-Wes Anderson, Attorney

Owners of scandalous, immoral, or disparaging marks are on notice: now is the time to place your $275 bet with the USPTO. And soon, the Trademark Office database may be “NSFW.”

Last Thursday, the USPTO issued Examination Guide 01-16 to address the impact of recent federal court decisions on Section 2(a) of the Trademark Act. That section prohibits registration of marks that comprise immoral or scandalous matter (such as profanity), or marks that are disparaging (such as racial slurs).

parental_advisory

As previously blogged by my colleague Tim Sitzmann here, the Federal Circuit’s decision in In re Tam struck down the disparagement portion of Section 2(a) on First Amendment grounds. This provision is also the focus of the Washington Redskins case, Pro-Football v. Blackhorse,  currently pending before the Fourth Circuit Court of Appeals in Virginia. The Guide notes the immoral/scandalous portion of Section 2(a) is pending a similar constitutional review before the Federal Circuit in In re Brunetti, in which the USPTO refused registration of the mark FUCT for athletic apparel. If the Federal Circuit holds serve in Brunetti, it will strike down the prohibition of scandalous marks.

Tam is likely bound for the Supreme Court, as is Blackhorse and possibly Brunetti assuming the timing allows SCOTUS to consolidate each case. The USPTO’s petition for certiorari to the Supreme Court for Tam remains pending as I write this. If the courts follow Tam, the impact is clear: Section 2(a) would be no more.

As these battles rage, it was not clear what the USPTO was left to do with new applications for immoral/scandalous or disparaging marks. The USPTO is not an Article III court and, as such, it cannot choose simply to ignore Section 2(a) in light of the Tam decision. But it also does not follow that the USPTO should continue to refuse registration of marks under Section 2(a) unless and until a final decision is rendered.

The Examination Guide puts forth a temporary solution: all new applications subject to Section 2(a) refusals will be suspended until the dust settles:

The USPTO continues to examine applications for compliance with the scandalousness and disparagement provisions in Section 2(a) according to the existing guidance in the Trademark Manual of Examining Procedure § 1203.  While the constitutionality of these provisions remains in question and subject to potential Supreme Court review, for any new applications the USPTO will issue only advisory refusals on the grounds that a mark consists of or comprises scandalous, immoral, or disparaging matter under Section 2(a).  If a mark’s registrability under these provisions in Section 2(a) is the only issue, the examining attorney will identify the reasons for the advisory refusal and suspend action on the application in the first Office action.

In effect, the USPTO has presented an entirely new category of mark owners with acres of unoccupied territory. This is a profound change for owners of marks subject to Section 2(a) refusals, even those that had previous applications rejected on appeal. The USPTO now invites new applications for all manner of marks.

When and if the dust settles and the federal courts strike down Section 2(a), the spoils of trademark registration will go to the first to file. This may operate to the detriment of any parties that wait until after a Supreme Court decision before filing applications for questionable marks. Established brand owners that, until now, could not register their marks under Section 2(a) must also now ensure that a third party doesn’t file first. This could be a bustling time for oppositions based on unregistered and profane common-law marks.

How long will the suspension last? It’s hard to say, but it could be a number of years before the Supreme Court can take on and decide each of these cases (assuming SCOTUS will grant certiorari). The Guide elaborates on some of the events that may affect the suspension:

Any suspension of an application based on the scandalousness provision of Section 2(a) will remain in place until the Federal Circuit issues a decision in Brunetti, after which the USPTO will re-evaluate the need for further suspension.  Any suspension of an application based on the disparagement provision of Section 2(a) will remain in place until at least the last of the following occurs:  (1) the period to petition for a writ of certiorari (including any extensions) in Tam expires without a petition being filed; (2) a petition for certiorari is denied; or (3) certiorari is granted and the U.S. Supreme Court issues a decision.

All that’s needed now is an application and a $275 filing fee; and if SCOTUS gets involved and Section 2(a) kicks the can, savvy applicants may find themselves the very first to claim [insert profane term of your choice here].

