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If you’re a video game fan like me, you’re probably familiar with Blizzard Entertainment and their assortment of popular games, such as Starcraft, Diablo, and World of Warcraft. One of Blizzard’s newest games is Overwatch, a multi-player, first-person shooter game. One aspect of this game is the Overwatch League, a series of tournaments and live events involving Overwatch players around the world, eventually culminating in the Overwatch League World Championships.

Blizzard recently applied to register an Overwatch League design mark, shown below, for various goods and services, including entertainment services in the nature of organizing and conducting eSports and video game contests and video game tournaments.

Major League Baseball Properties, Inc. (I’ll abbreviate as “MLB”) decided to file a request for an extension of time to oppose Blizzard’s application, presumably based on their various Major League Baseball design marks, such as the one below.

Significant press coverage has followed this development, which is somewhat unusual, as this is merely an extension request, i.e., it simply buys MLB more time to consider whether to file a Notice of Opposition and/or to reach out to the applicant to attempt to resolve a dispute informally. Filing extensions of time to oppose are relatively routine in the trademark field. Often times, in borderline cases where a party might not necessarily follow through with an opposition proceeding, simply filing an extension of time to oppose slows down the prosecution of an application and provides extended leverage during informal negotiations between parties.

So this extension of time might not lead to any formal dispute. One might question how likely it is that MLB would really follow through with an opposition here based on the differences in the marks. Both marks have a two-tone background (though in different colors), split diagonally by a white silhouette of a figure. However, the figures are quite different, one being a baseball player about to hit a ball, the other being a figure leaping forward with some type of gun, apparently about to shoot someone (the species of the Overwatch figure is also unclear–Overwatch has a variety human and non-human characters, such as a genetically engineered gorilla).

On a quick search, I’ve come across several design marks with two-tone, diagonal color splits, and white figures in the middle, some of which are in related sporting or entertainment fields. As one obvious example, see the NBA’s well-known logo:

As another example in the video-game field, see the MLG (Major League Gaming) design mark:

I wonder whether the Overwatch League design will end up being of any significant concern to MLB. Perhaps the extension of time to oppose simply provides some leverage over informal talks between the parties towards modifying the Overwatch League design? What do you think?

Throughout the past decade, attorneys, judges, plaintiffs, and defendants have invested thousands of hours in the fight over offensive trademarks. Most of the public is aware of the controversy surrounding the Washington Redskins, who continue to be embroiled in litigation that is currently pending with the Federal Court of Appeals for the Fourth Circuit. But even more important is the pending litigation at the Supreme Court, where the Asian-American band The Slants have challenged the constitutionality of the law that prevents the federal government from granting the benefits of federal registration to trademarks that disparage groups of people.

We’ve discussed the history and merits of the case at at length. I won’t get into the details in this post. However, with the Cleveland Indians in town to play the Minnesota Twins, I was reminded that the Cleveland organization seemed to be escaping the glare of the media attention that had been focused on the Redskins and the Slants. Apart from the name of the team itself, Cleveland’s logos throughout only seem to worsen the potential to disparage or offend Native Americans. For reference, the logos and years of use are reproduced below:

Indians Logos

The Supreme Court heard oral arguments in the Slants case (In re Tam) on January 18th. But while we await a decision from the Court, the Cleveland Indians provide us with a reminder that, regardless of what a court may say, the court of public opinion may have the final word. In fact, we have learned over the last two weeks that Major League Baseball’s Commissioner Rob Manfred has been in discussions with the Cleveland organization regarding the “Chief Wahoo” logo since the end of the World Series. The Commissioner has publicly stated that he is pushing the team “to transition away” from the logo. Just last January, the MLB awarded Cleveland the right to host the 2019 All-Star game. With recent events in Charlotte and throughout the U.S., it’s hard not to wonder whether Chief Wahoo’s retirement date may already be set.

We’ll have to wait and see how the Supreme Court rules in In re Tam but, as with the case of the Cleveland Indians, not all trademark battles are won in the court of law.

