Loyal readers know that trademark rights are dynamic, use-it-or-lose-it intellectual property rights.

So, when signage announces a name change, it jumpstarts the question of trademark abdonment:

The above signage and reporting around the sale and rebrand of SuperAmerica convenience stores seem to suggest the SuperAmerica name will cease to be used, bringing Speedway coast-to-coast.

Time will tell though if there is a plan in place to avoid legal abandonment of the SuperAmerica trademark, so that it does not become part of the public domain, available for others to adopt.

We explored this important question a few years ago, when we discovered Chevron’s efforts to maintain exclusive rights in the Standard trademark:

“Of course, there is a delicate but critical balance in avoiding trademark abandonment following mergers and consolidations. Trademark types often will hear this question from brand managers after learning that three years of non-use constitutes presumptive abandonment: What is the minimum amount of use necessary to retain rights in the brand and trademark?

It is a dangerous question — especially when phrased this way — because ‘token use’ of a trademark was rejected as a ‘use in commerce’ in the U.S., back when our current intent-to-use trademark registration system was ushered into law during 1989. In outlawing ‘token use’ as a now failed way of developing trademark rights, the definition of ‘use in commerce’ was amended to add this critical language, requiring the use to be: ‘the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.’

So, asking how little a use is enough to retain rights, starts to sound a lot like a use made ‘merely to reserve a right in a mark.’ Congress did indicate that what constitutes use ‘in the ordinary course of trade’ will vary from one industry to another. It also noted that ‘use in commerce’ should be ‘interpreted flexibly’ so as to encompass various genuine, but less traditional, trademark uses. And, the Trademark Manual of Examining Procedure (TMEP) notes that these three factors are important to consider: (1) the amount of use; (2) the nature or quality of the transaction; and (3) what is typical use within a particular industry. TMEP 901.02.”

It appears most of the SuperAmerica trademark registrations recently have been renewed, so with ten year terms, it likely will be several more years before we begin to see what, if any, use is relied upon at the Trademark Office to maintain registered rights in the SuperAmerica mark.

In the meantime, what do you think, is there a plan in place to maintain rights in SuperAmerica?

Video games offer a melting pot of intellectual property: trademark law, copyright law, and even patent law all come together in a delicious mix of intangible property. However, not all video game franchises are equal. Few can claim the same level of longevity, success, and nostalgia as Nintendo’s Mario Brothers series.

Among the most popular titles of the franchise is Mario Kart, a game in which characters from the franchise race each other in go karts. The characters repeat catch phrases, seek out power ups (invincibility, speed, etc.) and cartoonish weapons (banana peels, turtle shells, etc.), all with the singular goal of being atop the podium at the end of race. Over its 25+ years of existence, the game has resulted in significant sales, widespread nostalgia, and, unsurprisingly, numerous attempts from others trying to make money off of the characters. But a recent lawsuit in Japan brought media exposure to what might have been the greatest attempt yet to profit off the franchise: real life go-karting in Mario Brothers costumes in the streets of Tokyo.

How fun is that? From what I can tell, riders aren’t allowed to throw things at each other (thanks a lot, safety laws), but this tour would still be great. The attraction even attracted professional race car drivers. You don’t even need to provide your own costume, they’ve got a ton for you to choose from.

Race car drivers weren’t the only people to discover the tour. Nintendo’s lawyers did, too. I’d like to imagine they participated at least once before suing them, if only under the pretense of “fact development.” Nintendo sued and ultimately prevailed on claims of copyright infringement. The company has to pay Nintendo 10 million yen (about US$89,000) and can no longer hand out Mario Brothers character costumes.

It’s hard to quibble with Nintendo’s actions here. The MariCar company intentionally distributed character costumes in order to attract customers.

But what are Mario Kart fans supposed to do now? Well, there will be an official Super Nintendo World opening at Universal Studios Japan ahead of the 2020 Tokyo Olympics. The theme park will include a Super Mario World featuring Bowser’s castle, Peach’s Castle, and, yes, a “Mario Kart attraction.”