As it happens, later this morning, President Obama will announce his choice to replace the late Justice Scalia. As if we needed more reason to follow this Supreme Court vacancy.

–Dave Holt, Solicitor & Alex Watt, Partner, Browne Jacobson LLP

In the European Union, Coca-Cola has recently followed in the stumbling footsteps of fellow global super-brand Nestlé, falling at the final hurdle in its attempt to register the three-dimensional shape of its iconic ‘Coke bottle’ in classes 6, 21 and 32. You can read the judgment in full here. The shape mark in question (the “Mark”) was depicted as below:

Cke

 

There is much to take from this decision and in reviewing it you will notice that the Mark applied for has the recessed banding we expect from the coke bottle, but does not have any of the particular features or detailing, particularly missing the contoured fluting, that we might usually expect to see on a ‘Coke’ bottle. The claim for that slightly more generic-looking bottle shape, rather than the better-known and distinctive bottle shape, may ultimately have proved to be Coke’s undoing.

Interestingly Coca-Cola also sought to register this mark in Class 6, being “Common metals and their alloys; metal building materials; ironmongery, small items of metal hardware; goods of common metal not included in other classes; metallic bottles”. Perhaps we have missed out on the opportunity for a new, innovative metal coke bottle or coke bottle statue…

The Decision

Coca-Cola appealed the decision of 27 March 2014 made by OHIM’s Second Board of Appeal (“contested decision”), which rejected registration of the Mark, and held:

  • The average consumer of the mass drinks market was not particularly attentive and was likely to have ‘imperfect recollection of trade-marked products’;
  • The Mark as submitted was devoid of distinctive character (article 7(1)(b) of Regulation No 207/2009 (the “Regulation”)) as regards the goods concerned, particularly as the features were common to the shape of the contested goods in classes 6 and 21 and packaging of the goods in class 32;
  • The Mark in question had not acquired distinctive character through use, and the survey submitted by Coca-Cola was held to contain leading questions, mathematical errors, and was conducted by a former director of Coca-Cola. On this basis, the evidence was held to be unreliable and not of probative value;
  • The Mark was, in fact, rarely depicted in the evidence submitted. Instead Coca-Cola submitted evidence of their contoured bottle with fluting, and as such, were of little use in demonstrating acquired ‘distinctive character’ (Article 7(3) of the Regulation).

Coca-Cola sought to have the contested decision annulled (and sought costs, naturally) on the following grounds:

First Plea (inherent distinctiveness)

  • Although bottles are functional, many bottles are designed to attract consumer attention in a crowded market;
  • The Second Board of Appeal should have considered the combination of the specific features, and the effect of the Mark as a whole; and
  • The Second Board of Appeal should not have considered that the use of a distinctive word mark in combination with the Mark means a product is devoid of distinctive character alone (Freixenet v OHIM EU:C:2011:680 para. 42 cited).

Interestingly, the decision in Nestlé v Cadbury supports the argument that a shape must be distinctive ‘in and of itself’, rather than simply being associated with other trademarks. As Coca-Cola rightly suggested, this does make the threshold very high for registration of a trade mark, which the Mark arguably does not clamber over.

The court held that the criteria for assessing a three-dimensional shape mark are no different to any other trade mark. However, the court noted that the perception of a consumer of a three-dimensional mark is not necessarily the same as a word or figurative mark which is independent of the goods it designates.

The court decided in relation to the first plea that both the constituent elements of the Mark, and the Mark as a whole did not depart significantly from the norms of the sector, and no elements rendered the mark distinctive enough to allow consumers to infer its commercial origin. The first plea was therefore dismissed.

Second Plea (acquired distinctiveness)

Coca-Cola went on to plead that the large volume of evidence provided to OHIM and to the court demonstrated acquired distinctive character, particularly due to the broad use of the mark and the survey evidence demonstrating association of the Mark with Coca-Cola. Coca-Cola also suggested that the use of the bottle with contoured fluting did give acquired distinctive character to the Mark, on the basis that the Mark is a component thereof.

