The Kardashians.

Danish makeup artist KKW sells and distributes her products with a stylized KW brand or with her full name through fancy retailers such as Barney’s. In contrast, Kardashian’s company sells products in less expensive superstores such as Target, CVS and online. Kimisaprincess sells a brand of makeup called “KKW Beauty” after her initials that was released in June 2017. The products are sold exclusively online.

Makeup artist KKW alleges that she and Kardashian’s company are direct competitors. Because of Kardashian’s fame and celebrity, it is likely consumers will mistakenly believe KKW’s products—despite its prior rights to the trademark—is associated with Kardashian. This will damage KKW and prevent KKW from controlling the reputation and goodwill that KKW has established for her products.

Kardashian’s company brought a motion to transfer the pending case to California. Her company argued that that there is better access to documents and witnesses in California where Kimisaprincess and Kardashian herself are both located. In addition, third parties such as Kardashian’s momanger (as she’s known by the press), Kris Jenner and the company that designed Kardashian’s KKW Beauty products are also in California. Plaintiff lives in New York. There are not people or documents at issue located in Illinois.

In opposing the motion, Plaintiff Danish makeup artist KKW argued that Illinois was an appropriate venue, because actual confusion between her products and the KKW Beauty products had occurred in Illinois during a survey conducted about the products. The Court found this argument to be unpersuasive, because the KKW Beauty products are sold nationwide, so confusion would also occur in California.

The Court noted that there would be a marginal increase in cost to go to California, but it does not create a cost where none was. Plaintiff KKW would have to travel to Illinois too.

The showdown between the Danish makeup artist (KKW) and Kardashian’s Kimisaprincess will take place in California. Do you think the dispute will end up on the “Keeping up with the Kardashians” reality show?

Normally when we talk about stripes trademarks , we’re talking about iconic sportswear brand adidas. An avid litigant with respect to use of “three stripe” designs on footwear and clothing, adidas is a regular feature here at DuetsBlog, where we have discussed disputes with lululemon, Puma, and retail store Forever 21. But today we’re talking about a different three stripe brand, the blue-red-blue and green-red-green three stripe designs featured by luxury brand Gucci. Not everything is new though. Gucci’s foil in this dispute is no stranger to stripe-infringement claims, as our friend Forever 21 makes another appearance.

Over the past year, Gucci sent cease and desist letters to Forever 21 regarding the sale of clothing and accessories featuring a familiar striped pattern. Following an exchange of letters, Forever 21 struck first, filing a complaint requesting declaratory judgment that its sale of the products does not infringe Gucci’s rights, and requesting that the court cancel Gucci’s registrations on the grounds of lack of secondary meaning and/or genericness. In its answer, Gucci asserted claims of trademark infringement, trademark dilution, and unfair competition. Excerpts from Gucci’s answer displaying the clothing at issue are shown below (with additional examples here and here). 

 

In its answer, Gucci only addressed Forever 21’s non-infringement count. Prior to filing the answer, Gucci filed a Motion to Dismiss all the claims related to cancellation of Gucci’s registrations. On Monday November 6, the District Court issued an order granting the motion, providing Forever 21 with 10 days to file an amended complaint.  In the order, the court suggests that Forever 21 may have an uphill battle in pursuing these claims, stating

[T]he court is skeptical that plaintiff has sufficiently alleged facts to support its claims for cancellation based on lack of secondary meaning, aesthetic functionality, and genericism.

So while I’d love to get into the substance of whether Forever 21 has a chance at cancelling these “three-stripe” registrations, we’ll have to see whether Forever 21 is able to craft an amended complaint to overcome the court’s concerns. In the interim, I’m left considering Gucci’s three stripe marks alongside adidas’ three stripe marks. In reviewing each parties’ registrations, an interesting detail emerges. Both parties own registrations for stripe designs associated with clothing, but that doesn’t mean both parties have the same type of registered rights.

For adidas, it registered its stripes as trade dress for its products. For example, Reg. No. 3,029,127 describes the registered mark as “three parallel stripes running along the sleeve of a shirt, t-shirt, sweatshirt, jacket or coat.” The drawing of the mark is shown below.

Clearly, adidas’ registrations is specifically for a stripe patterned applied to jackets.