But if you prefer the thrill of participating in likely infringing activities, you can check out the Australia-based MUSHROOM RALLY race event purportedly coming to Denver, soon. Participants will have a chance to battle it out in Las Vegas for the championship race. Ticket prices are yet to be determined and are limited to just 600 participants. I suggest you read the fine print on the refund policy though – just a hunch…

As we move into Week 2 of the NFL, the big clash in North Country is Sunday’s Green Bay Packers – Minnesota Vikings game. All the buzz is whether the second-coming-of-Favre Aaron Rodgers will prevail over the vaunted Vikings defense. But here in my trademark bubble, I’m more interested in the Jacksonville Jaguars versus former Jaguar player Dan Skuta. This isn’t a contract negotiation battle, but instead a dispute over who owns the claimed trademark rights in the word SACKSONVILLE. The dispute is now the subject of a pending opposition at the Trademark Trial and Appeal Board.

In the Notice of Opposition to the team’s application, Skuta claims to have been the first to coin the term “Sacksonville,” back in July of 2015, but his pending application was refused based on a possible likelihood of confusion with the team’s already filed application. He created a Twitter account and hired a graphic designer to create the logo below, which appears on Skuta’s website.

 

In the team’s application to register the claimed #SACKSONVILLE mark, the Jaguars claim a first use date of September 1, 2017.  However, the team has the ability to present evidence of use earlier than the date of first use listed in the application. One article notes that the team has used the phrase as a social media hash tag at least as early as 2013. But in most circumstances, merely using a word as a social media hashtag does not constitute use in commerce.

Unsurprisingly, one local Jacksonville news outlet is skeptical, siding with the team over a “forgettable linebacker . . . who may have been better at anticipating trademark uses than he was at reading offenses.”

It is possible that Skuta may have used the mark in commerce before the team. Skuta hasn’t made his case any easier by including in the logo what appears to be a jaguar skull and the same Jacksonville Jaguar teal color. On top of this, the play on words with “Jacksonville” potentially creates association with the team, too.

It’s a bit of a mess: are there even any trademark rights and, if so, who owns them? It seems the team likely should be the owner, but perhaps they fumbled the rights along the way. We may have to wait for the Trademark Trial and Appeal Board to weight in to see who emerges from the scrum with the ball.

PepsiCo recently made waves with its purchase of SodaStream, but the company is now making news in the food business. This time the news is all about Pepsi’s Frito-Lay division, and its mischief making Chester Cheetah and his crunchy, cheesy, Cheetos brand. Pepsi recently sent a cease and desist letter to World Peas, a manufacturer of healthy-ish snack foods and its recent marketing of Peatos brand snacks.

 

What are Peatos exactly? They’re a crunchy snack food made primarily from peas and lentils, but, Peatos are not intended to be a “health food.” The company describes its mission as making “90% of people eat 10% better, not 10% of people eat 90% better.” The goal appears to be: make a snack that is a little bit better for you without sacrificing flavor. Product quality aside though, is Pepsi correct that the PEATOS mark is confusingly similar to the CHEETOS mark?

Courts consider a variety of factors in evaluating whether someone is infringing another’s trademark: do the marks create similar commercial impressions; are the products at issue competitive, similar, or related; how strong are the marks in terms of meaning and commercial strength; are the goods sold through similar channels of trade (i.e., through the same types of stores); and others. The two factors that tend to play the most prominent role are the similarity of the commercial impressions of the marks and the similarity of the goods.

In the Peatos versus Cheetos dispute, many of the factors would favor Pepsi. The goods are competitive (even if one is a bit healthier), both are sold in the grocery stores, and the CHEETOS mark is an arguably famous and strong mark. But even if every single factor but one were to favor Pepsi’s claim of infringement, it would not be enough if the marks are so dissimilar that no confusion is likely. So what do you think, how similar to Cheetos is Peatos?

The only difference in sound is the initial letter P versus the CH sound. Visually, the marks have a few more differences in letters. As far as I’m aware, neither mark has a defined meaning. The PEATO mark has additional meaning of one its ingredients (Pea).

But what about the overall commercial impression of the marks? What is the impression that Peatos will make in the mind of a consumer? For me, the immediate impression is that the product is a Cheeto made from peas. In fact, I can’t imagine that World Peas came up with the name in any other way other than “What should we call a Cheeto made from peas? Oh! Peatos would be a good pun!”

A likelihood of consumer confusion does not require actual consumer confusion. It also does not require that consumers confuse the products themselves, or that a consumer incorrectly think that Pepsi makes Peatos. A likelihood of confusion exists whenever a consumer might mistakenly believe that there is some type of endorsement, connection, or affiliation between the two parties. Given Pepsi’s recent purchase of SodaStream and the general trend toward healthier consumer choices, is it really that much of a leap to imagine a famous brand of snacks extending into a pea-based version of itself?