The court noted that the Mark needed to have “become distinctive through use before the application for registration was filed” (para.67, emphasis added), and that distinctive character cannot be proven simply by furnishing sales volumes figures and advertising material. The court reiterated that for a mark to have acquired distinctiveness under Article 7(3) of the Regulation, the relevant consumers “or at least a significant proportion thereof, identifies goods as originating from a particular undertaking because of the mark”.

Interestingly, the court held that the sign must have distinctive character throughout the European Union, and that a lack of distinctiveness in a single member state may be enough to refuse registration. Coca-Cola only surveyed in 10 of the 27 Member States, which the court held to be less than a ‘significant proportion’ of the relevant public for the Mark. The other evidence submitted by Coca-Cola was also found to be insignificant on various grounds.

The court, reiterating the need for the Mark to be a clear indicator of commercial origin, confirmed that Coca-Cola had not demonstrated the Mark had acquired distinctiveness, and thus the second plea was unfounded.

Conclusions

In much the same way as was found in the recent Nestlé v Cadbury decision, the general court has set out a clear statement to applicants that their marks must be clearly indicative of commercial origin, and that mere recognition, whether alone or in combination with other marks is unlikely to be sufficient for acquired distinctiveness. Therefore the position remains that three-dimensional shape marks are difficult to attain. However, one might ask: if the Coke bottle is not a sufficiently distinctive shape – what three-dimensional shape mark will be distinctive?

However, in our view, we consider that it might well have been possible to register the three-dimensional Coke bottle shape had Coke not been so ambitious in their application and applied only for the more distinctive fluted bottle-shape that was referred to within much of their evidence – rather than the more generic shape in their application. It is also notable that survey evidence has once again been found unsatisfactory, which should serve as a reminder to applicants for such marks that there is a high bar, and that they will need to think very carefully about their approach to survey evidence, ensuring that it is comprehensive (particularly in respect of community marks) and carried out by a truly independent party.

mypillowWe had some great questions from the audience during the Mastering U.S. Trademark Registration Practice seminar in Minneapolis a few weeks ago. During the session on genericness, someone asked about MyPillow, expressing amazement that it could be federally-registered.

Having now seen the MyPillow television advertisement probably a dozen times since then, I’ve finally gotten around to looking into the situation a bit so we can hopefully put this important question safely to rest, so to speak. But, before getting too deeply into details that might leave some counting sheep, I’m reminded of a few from our archives on the ubiquity of My branding:

My, my, my . . .

My Goodness, More “My” Branding & Marks

As these gems from the archives confirm, building a brand around the word My, raises serious questions, not about genericness, but about a limited scope of rights, given how commonly the term appears as part of trademarks.

Just because a term is common doesn’t make it generic. Even commonly used words can be descriptive, suggestive, and/or arbitrary for the goods/services in question. Remember the Spectrum of Distinctiveness and how the Suggestive/Descriptive line can be challenging?

While it is clear that Pillow is generic for a pillow, what does My add to the mark, and does the addition of the word My render MyPillow as a whole descriptive or suggestive of pillows?

An argument certainly exists for descriptiveness, given the number of Supplemental trademark registrations for marks having a similar My format, and given the existence of more than a hundred registrations and applications that disclaim the word My from the mark as a whole.

Yet, MyPillow is federally-registered on the Principal Register without a showing of acquired distinctiveness, so the USPTO is on record believing MyPillow is suggestive, not generic or descriptive. And, now that the registration is over five years old and incontestable, challengers to the validity can only raise the descriptiveness/distinctiveness argument in their sweet dreams.

Perhaps the logic on suggestiveness relates to the ambiguity of the word My. When Mike Lindell is holding the pillow above he refers to it as MyPillow. When he sells it to you, does it become YourPillow? And, then once you have it, from your perspective it becomes MyPillow again?

What I’m left wondering is how can the below federally-registered mark peacefully coexist for pillows, given the prior MyPillow federal registration, having both priority of use, filing, and registration?

ilovemypillowSo, one way to protect MyPillow as your trademark would be to engage a systematic watch service of filings at the USPTO. The MyPillow registration issued two months before the above mark was published for opposition, so why was no 2(d) refusal issued or opposition filed?