 

-Wes Anderson, Attorney

Reading over this story on Donald Trump’s decades of headaches (and conveniently-timed successes) with the TRUMP trademark and the Chinese Trademark Office, I was reminded, as I always am, of the importance of filing federal trademark applications.

The examination process for Trump’s marks in China, and the Chinese trademark enforcement regime generally, is rather opaque to U.S. practitioners. There is still a clear lesson to draw from his decades long attempt to register his TRUMP mark. Filling first matters. Even on this side of the Pacific Ocean.

I believe he's about to say "Filing first matters!"
I believe he’s about to say “Filing first matters!”

A common distinction when comparing U.S. trademark law to international jurisdictions concerns priority to use a trademark. Many trademark offices abroad give priority of use to the party “first to file” a given mark with the trademark office. In contrast, U.S. law generally favors the party “first to use” a given trademark. Because common law trademark rights accrue automatically upon use, a federal trademark application does not supersede a first-to-user.

The above is black letter “Trademarks 101” type information. But it’s actually not always the case, thanks to intent to use applications. These applications, which can be filed without any use of the corresponding mark in commerce, essentially turn the “first to use” doctrine on its head. Even if a party is the first to use, it will not have priority over a third party with an earlier filed intent to use trademark application. Consider the following examples:

  • A begins using the trademark TASTY SNACKERS for potato chips on July 1. B begins using the same trademark on August 1 of the same year. A will have priority to use the TASTY SNACKERS trademark over B as the “first to use.”
  • A begins using the trademark TASTY SNACKERS for potato chips on July 1. B files a trademark application for the same trademark on August 1 of the same year. Even though B is now the “first to file,” A will still have priority to use the TASTY SNACKERS trademark over B as the “first to use.” (We’ll assume A uses the mark in all 50 states, to avoid a concurrent use analysis)

So far so good, right? But see what happens when we throw an intent-to-use application in the mix:

  • A begins using the trademark TASTY SNACKERS for potato chips on July 1. One month earlier, B filed a trademark application for the same trademark on June 1. B begins using the TASTY SNACKERS trademark on August 1 of the same year. Here, A is still the “first to use,” but if B obtains registration of the TASTY SNACKERS mark, B will effectively enjoy priority to use the trademark in the U.S. as the “first to file.”

In order to establish its “first to use” priority for the TASTY SNACKERS mark, A would have to (i) oppose B’s application, or (ii) petition to cancel B’s subsequent registration, if A misses the opposition window. And there’s a worst-case scenario – if, somehow, B’s registration is not challenged for five years after registration, B can make his registration “incontestable,” and thereby preclude a petition for cancellation on grounds of priority. Essentially, headaches follow for the first user, if that first user is not also first to file a federal trademark application.

Trademark practitioners will agree that “first to use” is as American as apple pie and baseball. But even in the U.S., it’s hard to overstate the value of a timely-filed corresponding trademark application – ideally, an ITU application as soon as there are concrete plans to use the trademark. Otherwise, a first-filer in the U.S. can make a first-user rather “SAD!”

Another update for you on the new Las Vegas NHL team. In my previous posts on this interesting saga (here and here), I discussed the team’s unique marketing and trademark strategy leading up to the announcement last month of the team’s name–the Vegas Golden Knights–particularly the secrecy of the name among three options (Silver Knights, Desert Knights, or Golden Knights).

Just a couple weeks after announcing the name, the team received some bad news regarding its pending trademark applications. The team had submitted applications for the marks VEGAS GOLDEN KNIGHTS (Serial No. 87147236 for various clothing goods and No. 87147239 for entertainment services, namely “professional ice hockey exhibitions”) and LAS VEGAS GOLDEN KNIGHTS (Serial Nos. 87147265 and 87147269 for the same goods and services). The USPTO issued initial Office Actions refusing registration of all four marks.

You may view the Office Action refusals here (goods application) and here (services application) for the VEGAS GOLDEN KNIGHTS applications. (The refusals for the LAS VEGAS GOLDEN KNIGHTS applications are nearly identical). The basis for each refusal is a likelihood of confusion with the registered mark GOLDEN KNIGHTS THE COLLEGE OF SAINT ROSE (& Design), Reg. No. 3188463.