Setting aside the similarity in the marks, World Peas is actively drawing a connection between Cheetos and Peatos through use of a tiger and a similar color scheme for its bag and logo. The fact that the actual Peatos products look like Cheetos isn’t likely an issue, but it doesn’t help, especially if Pepsi argues a claim of post-sale confusion.

In addition to all this, World Peas makes explicit Cheetos comparisons on its website. Granted, these comparisons likely qualify for a fair use (although the use of the Cheetos logo may be more than necessary). However, when you know you’ll be poking the tiger, do you really need to pull its tail and poke it in the eye too? If the company truly plans on sticking with the Peatos name, it may have been best to not exacerbate Pepsi’s concerns and use a different colored logo, avoid the tiger on the packaging, and maybe not so aggressively market yourself as a healthier version of Cheetos. While Pepsi may have still come knocking, Pepsi would at least have less ammunition for its claims.

I wouldn’t say this a clear cut case of infringement, but given all these facts, there is at least a colorable claim of infringement . The company must have known it would receive a demand letter regarding the name. Perhaps the plan was to enjoy the free press for its new product and then switch the name, knowing the name change would also be heavily publicized?

Apart of from the potential legal liability, it isn’t a terrible plan, and I’m certainly interested in trying a bag of Peatos. Once I find a bag, I’ll be sure to let you know whether they’re g-r-r-r-r-r-r-r-eat!

Mike Lindell, has built an impressive business around a pretty simple brand name and trademark:

We’ve previously written about the MyPillow trademark, noting the apparently narrow scope of rights it enjoys, as a result of the coexistence with some pretty similar marks, including this one:

Earlier this year, My Pillow filed a complaint in federal district court in Minnesota, against LMP Worldwide, owner of the above federally-registered and incontestable trademark registration.

The complaint alleges breach of a 2013 settlement, federal trademark infringement and unfair competition, Minnesota deceptive trade practices, Minnesota unfair competition, and asks for damages, lost profits, and cancellation of the above-referenced federal trademark registration.

The complaint is interesting reading, and it appears the notion of any peaceful coexistence is no longer an option if Mr. Lindell has his way, especially given the allegations regarding breach of contract, actual confusion, keyword violations, and false advertising.

Pillow talk about the settlement terms will be most interesting, as only cryptic passages are public.

Suffice it to say, when you’re spending $4 Million each week on advertising the MyPillow brand, as the complaint alleges, I’m thinking it’s hard not to believe LMP isn’t enjoying an enormous windfall.

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.

I spent much of Saturday morning watching Warren Buffett and Charlie Munger at the annual Berkshire Hathaway shareholder meeting.  I have previously made the pilgrimage to Omaha, waiting outside before dawn with a plan for our seats much like these guys. In the last two years, thankfully, they’ve streamed it live.  I love listening to these two talk about business, American values, political influence in current and future business opportunities – all while sipping Cokes and chomping on See’s Candies peanut brittle.  It’s wholesome, often nostalgic, and the banter between the two is remarkably entertaining (at times it’s like the two judges from the Muppets).  Come to think of it, Warren and Charlie really need a podcast.  One of the investing tips that they consistently hammer on is being sure you understand the business.

I think I get paint.

What I don’t get, however, is the use of this logo in the 21st century.  When another patent attorney and former colleague of mine Jason Campbell posted his photo below to Facebook, I audibly gasped.  Cover the Earth…with a can of spilt paint?!?  The juxtaposition with “automotive finishes” doesn’t help as it makes me think of motor oil.

IMG_2537

I’m technically a millennial, although it pains me to say that as I often feel more at ease with the likes of Warren Buffet.  I’ve grown up knowing that lead paint is bad, the environment needs protection, and paint needs to be properly disposed.

All I see when I look at that logo is a giant, bright green Mr. Yuk sticker.

However, the logo is one of the oldest, still active marks on the Trademark Office’s register.  It was first registered in 1906.  When AdWeek asked about its relevancy and openly pondered its need for a redesign back in 2015, Sherwin Williams’ corporate communications director said at the time that it “is not meant to be taken literally, rather it is a representation of the our desire to protect and beautify surfaces that are important to people.”  Does the use on this van really convey that to a consumer?

I have a fondness for nostalgic brands, but the message still needs to remain relevant in its time or it loses its luster.  Attorneys use the term of “goodwill” frequently with marks – maybe a nostalgic brand loses some of that in changing times if it doesn’t adapt?  We have seen much debate on climate change, the EPA, and national parks.  Can’t Sherwin Williams deftly shift this from “Cover the Earth with-all-of-this-toxic-paint-that-we’ve-spilt” to something like “Cover the Earth…With Color” while maintaining rights in the logo?  Don’t we all seek a more vibrant and colorful world?