It appears that MyPillow started a pillow fight with the owner of the above mark by filing a trademark infringement lawsuit back in 2012, and again in 2013, but the registration for the above mark remains on the Principal Register, sending the message of thin rights, leaving an opening for others to join with other My marks, believing there will be no more pillow fights.

That appears to be what has happened, with My Private Pillow, My Secret Pillow, Angels on My Pillow as each have become federally-registered for pillows and were unopposed by MyPillow.

Marketing types, what are your thoughts about the MyPillow brand? Would your head find any support with this simplistic, but clearly successful brand name?

Trademark types, would this situation keep you up at night or could you sleep restfully given the apparent scope of rights and these close and coexisting third party registrations?

In the end, perhaps as they say, when you make your bed, especially with my pillow, you end up having to sleep in it, lumps and all, right?

Fans of the Metal Gear Solid franchise received disappointing news earlier this week when Project “Shadow Moses”–an ambitious fan reboot of the original game using Unreal Engine 4–was canceled.  A trailer showing the progress of the project prior to its termination is below:

This would have represented a significant improvement from the 1998 original Metal Gear Solid.

While disappointing, this wasn’t a terribly shocking development from the perspective of an intellectual property lawyer.  The developers of Shadow Moses made no secret of the fact that they were undertaking the development without formal permission from Konami, and given the importance of intellectual property rights to content companies, I would suggest that the eventual icing of this project was a foregone conclusion. Simply put, intellectual property rights can be incredibly valuable, but they also require incredible diligence.  Failure to vigorously protect those rights can result in signficant erosion of value over time, potentially culminating in an entire loss.  It was simply unreasonable to expect that a large multinational corporation like Konami would let a project like this continue.

While I think Konami’s position and actions were correct from the perspective of our current laws, I don’t necessarily agree with them from a cultural perspective or from the perspective of what I wish the law actually was.  As I’ve written on other occasions, the current state of our “sharing” society requires a soul-searching reexamination of what we want our intellectual property laws to be, and what we want them to do.  In the United States, our intellectual property laws are based on the constitutional prerogative “To promote the Progress of Science and useful Arts.”  Stated differently, our intellectual property laws are supposed to provide sufficient incentives for people to create.  Our current laws have pursued promotion through a profit motive and structure.

This structure, however, has largely become obsolete in many contexts.  Incentives for creation have changed and the costs and burdens associated with creation and distribution have shrunk enormously. Content is not just being consumed, its being reused and repackaged for individual self-expression.  Music, movies, and video games are no longer just forms of entertainment.  They are common languages that can create quick and lasting connections.  In such an environment, intellectual property laws can just as easily serve as an obstacle to progress as they can an incentive.  Our laws need to adapt to appropriately reflect and enhance our shared culture.

 

Social media impacts every facet of life and is often discussed in DuetsBlog posts. Courts are now having to address social media issues in connection with jurors. A federal judge in California is considering banning the use of social media altogether in a copyright case before him brought by Oracle America, Inc. against Google, Inc. at case No. C 10-03561 (WHA).

The parties jointly proposed the use of a juror questionnaire, and a multiple-day procedure for a neutral vendor to collect the information for the parties. The judge suspected that this was designed to obtain information about the potential jurors so that the parties could perform extended internet investigations on them prior to the voir dire process. He did not like it.

The judge ruled that no juror questionnaire would be used in the case. Instead, the judge’s usual voir dire process would be used. In addition, the judge ruled that if a potential contradiction develops between a juror’s voir dire answers and investigative material the parties uncovered, then it needed to be brought to the judge’s attention immediately. If the party fails to do so, the judge stated that he might find that there was a waiver or estoppel from raising the issue to attack the verdict at a later date. In connection therewith, the judge ordered the parties to retain all of their investigative material acquired about the jurors.

Other problems with the parties’ proposal for the judge included that the questionnaire would: (1) lengthen, not shorten, voir dire; (2) reduce the invaluable air time with the potential jurors where they can be “sized up” (e.g., clarity of answers, tendency to dominate, mental disorders and possible bias); and (3) provide a basis for the loser to attempt to impeach the verdict by investigating the jury to find a lie or omission during voir dire.