(Sidenote: In two of the refusals–the ones for the entertainment services–the Office Action also cites Reg. Nos. 4325030 and 4325031, for SYRACUSE SILVER KNIGHTS and a Design mark with the same text, which is most likely a clerical error, as the rest of the Office Action indicates the refusal is based only on Reg. No. 3188463. Perhaps this error is due to the same Examining Attorney also working on the refusal for the SILVER KNIGHTS applications–see Serial Nos. 87147273 and 87147242).

In the refusal, the Examining Attorney makes some strong points regarding a likelihood of confusion. The words in the marks are highly similar, as they each use the identical words GOLDEN KNIGHTS, which appear to be the dominant portions of each mark. The similarity becomes more significant when considering the Examining Attorney’s conclusion that the word VEGAS is not protectable as it is primarily geographical descriptive, and therefore “VEGAS” must be disclaimed.

The Examining Attorney also concluded that the similarities in goods/services support a likelihood of confusion, as I outline below:

  • Vegas goods (Serial No. 87147236): “Clothing, namely, bandanas, beach cover-ups, belts, body suits, boxer shorts, caps, cloth bibs, coats, dresses, footwear, ear muffs, gloves, hats, headbands, hosiery, housecoats, jackets, jerseys, leggings, leotards, mittens, nightshirts, pajamas, pants, rain coats, rain wear, robes, scarves, shirts, shorts, skirts, socks, suits, sun visors, suspenders, sweaters, sweatpants, sweatshirts, swimsuits, swim trunks, t-shirts, ties, toques, underwear, vests, warm-up suits and wristbands”
  • Saint Rose goods (Reg. No. 3188463): “Clothing, namely shirts, t-shirts, jackets, shorts, pants, caps, hats, baseball hats, sweatshirts, and golf shirts”
  • Vegas services (Serial No. 87147239): “entertainment services, namely, professional ice hockey exhibitions“
  • Saint Rose services (Reg. No. 3188463): “entertainment services in the form of intercollegiate sports exhibitions”

Note that this is only an initial Office Action, and the team now has an opportunity to submit a formal response with legal arguments as to why the refusal should be withdrawn. The NHL has stated that it will not reconsider the team’s name, that these refusals are a “routine matter,” and that it will formally respond to the Office Actions by the deadline of June 7, 2017. NHL Commissioner Bill Daly stated that registration should be allowed in part because “there is no overlap” as to the sports for which the marks are used. However, identical goods/services are not required, especially where the marks are highly similar–rather the goods/services must merely be sufficiently related such that consumer confusion is likely.

If the USPTO is not persuaded by the response to the Office Action, it would then issue a Final Office Action that refuses registration of the marks. At that point, the next step would be to file a Request for Reconsideration and/or file a notice of appeal to the Trademark Trial and Appeal Board (TTAB).  What do you think?  Any other thoughts on overcoming these likelihood-of-confusion refusals? Stay tuned for further updates.

 

I grew up with the White Sox playing in Comiskey Park, then after they tore that down, New Comiskey Park. In 2003 that changed to U.S. Cellular Field. Now, it’s undergoing another name change – Guaranteed Rate Field. Now I don’t think that Guaranteed Rate is any better or worse than U.S. Cellular. Rather it’s the logo that accompanies that change that’s unfortunate.

Guaranteed Rate Field

The Sox will have the misfortune of playing under a logo that includes a red downward pointing arrow. Perhaps that wouldn’t sting so much if the Sox were good. But, they finished in the bottom third of the American League last year. And next year they’ll better their record under a giant red downward pointing arrow.

The Sox tried to offer a compromise. They suggested changing the arrow in the logo into home plate. In my opinion, that’s a pretty ingenious solution. Just for stadium, Guaranteed Rate could subtly change the logo in a way that’s fun and reflects the connection to baseball. The change would be small and the Sox wouldn’t have to play with a reminder that they’re not doing so well lately. Sox fans appreciate and enjoy the shift. But Guaranteed Rate didn’t go for it. And it’s understandable. They paid a lot of money to show their logo and they want the public to see their actual logo, not one used only in one place.