Gucci’s registered rights? Not so much. Based on the registrations identified in Gucci’s answer and counterclaim, none of Gucci’s registrations cover trade dress. All of the registrations instead appear to be for an image of stripes. The descriptions for Gucci’s marks are all similar to Reg. No. 4,379,039, which describes the mark as “a stripe containing three distinct bands of color with a red band in the middle of two green band.” The drawing for the registrations is simply a square with three stripes.

Does Gucci’s failure to register its mark as trade dress affect Forever 21’s ability to cancel the registrations for these design logos? Normally use as a trademark is on a tag, label, on the pocket, or emblazoned across the shirt. If Gucci’s actual use of the registered mark is limited solely to the trade dress along the bottom or cuffs of jackets, does it open up any potential claims for cancellation based on non-use? Does Gucci’s failure to register its mark as trade dress affect Gucci’s ability to assert that Forever 21 is infringing a federally registered trademark? I guess we’ll find out whether Forever 21 wades into these waters when (or if) it files its amended complaint. Stay tuned.

 

The parent company of fashion giant Coach found out that there is a lot to a brand name.

Coach’s strategic plan was to expand into a specialty retailer that would branch out beyond the COACH® brand.  To accomplish this strategy, Coach acquired both snazzy shoe company Stuart Weitzman and trendy Kate Spade & Co.

In doing so, Coach wanted to rebrand its parent company to reflect the three distinct brands under the corporate umbrella.  Coach chose the name Tapestry for its parent company.

The public backlash and slight drop in Coach (now Tapestry) stock price was unexpected.  Consumer’s felt that Tapestry sounded “musty” or “old.”  Others were reminded of the Carole King song and were not happy.

Consumers felt better when they were told they would still be able to buy their beloved COACH® bags.

The parent company Tapestry has more impact on the Wall Street shareholders than the individual consumers.  The company explained the origin of the name.  The Tapestry name reflects the long history back to its start in Manhattan in 1941 following the Great Depression and the creativity, craftsmanship, authenticity and inclusivity that the company was founded on.

Coach is not alone in branding a parent company.  Mondelez (formerly known as KRAFT) that owns the Oreos® and Nabisco® brands also received backlash when it unveiled its new name.  Consumers complained that the name Mondelez sounded like a dreadful disease.

With all the acquisitions occurring in the business world, the renaming of parent companies will be a fertile ground for creative agencies to obtain business.

What names do you think would have been less controversial for Coach to have adopted?

I’m not talking about those kinds of four letter words (by the way, we’re still awaiting the Brunetti decision to learn their fate), so today I’m talking about this wholesome kind:

Inquiring minds may wonder (and interested alumni) how the University of Iowa might go about owning federally-registered rights in the word IOWA to convert that ™ symbol to an ® symbol?

The easiest place to start would be to claim the word has acquired distinctiveness for the typical clothing offerings of a Big Ten University athletic program in combination with the distinctive color combination, gold on black:

 

 

And, black on gold:

But, what about the word only, without being limited by font or the distinctive color combination?

No problem. Judging from another four letter truncation of a University name, it’s doable with a showing of acquired distinctiveness too.

And some may be surprised to know this remains true, even when the truncation constitutes the complete name of a State.

Go ahead and ask Indiana, Michigan, Illinois, Wisconsin, and Nebraska, to name just a few.

What happens when a clothing manufacturer starts selling graphic t-shirts and sweatshirts, perhaps without doing a proper trademark search?  Sometimes a lawsuit.

A trailblazing brewery when it comes to trademark disputes, Long Trail recently sued snowboard manufacturer and fellow Vermonter Burton for using TAKE A HIKE on shirts and sweatshirts.  Here’s an example of one of the offending sweatshirts:

Long Trail owns U.S. Trademark Registration 3,637,458 for TAKE A HIKE! for shirts, short-sleeved shirts, and sweatshirts as shown only here on their website.

Two days after Long Trail sued Burton, the parties apparently settled it with Burton agreeing to cease use of the mark on these products.

So would you be confused by Burton’s use, just looking at the examples above?   Does TAKE A HIKE! even function as a trademark?  Does it indicate the source of goods or services to you, or is it merely ornamental?  Should Burton have turned around and said “No, you take a hike!”?

Burton does not appear to be the only one using the phrase “Take a Hike” on a graphic element on a shirt.  Target, Saks Off 5th, and Macy’s websites all have shirts or sweatshirts currently available for purchase bearing TAKE A HIKE – including one from The North Face.  Then there’s Amazon, where a quick search reveals over 700 search results for “Take a Hike” apparel.  This seemingly pervasive third party use suggests that the mark may not be source identifying.