Finally, the judge noted that he would be instructing the jurors that they could not conduct internet searches about the case or the lawyers while the case was pending. He was concerned that, if and when the jurors found out that the lawyers conduced internet searches on them, they would not understand why they had not been allowed to do the same thing. Accordingly, the judge ordered the parties to show cause in a ten-page submission as to why he should not impose a ban on any and all internet research related to the jury. The parties were required to include detailed specifics about how far they may go under the law and/or rules of professional conduct in accessing Facebook, LinkedIn, Twitter and other social media accounts to obtain information about the jurors.

What role do you think social media should play in our jury system?

Three-dimensional printing technology continues to be a new frontier of creativity, advancement, and of course, legal issues. The laws surrounding 3D printing have always been a topic of concern, but the discussion took center stage over the last few weeks in an unprecedented way.

If you’re new to the idea of 3D printing, here’s a basic summary: a printer using hot plastic places the plastic in layers to build an object from the bottom up (Let CNN explain). In order to create the object, the printer relies on a design files (CAD files) that contain the code regarding how to build the object. CAD files can be original creations, or users can use a 3D scanner to scan an object and help generate a CAD file. Simple, right? (previous DuetsBlog articles on 3D printing are available here, here, here, here, and here).

Many users share, distribute, and sell their CAD files through online databases like Shapeways and Thingiverse. For example, if you had a 3D printer, you could download and create this World’s 2nd Best Lawyer Award for free!

2nd Best Lawyer

3D printing raises a number of legal issues, as users can scan and print objects that may infringe upon a third-party’s copyright, trade dress, or patent rights. These possibilities led one of our authors to wonder if 3D printing would become “the next Napster.” As with most new technology though, there is a lot of gray area, and little in the way of court decisions for guidance.

However, the 3D printing community recently was forced to confront this gray area head-on. News began circulating that an eBay user, just3Dprint had taken over thousands of CAD designs from Thingiverse and other websites and was selling the physically printed products on its eBay page for profit. Although all of the listings have been removed as of this posting, you can also visit Just 3D Print website for more information on its 3D printing services.

Understandably, many 3D printing community members were upset. Just 3D Print had taken the exact CAD designs (along with the accompanying photographs) and placed them on eBay for sale, reportedly without any attribution. While many Thingiverse users agree to license the use of the CAD files for free pursuant to a Creative Commons license, many of those licenses restrict the license to non-commercial use. As a result, Just 3D Print may have infringed the copyright in (1) the CAD file, (2) the physical object, and (3) the photographs.

But Just 3D Print doesn’t see it that way. In a lengthy response under the username JPI, the company made a number of claims, including that (1) CAD designs are unprotectable and that (2) that by uploading the designs any protectable rights in the designs became part public domain; and (3) Creative Commons licenses are unenforceable. We can easily disregard the public domain claim because merely publishing a copyrighted work does not place the work in the public domain.

The protectability of CAD designs is a more interesting issue, though. CAD designs of copyright protected objects could be protected as a derivative work of that object. CAD designs can also be original technical designs created without scanning a physical object. Yet if the design is merely a scan of a common object, it is possible that the CAD design may not meet the originality threshold if there is a limited number of ways to express the idea of printing that object. If that is the case, the “expression” (the drawing) merges with the idea (the common object) and the expression is not protectable. This is known as the merger doctrine.

Of course, in light of the sheer number of copied files, the use of the photographs, the intent to profit, and the blatant disregard of the Creative Commons licenses, I’d predict it is unlikely that the merger doctrine protects all of Just 3D Print’s actions. But if I’m going to print off an award for the World’s Second Best Lawyer, I had to at least ask the question.

– Jason Sprenger – President, Game Changer Communications

Throughout my career, I’ve noticed that there’s a prevailing theory among the masses in my industry, and I’m sure it’s probably true of other professional service industries (law included) as well.  People seem to think that working with B2C companies is way more fun and interesting than working for B2B companies.