Moral of the story? If you’re a professional sports team, try to get the right to approve logos used on the stadium.

The Cleveland Indian’s loss last evening in the World Series ensures that Chief Wahoo will not end the 2016 MLB season at Chicago’s Wrigley Field, but instead Cleveland’s Progressive Field:

WahooLogo

I’ve written before about how the Wahoo logo is the non-verbal equivalent of a racial slur and about the severe irony in Wahoo’s grotesque racist Native American caricature and mascot having his home in a place called Progressive Field.

More than seven years ago, it appeared that Cleveland was moving away from placing the Wahoo logo front and center, but that turned out to be wishful thinking, instead the continued use and attention has spawned fans to dress up in red face as Wahoo disciples.

It is actually a sad state of affairs for all of us, including those of us who love baseball, that Cleveland did not have the wisdom to retire a racist logo long ago. Where has the MLB leadership been on this issue? How about Cleveland’s main sponsor, Progressive Insurance?

The New York Times writes today about the offensive Wahoo logo: “A slur is a slur, and it needs to be retired.” Hat tip to James, thank you.

What will it take for Progressive Insurance to say, enough is enough, we don’t want Flo and our Progressive brand reputation to be wrapped up together with such racist imagery?

Check out this City of Atlanta Facebook page.  The funny thing is that it’s not run by the City of Atlanta.  Although the posts are titled “City of Atlanta” and use the City’s official seal, the page consists of satirical humor composed by Ben Palmer, an Atlanta resident.  Although the first post was only a couple weeks ago, the page is quickly growing in popularity, with over 27,000 likes as of today.  For example, see the most recent post by the “City of Atlanta” about building another football stadium:

Atlanta Facebook Satire Photo1

Here are a couple other examples:

“We have invested 90 million dollars in a trolley system that will allow citizens to travel 10 whole blocks in a total of 3 hours.”

“Our homicide investigation unit has relocated to the inside of Kroger, next to the sample lady. Please be mindful of this as you do your grocery shopping.”

Two days ago, the actual City of Atlanta informed Ben Palmer that it did not find his page very funny.  More specifically, the City sent a demand letter to Mr. Palmer, informing him that the City had requested Facebook to remove any use of the City’s seal.  The City’s seal is a federally registered trademark (Reg. No. 3089604):

City of Atlanta Seal

The Facebook page uses a modified version of the seal, with the addition of a stylish top hat and a monocle:

14671230_662047237287512_7554220690476831254_n

The City’s demand letter stated:

“The owner of the satirical City Facebook page was not authorized to use the City’s trademark. We are working with Facebook to remove the City Seal and any other information on the Facebook page that might confuse or mislead the public into believing that the page or its contents represent the positions, policies or practices of Atlanta City Government.”

Mr. Palmer responded with some more tongue-in-cheek satire on the Facebook page, referring to his commonly invoked criticism of the city trolley:

“If you make a satirical Facebook page mocking the city of Atlanta, you will be charged with a serious crime that is punishable up to 3-5 years in prison or be force[d] to ride the trolley.”

In the two days since the City’s demand letter, Mr. Palmer has continued to use the City’s seal.  If the City decides to file an infringement lawsuit, it will raise interesting questions regarding satirical or parodying uses of trademarks.

In some courts, trademark parody or satire is not a defense per se to trademark infringement, but rather something to consider in the likelihood-of-confusion analysis.  For example, one court held that a trademark parody of baseball cards did not infringe because the effect was “to amuse rather than confuse,” and no one would mistake the Major League Baseball Player’s Association (MLBPA) “as anything other than the targets,” not the origin, of the parody cards.  Cardtoons, L.C. v. Major League Baseball Players’ Ass’n, 95 F.3d 959, 967 (10th Cir. 1996). Another court has stated that “[t]he strength and recognizability of the mark may make it easier for the audience to realize that the use is a parody and a joke on the qualities embodied” in the trademark. Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410, 416 (S.D.N.Y. 2002).  See also, for example, MasterCard Int’l Inc. v. Nader 2000 Primary Comm., No. 00 Civ. 6068, 2004 WL 434404 (S.D.N.Y. Mar. 8, 2004) (concluding that Ralph Nader’s “priceless” political ads did not infringe MasterCard’s trademarks).