Federal registrations provide a statutory, but rebuttable, presumption of the owner’s exclusive rights in a mark.  Without their federal registration of TAKE A HIKE! here, Long Trail may have experienced a more grueling climb to establish its rights in the mark before it could convince Burton to turn around.

While breweries sell plenty of cool swag, few go through the process of filing federal trademark applications on apparel, glassware, or even key chains.  There are over 12,000 live applications and registrations for breweries on “beer,” but there are less than 800 live applications and registrations owned by breweries for apparel or glassware.  Even Long Trail did not file for their LONG TRAIL mark on many of their goods until last year.  If you are a brewery, you may want to consider filing on important goods to your business other than beer, especially on your house brand like LONG TRAIL, as part of an overall filing strategy.

Over the weekend, IPBiz reported that WWE (World Wrestling Entertainment) has filed an application to register 3:16 as a trademark for clothing items.

A Google search confirms that 3:16 has religious significance as it is a common truncation that signifies one of the most widely quoted verses from the Bible, namely, John 3:16.

Despite other confusing media reports that the WWE has “trademarked” 3:16, IPBiz is correct that an intent to use trademark application was filed by WWE at the end of July.

While I could hazard a guess, technically it is presently uncertain whether WWE intends a religious meaning, at least from the application file, as no specimen of use is of record yet.

Ironically, our firm’s firewall leaves me to hazard a guess on WWE’s intended meaning too.

Yes, our sturdy firewall has deemed anything appearing on the WWE website to be “unsafe or unsuitable” for access, so we may need the kind assistance of our dear readers to assist in our understanding of the meaning intended by the WWE for this claimed mark.

Either way, it will be interesting to follow the USPTO’s examination of this application, given the newly minted Examination Guide 2-17 on “Merely Informational Matter,” which directly targets religious matter, among other matter (citations omitted from below quote):

Some proposed marks comprise direct quotations, passages, or citations from religious texts (e.g., JOHN 3:16 and I AM THE WAY, AND THE TRUTH, AND THE LIFE. NO ONE COMES TO THE FATHER EXCEPT THROUGH ME).  Religious texts are holy books or scriptures, such as the Bible, Quran, Torah, and Diamond Sutra, which the different religions or spiritual movements consider sacred or essential to their religious traditions and beliefs. Such quotations, passages, or citations are often used by the providers of goods/services (and by consumers) as an expression of affiliation with, support for, or endorsement of the ideals or concepts found in the religious texts in which the quotation, passage, or citation originated. Because consumers are accustomed to seeing such wording used in this manner in the marketplace, consumers are unlikely to perceive it as indicating source and instead would perceive the wording as conveying a merely informational message of religious affiliation, endorsement, or support for the messages in the texts.

Where a quotation, passage, or citation from a religious text serves as an indicator of support or affiliation and not of source, such wording fails to function as a mark.  The refusal applies regardless of whether the identified goods/services themselves are religious in nature.  However, the inclusion of religious goods/services further supports this refusal.  The following examples illustrate this point:

  • Mark is comprised, in its entirety, of a direct quotation/passage and/or citation from a religious text (e.g., Allah is the Light of the heavens and the earth The Qur’an, Surah An-Nur 24:35; I AM THE WAY, AND THE TRUTH AND THE LIGHT.  NO ONE COMES TO THE FATHER EXCEPT THROUGH ME; or MATTHEW 19:26).  The entire mark must be refused registration because the matter fails to function as a mark.

  • Mark is comprised, in part, of a direct quotation/passage and/or citation from a religious text and registrable matter (e.g., Hear, O Israel: The Lord is our God; the Lord is one and the image of the Earth being held in a pair of hands; ROMANS 8:28 and an image of a teddy bear).  The direct quotation/passage and/or citation must be disclaimed because they fail to function as marks.

Do you think the WWE will be wrestling with USPTO over the meaning of 3:16 soon?

If so, how might the USPTO explain the issuance of these registrations: 3:16, Studio 3:16, and 3:16 Lure Co?

And, finally, might the newly minted examination guide conflict with the recent Supreme Court decision in Tam, holding that the USPTO’s refusal of federal trademark registration based on viewpoint violates Freedom of Speech?