I’ve had the honor and privilege of working with many B2B and B2C companies, and this work has spanned the gamut.  On the B2B side alone, I’ve pitched toilet seat wipes to building trade magazines for consideration for potential news stories. I’ve helped large tech companies acquire, merge, build and sell business units – and most everything in between.  Sure, it’s not all glamorous work; explaining the science of toilet seat wipes to a bunch of reporters isn’t inherently sexy.  But when you go beyond the surface, there’s a lot more to it…and, frankly, it’s often quite fascinating.

There are two main ways that I think B2B companies set the standard for fun and interesting work:

  • Simplicity of Story.  B2C value propositions are often complex and hard to define, and that can make them difficult to rally around.  On the other hand, I learned long ago that B2B value propositions revolve around at least one of three things: saving a person or organization time, saving them money/resources or minimizing their risk.  No matter what company or product/service I’ve worked with, this has held true.  Consequently, a big part of my job as a professional communicator involves boiling a company and its offerings down to plain language that hits these points head on, and then getting the word out.  How does your work help a B2B company deliver on these value attributes?  Once you solve that puzzle, and achieve focus on what you find, it’s pretty remarkable what impact you can have.
  • Purpose.  There are exceptions, and it’s certainly true of many B2C organizations as well, but the B2B organizations I’ve worked with have had missions and visions that go well beyond making money.  They hope to build the next big thing and change the world.  They want to contribute to discoveries, and advance the sciences.  They’re trying to simplify the lives and minimize the stress of the burned-out businesspeople around them.  They’re devoted to their colleagues, and trying to find out how to make everyone more effective.  I absolutely love the altruistic attitude that I see from so many B2B organizations and executives, and it makes working with and advocating for them that much easier and rewarding.

No matter the organization, there’s always something about any particular organization that we can identify with and get excited about.  Sometimes it’s plain to see, and sometimes it’s harder to find.  But when we unearth it, it’s really exciting – and it opens up a whole new world of perspective and opportunity that I think is pretty wonderful.

Yes and no are at opposite ends of the spectrum. North Pole, South Pole. Night and day. Win, loss. Black, white. Available, unavailable. Protectable, unprotectable. Infringing, non-infringing. They represent a binary proposition, like a traditional light switch with two settings: on and off.

My daughter loves the yes end of the spectrum; no, not so much; and maybe is tolerable, because it’s easy to get hopes up and accelerate to hearing yes. The problem is the large chasm between maybe and either end of the yes/no spectrum. Maybe can be uncertain and confusing.

Maybe spans a great distance between yes and no. Maybe can mean a slight possibility, or it can also mean a strong probability — creating a vast range of very different options that can be rather unhelpful to those who are paying for legal advice to make smart business decisions.

As we have written before, marketing types understandably love to hear yes too, when they seek legal advice about trademarks, and they are ever more prepared to probe, question, and challenge advice when they hear no, by way of example, remember the brandverbing trend?

Although we launched this blog seven years ago from the springboard of distancing ourselves from Dr. No and his Parade of Horribles, it is also worth noting, lawyers are frequently criticized for not giving a straight answer because, after all, it depends! Sounds like maybe, right?

For those of you who may not have been engaged here for our inaugural Dr. No blog post, might you remember J.D. Waffler: The Art of Taking a Position? If not, maybe you should check it out?

Over the weekend, we didn’t just have our seventh birthday, our friend Seth Godin artfully wrote again (like clockwork) about “Saying No,” and with the passing of former First Lady Nancy Reagan, we were all reminded of the simplicity of her famous “Just Say No” anti-drug campaign.

So, I’m left wondering if the historically rigid trademark advice against verbing and other concepts sounded in no as a way of keeping the advice simple to avoid client confusion and potential adverse outcomes, no matter how remote? Perhaps a strong candidate for a maybe?

It seems to me the key to successful relationships with trademark types is being able to enjoy the benefit of their experience, clear communication, and trust, and knowing that getting to yes is often possible and worthwhile, but not always the easiest or most direct path from maybe.