You don’t have to be a sports fan to be aware of MARCH MADNESS, the name associated with the annual tournament to determine the college basketball national champion. The tournament is organized by the National Collegiate Athletics Association. The name MARCH MADNESS is derived from the fact that the tournament occurs almost exclusively in March. Conferences big and small from throughout the country participate in the tournament. But one of those conferences, the Big Ten Conference, is entering a legal battle with the NCAA over the scope of the NCAA’s rights in its MARCH MADNESS trademark.

The Big Ten wants to use the tagline MARCH IS ON! to promote, sponsor, organize, and broadcast its sporting events. It filed an intent-to-use application to register the mark with the U.S. Patent and Trademark Office (USPTO). The USPTO reviewed the application and determined that the mark was eligible for registration and published the application. Unfortunately for the Big Ten, the NCAA thinks that the Big Ten’s use MARCH IS ON! will harm the NCAA’s rights in MARCH MADNESS. On February 13, the NCAA filed a Notice of Opposition to the application (available here).

The Notice of Opposition doesn’t include much detail in support of the claimed harm. Instead, other than the claim of priority, the Notice of Opposition includes a conclusory allegation that the Big Ten’s proposed use “is likely to result in confusion, mistake, or deception with [the NC, or the goods and services marketed in connection with [the NCAA’s] MARCH MADNESS mark.” The Notice of Opposition does not even allege that the marks are similar or that the goods or services are related. In light of the narrow scope of authority, pleading requirements are pretty liberal at the Trademark Trial and Appeal Board (TTAB), but even the NCAA’s Notice of Opposition is pretty sparse on factual allegations, even for a TTAB pleading.

While establishing the services are related should be an easy layup, demonstrating that the marks are similar might be a big more challenging. After all, the only similarities in the marks consist of the shared term MARCH. There is no similarity of meaning (as you might have with MARCH INSANITY) or similarity in sound (MARCH MAYHEM). Sharing a single term can be sufficient to establish a likelihood of confusion in some circumstances, but confusion may be avoided if the shared term is descriptive of the services or weak in some other way. If the NCAA’s mark was BASKETBALL MADNESS, it would be difficult to claim that consumers would be confused with the Big Ten’s use of BASKETBALL IS ON!

While MARCH isn’t as weak as BASKETBALL, the term describes when the NCAA tournament occurs and when the Big Ten basketball tournament occurs. It seems like the claim may be an overreach by the NCAA. But who knows, perhaps this claim will be another of the many Cinderella stories associated with the NCAA. We’ll have to check back in the second half.

 

Regardless of whether you’re a fan of “classic rock,” there are some songs that everybody knows. The song Hotel California by the Eagles is one of those songs.  Not everyone likes the Eagles (looking at you, Dude), but most people at least like Hotel California. So it’s no surprise that the Eagles want to prevent others from trying to make money off the name. Most recently, the band filed an opposition with the Trademark Trial and Appeal Board to oppose an application to register the mark HOTEL CALIFORNIA (the pleading is available here).

Eagles Album Cover

 

The application is owned by Hotel California Baja LLC (HCB), who apparently operates a hotel south of the border in the town of Todos Santos in Baja California, Mexico. Notably, HCB’s application does not seek registration in connection with “hotel services.” Instead, HCB appears to be seeking registration of its name to sell a wide variety of merchandise in the U.S., including cosmetics, body care products, eyewear, phone accessories, jewelry, and other products. Although the Eagles do not allege that they own any trademark registrations for the HOTEL CALIFORNIA mark, the band claims common law rights in connection with licensed goods such as clothing, guitar picks, posters, and others back to 1977. Along with the Notice of Opposition, the band filed an application to register the mark on Jan. 18, 2017.

But do the Eagles have trademark rights in the song name? We’ve broached the subject briefly before (here). Generally speaking, use of a word or phrase as a song, album, or movie title does not create trademark rights in that name because consumers aren’t likely to view such use as designating the source of the goods. Instead, consumers are likely to view the use simply as a title of a creative work, or some other expressive content. The issue is similar to merely ornamental refusals, where a name or phrase is used on a shirt, coffee mug, etc. as a design element or as informational phrase (like my BEST BLOGGER EVER mug, or a FEAR THE BROW t-shirt). However, it is possible through licensing the name and/or using the name on other products or services that the mark can come to signify a secondary source. Based on the pleadings, it appears that the Eagles may have a reasonable claim that the HOTEL CALIFORNIA mark, when used on licensed products, serves as a source identifier.