Other courts apply a parody/satire distinction similar to the fair use analysis in copyright cases (see Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577–78 (1994)), under which courts may hold that parodies are less likely to infringe a trademark than satires.  Some commentators have criticized the creep of the Campbell copyright fair use test into trademark case law, stating that “reliance on Campbell to aid trademark infringement analysis tends to obscure the ultimate issue in any infringement case: the likelihood of confusion.”  Bruce P. Keller & Rebecca Tushnet, Even More Parodic than the Real Thing: Parody Lawsuits Revisited, 94 Trademark Rep. 979-1016 (2004).  Keller and Tushnet further explain:

“[T]he parody/satire divide is unhelpful in addressing the central question in trademark infringement cases: whether the defendant’s use is likely to cause confusion among a substantial number of consumers. If a joke is recognizable as a joke, consumers are unlikely to be confused, and whether the butt of the joke is society at large, or the trademark owner in particular, ought not to matter at all.”

Here, it appears that Mr. Palmer’s Facebook page could have elements of both parody (modifying the City’s seal by adding a top hot and a monocle) and satire (making humorous criticisms of the City through the posts), which could lead to an interesting analysis if a lawsuit arises.  Stay tuned to see how this situation develops.

 

-Wes Anderson, Attorney

The Chicago Cubs are rolling into the playoffs, putting the finishing touches on a historically dominant regular season with over 100 wins. Cubs fans (like me) even dare to dream that the century-plus long championship drought may finally come to an end this fall, if the team can carry its impressive form into the postseason.

Also coming to an end, if the Cubs have their way: the unauthorized T-shirt and merchandise sales outside Wrigley Field. The Cubs’ home ballpark is planted right in a bustling residential area, surrounded by bars and rooftop venues. The various street vendors lining the streets are a fixture of the gameday experience at Wrigley, if only because of their seemingly insurmountable numbers.

ct-cubs-mlb-trademark-suit-0924-biz-20160923-002

It seems fall is an important time for both the team and the Cubs’ trademark lawyers. the Cubs and Major League Baseball Properties, Inc. (the IP ownership arm of MLB) brought suit last week against a laundry list of parties alleged to be “deliberately free riding on the success of the Cubs and trading – without a license or permission – on the substantial goodwill associated with the Cubs’ trademark and trade dress. The Cubs allege rights not just in their various logos (and the letter W, as previously discussed here), but also in “the combination of their iconic blue-and-red color scheme and other indicia.”

The Cubs then allege various street vendors utilize the Cubs’ trademarks and associated trade dress on T-shirts sold “around and near Wrigley Field in Chicago, Illinois, and on the Internet.”  The (now-amended) Complaint can be found in full here. The Cubs’ complaint also seeks a non-specific court order “allowing them to work with law enforcement to seize counterfeit or trademark-infringing merchandise spotted for sale outside the ballpark,” according to the Chicago Tribune.

Taking a look at the shirts captured in the complaint, there are certainly examples where the Cubs have a legitimate grievance, and others that tend to strain credulity:

Screen Shot 2016-09-28 at 6.08.13 AM

An infringement case may well be open and shut as to those shirts with the “C” or “Cubbie Bear” logo, or even the “W” letter from the Cubs’ “win” flag. But those who have been to Wrigley Field might agree there are countless examples where vendors do not use any Cubs intellectual property, and allude to the team more creatively. The “WE ARE WORLD SERIOUS” shirt above would be a prime example of this – were it not for the “W” flags flanking either side of the shirt’s logo. Still, it’s hard to wonder what precisely the Cubs see as infringing in the “CENTRAL DIVISION 2016 CHAMPIONS CHICAGO” shirt in the bottom row. If anything, it might be a tailor-made case of nominative fair use.