And, just maybe, your favorite trademark type can help remove for you the confusing and uncertain nature of the it depends and the maybes of trademark life.

— Jessica Gutierrez Alm, Attorney

donald-trump-john-oliver-donald-drumpf_650x400_61456831723

This presidential election cycle has been nothing if not entertaining.  Mr. Trump has been a particular favorite among late night T.V. hosts.

In one particular 20-minute monologue, Last Week Tonight host John Oliver berated the Donald, and in doing so, brought to light a historical quirk of the Trump name.  It would seem that the Trump family name was at some point changed from Drumpf to Trump.  Exactly when in the family history the name change occurred seems unclear, and Trump himself has neither confirmed nor denied the namesake.  Oliver encouraged viewers to begin referring to Donald Trump as Donald Drumpf, in an effort to separate the man from the brand.  The video quickly went viral after being posted last weekend, and now boasts 57 million views on Facebook.  The hashtag #MakeDonaldDrumpfAgain has been trending for days.

john-oliver-is-asking-america-to-make-donald-drumpf-againAs he states in the video, Oliver has even filed a federal intent-to-use trademark application for the standard character mark “DRUMPF.”  The application, actually filed by Drumpf Industries, LLC, is for use of the mark in the “provision of a website featuring multimedia.”

The Lanham act has two provisions related to registering a person’s name.  Section 2(c) bars registration of a mark that “[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent.”  This section prevents individuals from profiting off of others’ names.  Section 2(c) has also allowed Donald Trump, himself, to trademark TRUMP on several occasions, by filing a written consent.  This provision has also prevented others from registering marks such as OBAMA without the President’s consent.

Section 2(e)(4) provides that a mark may not be registered on the principal register if it “is primarily merely a surname.”  Marks that are primarily merely surnames, or last names, are treated as descriptive marks.  They may be registered on the supplemental register.  Or, if the name has acquired distinctiveness under Section 2(f), it may be registered on the principal register.

It’s possible that either, or both, of these provisions could be cited against John Oliver’s trademark application.

Section 2(c) could arguably be cited against the application, because although Drumpf is not Trump’s actual legal name, John Oliver makes clear that the DRUMPF name is intended to “identify[] a particular living individual” without his consent.  The popularity of Oliver’s video, website, and hashtag  may even weigh in favor of an argument that the Drumpf name is intended to identify a particular individual.

Section 2(e)(4) may also be cited against the application on the basis that Drumpf is “primarily merely a surname” without acquired distinctiveness.  To establish whether a name is primarily merely a surname, the PTO will look at five factors:

(1) Whether the surname is rare;

It does appear rare, at least in the U.S.  A quick search on 411.com and familypedia.wikia.com, sites used by the PTO in the past to show the prevalence of a surname, did not reveal any matches for the surname Drumpf.  This suggests Drumpf is not primarily merely a surname.

(2) Whether the proposed mark is the surname of the Applicant or anyone connected with the Applicant;

Unless someone connected with Last Week Tonight has the name Drumpf, this factor likely suggests that Drumpf is not primarily merely a surname.

(3) Whether the proposed mark has any recognized meaning other than a surname;

This can occur where, for example, the term has a meaning in a foreign language, or is associated with a different brand. It’s unclear where this factor would fall.

(4) Whether the term has the “look and feel” of a surname; and

A lot of elements can influence the “look and feel” factor.  Drumpf appears to have been of German origin, according to biographer Gwenda Blair.  Whether Drumpf is more similar to other German surnames may affect this analysis.

(5) Whether the stylization of the lettering in the proposed mark is distinctive enough to create a separate commercial impression.

The fifth factor does not apply in this case, as the application is for a standard character mark.

Moreover, if a Section 2(e)(4) rejection is raised, could Oliver argue that DRUMPF has acquired distinctiveness in connection with the proposed services based on the immense popularity of Oliver’s related video, website, and hashtag?

In any event, as with the rest of the election, it will be interesting to watch where this application goes.