Even then, it’s possible the Eagles could claim that the mark falsely suggests an association with the band. HCB’s website includes the following information as part of its “history”:

During the 1960s and 1970s, the precise details of the hotel’s history are a bit “hazy” – not uncommon for the culture of that particular era in general… There are numerous stories. Whether fact or myth, nobody knows for sure. However, one rumor, fabricated in the 1990’s by someone with no connection to any owners of the hotel, states that the Eagles once owned it. This is unequivocally false. Many of the other legends are less black and white and continue to fascinate the public. Although the present owners of the hotel do not have any affiliation with the Eagles, nor do they promote any association, many visitors are mesmerized by the “coincidences” between the lyrics of the hit song and the physicality of the hotel and its surroundings.

  1. Hotel California is accessed by driving down a long desert highway from either Los Cabos to the south or La Paz to the east
  2. The Mission Church of Pilar is located directly adjacent to the hotel and mission bells are heard daily. Since the Church is so close it sounds like they are almost inside the hotel at times
  3. Countless stories and firsthand witnesses relating to spirits and ghosts in the courtyard of the hotel.
  4. During the ‘Hippie Era” of the 1960s and 1970s, people were know to easily grow their own marijuana in the extremely fertile land of the Todos Santos area and then roll them into “Colitas” which is a Mexican slang term for ‘Joint” or Marijuana cigarette
  5. The simple fact that the Hotel California in Todos Santos was built in 1947 which was of course far before the “Hippie” or “Classic Rock” eras

It certainly seems like the hotel is trying to suggest an association with the band and the song. Accordingly to the Eagles (via Wikipedia), there is no “Hotel California,” as the hotel was more symbolic of Hollywood and L.A. generally. If the Board were to find that the use of the HOTEL CALIFORNIA does create a false association with the band, then the disclaimer is not likely to help. Even if HCB claims that the rumor was started by “someone with no connection to any owners of the hotel.”

HCB’s website does not clarify whether guests are allowed to “check out” or, more importantly, “leave.” Luckily for the applicant though, the Trademark Office does allow them to voluntarily abandon the application.

According to recent reports, the Chargers will announce this week that they are leaving sunny San Diego for also sunny Los Angeles. Over a short two year span, Los Angeles will have gone from zero NFL teams to two NFL teams, as the Rams moved from St. Louis to Los Angeles just last year. However unlike the Rams, the change may extend beyond zip codes, as the team is also reportedly considering a full rebrand of the team. This will mean crowds of sad San Diegans, a number of discarded powder blue jerseys, and a lot of wasted governmental filing fees paid to the U.S. Patent and Trademark Office.

Yes, each time a sports team moves cities, a number of people rush to file trademark applications. Perhaps they have a great idea for a team name and want to be the person that named the team. More likely, however, is that there is a hope they can “get in first” and force the team to buy the application from them. Back in September when the Oakland Raiders publicly considered  moving, there were no less than six applications filed for the LAS VEGAS RAIDERS mark over a 48 hour period.

Unfortunately for those applicants (and others with similar plans), the applications are likely dead in the water.  Unlike some countries where trademark rights are given out on a “first to file” basis, in the U.S. trademark rights are created through use of the mark in commerce. This requirement was relaxed slightly to allow for “intent to use” applications, where a party can file an application based upon its intent to use the trademark in commerce, even if they haven’t begun use yet.

However, when Congress created the new rules, there was concern that persons may abuse the system by applying for trademarks for the sole purpose of selling them to third-parties for increased sums. In order to prevent this from happening, the law requires that an applicant have a “bona fide” intent to use the trademark in commerce. Even if an applicant obtains a registration, that registration may be vulnerable to cancellation if the applicant did not have a bona fide intent to use the mark as of the filing date.

As you might imagine, trying to claim rights  to the LA BOLTS mark to sell to the Chargers organization is not likely to qualify as a bona fide intent to use. This is particularly true if the application seeks protection in connection for “professional football team exhibition services.”

So if you’re considering capitalizing on the Chargers move to LA by filing a new trademark application, please reconsider. If you instead just want the glory of naming the newest NFL team, take to Twitter instead. If it worked for the RRS Boaty McBoatFace, it could work for you, too.