The Cubs’ request to actively enforce its trademarks in the Wrigley Field area is certainly a novel one, and appears to be timed to seize upon the influx of interest (and cash) that surrounds playoff baseball. T-shirt vendors might find the “Friendly Confines” to be a bit less friendly in October, unless they have the means to defend a federal trademark infringement suit.

– Jason Voiovich, Chief Customer Officer, Logic PD

It’s not a new reality show. Let’s take that off the table straight away. That said, one could be forgiven this year (of all years) for imagining a scenario in which retired basketball great Kobe Bryant teamed up with not-so-retired real estate sort-of great Donald Trump to launch original programming on a new Netflix platform. Heck, I’d watch it.

But alas, it is not meant to be.

Black Mamba, Make America Great Again, and Netflix Fast are all trademarks, recently (and not so recently) filed by their respective owners, staking a claim to a piece of intellectual real estate. But I’ll bet you figured that part out already. What may not be so obvious is when they were filed. It’s the when that gives us a tiny open window into the future plans of these organizations. In other words, these trademarks are an example of potential competitive intelligence. But only if we use them.

Let’s have a brief look at each one.

BLACK MAMBA

In April of this year, Kobe Bryant made important news.

Kobe Bryant’s final game with the LA Lakers saw him torch the Utah Jazz with 60 individual points. It was a fitting end to a dominant career that included five NBA Championships, two Olympic Gold Medals, 18 All Star Selections, one NBA MVP award and nearly 34,000 points scored.

That wasn’t the important news.

Bryant’s retirement was no surprise. Although he could be dominant at times, at 37, he could no longer put the LA Lakers in a position to contend for a playoff spot through sheer force of will.

The big news for Bryant was the registration of the “Black Mamba” trademark in May – a nickname he has used for several years, including in some Nike advertisements. But Black Mamba had never been trademarked. Barring opposition, Bryant will own a distinctive piece of intellectual real estate for use in a variety of applications including shoes and apparel. Effectively exploiting this trademark, much in the same way Michael Jordan does with Nike and the “Air Jordan” trademark, not only secures Bryant’s future, but also changes the fashion apparel landscape.

I wonder how many other apparel manufacturers were monitoring the US Patent and Trademark Office for new submissions and found this one? Could it give them advance notice on an intent to market goods and services? Might they try to oppose it? Might they counter Bryant’s now-obvious strategy with deals of their own to preempt him in the market?

Adidas/Reebok, Under Armour and the like are pretty sharp. I’m guessing they’re on top of it.

Here’s my question: Are you aware of your competitors next major brand campaign?

MAKE AMERICA GREAT AGAIN

As if this political campaign weren’t interesting enough, The Donald has managed to show he’s crazy like a fox. Well before the trademark “Make America Great Again” made its appearance on baseball caps in this presidential election cycle, Donald Trump laid claim to the abandoned Reagan-era phrase.

How long before?

Here’s where it gets really interesting. Trump filed for registration on November 19, 2012, not two weeks after Barack Obama defeated Mitt Romney, winning a second term in the White House. (Trump later updated the filing to include apparel and other uses in 2015).

Curious timing? I don’t think so. It seems very clear to me that Donald Trump had been planting the seeds of a political campaign well in advance of anyone actively paying attention. How different might the political landscape look today if the RNC had paid attention to Trump’s USPTO filings? Would the DNC have begun to assemble a counter-strategy? Could Trump have been blocked?

Perhaps not, but the reality is, they probably weren’t looking at all.

My question again: Have your competitors given you a glimpse into their future, and what are you doing about it?

NETFLIX FAST

There are lots of Internet Service Provider (ISP) speed test sites. (My personal favorite is Speedtest.net by Ookla. I use it when I want to more effectively complain about slow CenturyLink service at home.) On the surface, Netflix starting a speed test service of their own seems iterative and silly.

But it’s not.