-Martha Engel, Attorney

When an application has been refused registration in view of another’s prior filed mark, one way to resolve the issue is through a consent agreement wherein the registrant consents to the registration and the parties set out the reasons why the parties believe that there is no likelihood of consumer confusion between the marks.  A recent precedential TTAB decision, however, found that in particular circumstances, “no means no” when it comes to trademark registration — even when there is consent.  Sometimes a poorly crafted consent agreement leaves no brewer hoppy.

The procedural background here is a mess, but bear with me as I travel back in time because this demonstrates why you should file an intent-to-use trademark application as soon as possible (spoiler alert:  the earliest filer wins this one).

A Massachussetts brewery, Bay State Brewing Company, Inc., filed a trademark application for TIME TRAVELER BLONDE for beer on January 17, 2013.  The filing claimed a first use date at least as early as January 1, 2012 and the specimen filed with the application is shown below (which as a printer’s proof was surprisingly not refused, see TMEP 904.04(a)).  It was hard to find a good photo showing use of the mark with BAY STATE.

baystatetimetraveler

However, another Northeast based brewery, A&S Brewing Collaborative LLC in Vermont, had already filed an intent-to-use application for TIME TRAVELER for beer, ale, lager.  A&S Brewing provided a specimen showing use of the mark on a shandy and claimed a first use date that was 11 months after Bay State Brewing’s claimed first use date.   A&S Brewing’s TIME TRAVELER published for opposition a few weeks after Bay State Brewing filed its application.  Bay State Brewing Company requested an extension of time to oppose, which was granted until April 12, 2013.

Meanwhile, Bay State Brewing’s application received an office action with a potential refusal to register over A&S Brewing’s prior pending application.  Bay State Brewing’s attorney filed a response on April 12, 2013 (same day as their deadline to oppose) that included a copy of the consent agreement executed earlier that month.  It was filed the same day as Bay State Brewing Company’s deadline to oppose.  Bay State Brewing Company never opposed the application as the parties entered into a consent agreement, executed on April 10, 2013, whereby Bay State Brewing agreed not do so — unnecessarily foregoing its right to oppose or petition to cancel the registration even if the consent agreement was not accepted.   So, A&S Brewing received a certificate of registration.

The consent agreement basically says that the parties do not believe there is a likelihood of confusion because one party uses it on a blonde beer with BLONDE in a limited geographic area, the other uses it on a shandy, the trade dress is different, and they are used with each other’s house marks, which are different.   The same response included a disclaimer of the term BLONDE, which as many of you know is a type of beer.

timetravelershandy

If both of these were on the shelf and someone asked you to pick up some TIME TRAVELER, would you be confused?

The Trademark Office refused to accept the consent agreement and issued another office action.  Bay State Brewing replied with a copy of a significantly more robust “consent agreement” with an effective date of April 10, 2013.  The Trademark Office again refused to accept the consent to registration agreement, and the Board confirmed that the consent agreement did not overcome the likelihood of confusion between the marks as filed.

It seems to me that parties only needed one of the following:  a restriction on the Registrant from selling in the geographic region identified in the consent agreement or an amendment to one of the applications to include the brewery’s house mark.  A concurrent use proceeding could have been instituted that would limit the registrations to geographic regions, and I believe we will start to see more of these types of proceedings being used in the craft brewery industry.

Further, the parties rely on the trade dress and use of the respective brewery’s house brand on the packaging — but neither marks as filed with the Trademark Office include the house brand.  Bay State could have filed for BAY STATE TIME TRAVELER BLONDE or could have forced A&S Brewing to amend their own application to THE TRAVELER BEER CO TIME TRAVELER SHANDY by keeping the option open to oppose, if the U.S. Trademark Office did not accept the consent agreement.

It is important to remember that the refusal to register the mark does not mean that Bay State cannot use the mark going forward.  A&S Brewing could potentially challenge their use of the mark (assuming they didn’t agree not to do so), but Bay State likely has priority in right to use in some areas based on its use date, which is earlier than A&S Brewing’s filing date.

Morals of the story:  the tortoise doesn’t win the race to trademark protection and be careful with how you draft consent agreements.