You may not realize it, but Netflix (and streaming services like it, but especially Netflix) is one of the biggest bandwidth hogs on the internet. You had better believe the major ISPs realize it. The whole “net neutrality” argument last year was prompted, in part, on the disproportionate toll streaming video services take on connectivity infrastructure.

The fervor may have died down in the public sphere, but the filing of the Netflix Fast trademark is a signal that the company is planning a more active role in the creation of the public narrative. One of the key parts of that narrative is access to their own data on network choke points. They will be able to use that data to effectively partner with local providers to enhance service. Or they might be able to counter the narrative that Netflix is clogging the pipe. Or both.

Are the ISPs and Telcos watching this announcement? Are they thinking ahead? Are they coming up with their own list of possible scenarios? Perhaps.

My question again: Which one of your competitors has telegraphed their public affairs strategy with a trademark filing?

YOU SHOULD BE DOING THIS

I’m admittedly using some big name examples here, so it’s easy to make the case that competitors have the resources and scale to sense and detect these types of threats. But that shouldn’t let us off the hook. In my experience, even small to mid-sized companies can take advantage of low-cost and no-cost competitive intelligence techniques to dramatically improve their early warning systems. The same logic applies to patent scanning, although I find that innovation-driven organizations keep pretty good tabs on the weekly Official Gazette for Patents published by the USPTO.

But in some ways, I think trademark scanning is even more immediately valuable. First, trademarks can be put into the field much faster than patents in the form of marketing and advertising campaigns. That means you have a much shorter window of time to react and adapt. Second, while many organizations may file dozens of patents looking to cover their bases in a number of areas (and possibly monetize their portfolio at some later point), the same really isn’t true for trademarks. You get ‘em to use ‘em. In other words, when you see a trademark filing, odds are that your competitor will be taking advantage of it soon. Finally, while patents are the primary domain of technology-driven organizations, trademarks are useful to every type of organization. You could argue to me that your service organization doesn’t need to monitor the patent gazette, but you can’t argue trademarks won’t impact you.

Bottom line: Using trademarks for competitive intelligence is easy and cheap. You should be doing it.

As a kid, I loved candy. But as an adult, who happens to be an intellectual property attorney, I still love candy. So you can bet your sweet tooth that I was feeling a sugar rush when I came across a pending application to register the claimed mark shown below:

Ice cream ring

The application was filed by Dulces Chompys, a Mexican candy manufacturer. Dulces Chompys describes the mark as “a candy portion in the configuration of an ice cream cone on a stylized ring” and has applied to register the mark in connection with “candy, marshmallows, bubble gum, chewing gum, chocolate, chocolate bars, chocolate candies, chocolate confections, honey, cocoa, sugar, gum sweets, confectionery made of sugar, mint-based sweets, lollipops.”

Unfortunately for Dulces, an Office Action has put the company in a sticky situation. The Examining Attorney provided a shopping list of refusals, including functionality under 2(e)(5), failure to function as a mark, and inconsistent goods (in the sense that the Examining Attorney is concerned that this product configuration could not be used as a configuration for honey, cocoa, or sugar).

Oh, also a likelihood of confusion refusal based another candy option you may have seen before:

Ring Pop Drawing

If you guessed Ring Pop, you’ve earned a look at a more delicious display of the most fashionable candy around:

Ring Pop Bag

The Topps Trading Company (yes, the baseball card company) applied to register the product configuration for its Ring Pop candy as a trademark in 1992, and the Certificate of Registration issued on July 26, 1994. Like Dulces Chompys, Topps also received a refusal on the ground that the mark was functional. However, Topps was able to overcome it.

Even if Dulces Chompys can convince the Trademark Office that its ice cream shaped lollipop ring is non-functional, will it still be stuck with an insurmountable likelihood of confusion refusal?  If so, it is hard to imagine what type of lollipop ring design would be able to avoid a likelihood of confusion with Topps’ product configuration.  The registration might effectively provide Topps with a monopoly on all shapes of lollipop rings. Of course, functionality is one of the grounds that can always be relied upon to cancel a registration, so we’ll have to wait and see whether Dulces is willing to take on a king-sized dispute.