Federal Trademark Registration

If you’ve paid attention to any billboards in the Twin Cities over the last year or so, you’re probably wondering why I haven’t discussed this one yet, knowing my passion for billboard ads:

The Kris Lindahl billboard ads — especially this one —  are hard to ignore. They are almost as ubiquitous as a certain iPhone Xs ad. Plus, this one strikes a pretty distinctive wingspan pose.

Apparently there is an art or science behind poses for real estate agents, but as far as I can tell from a Google search, none appear to cry out “wingspan” like Kris’ does, so is the pose ownable?

Seems pretty clear from how his name is used as a mark on this billboard that Mr. Lindahl’s eponymous Lindahl Realty firm is on the way to registering his personal name as a service mark.

While it isn’t always a cake walk, in obtaining federally-registered service mark rights in a personal name, what I’d really like to see Mr. Lindahl attempt next is registration of his wingspan pose.

What would you rate his chances, putting aside whether you like the above billboard ad or not?

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Ron, you’re so vain, you probably think this post is about you, don’t you, don’t you — actually, it is, or, let’s say, more about your recent in-actions — still, I hope you enjoy this cute little melody.

By the way, before fully discussing how you walk into a party or onto a yacht, do I detect a hint of apricot in the color of your stylish Likelihood of Confusion garb, might there be a matching scarf?

The week before last, walking through the Minneapolis skyway system, while reading our good friend Ron Coleman’s explanation of “why I let my trademark registration lapse,” I kid you not, a second and more physical spectacle emerged right before my eyes when crossing over 5th Street:

Ron, do I need to connect the dots for you on the striking parallels of the mysterious energy that you generated when you gave away the thing you (once) loved? Like the total eclipse of the sun?

Yes Ron, love you like my own brother, but if you were Dave, I’d help him back on the tracks, and remind him of what less than 12 cents a day buys, for those incontestable and powerful standard-character federally-registered rights over a second ten-year term. Remember, sword and shield.

The decisive inaction in allowing the lapse, reminds me of the forgotten and invisible value of deterrence. And, while I’m on board with much of the irreverent tone you can display from time to time, are you now suggesting that other brand owners turn their circle ®s upside down too?

I won’t put words in your mouth, but are you advocating for unilateral registration disarmament? Even if not, I’m left wondering, are the children or watchful brand owners likely to be confused?

After all, chalking up the original ten year old decision to federally-register your blog’s namesake as a senseless and unnecessary goof, today, because you haven’t (yet) found an occasion to enforce it, requires the omnipresent convergence of 20/20 hindsight and a flawless crystal ball for the future, all in one moment. Again, deterrence my friend, it’s beautiful and invisible.

And, as to the question of vanity, far be it for me to question yours, but isn’t tossing your circle ® in the trash, a little like saying to the world, “look mom, no hands,” after learning to ride a bike, and then daring unwise children, to knock you off? Pun and double-meaning, fully intended.

Now Ron, I know you relish a formidable challenge, like when you went (not to Saratoga), but to Washington, D.C., and your client (not horse), naturally won, the trademark case of the year. But, before leaving the question of vanity though, just wondering, after reading the favorable Tam decision, tell me, did you have one eye in the mirror, as you watched yourself gavotte?

Still Ron, don’t you think the modest investment of less than 12 cents a day is worth putting the USPTO in the position to, and give it, the statutory charge to do your enforcement bidding for you? Don’t you? Even if someone, as you seem to invite, tries something? Don’t you, don’t you?

And here’s an underworld spy question for you Ron, is there no room for the Easy Button, in your commercial litigator’s toolbox, just in case you need it, let’s say, down the road in a few?

Ron, please don’t look at me that way! When you have your hat strategically dipped below one eye, I’m left with the feeling you think I’m either still quite naïve, or full of it, nothing in between.

By the way, have you actually verified that your Likelihood of Confusion® registration never formed a bar to others at the USPTO? There are tools for that, courtesy of Towergate Software.

What we do know for certain is, it will no more, if it ever did. And, if you ever want to avoid the need for a formal opposition at some distant point in the future, if the USPTO doesn’t agree with your assessment that someone had their sights on messing with you, without your ®, you can kiss the Letter of Protest tool goodbye, as this little guy — ™ — doesn’t cut it.

Please let’s be honest Ron, it’s always easier to hang on to something and hold it in your hands than discard it and try to get it back later. I realize you’re feeling confidence in letting it go in this moment, but what if the facts or your mind change down the road?

Dumpster diving is a messy proposition. What the USPTO granted yesterday doesn’t always come as easy, if at all, tomorrow or the next day. As we all know, the USPTO is not impervious to changing its mind on how it views certain things, especially when it comes to judging the line between trademark suggestiveness and descriptiveness.

Who am I to judge your calculation of value? But let’s not forget, Ron we’ve all seen your fancy Likelihood of Confusion branded apparel. By the way, will we see those fancy threads in Seattle? Or, are they about to become a collectors item on eBay?

Let me just say, had you presented your apricot hat in hand in Orlando, and passed it around the room, I’m thinking you’d have collected more than the price of another ten year term, given the enormous and generous contributions you’ve made to our guild over the last few decades.

Ron, don’t get me wrong, I fully realize that you’re where you should be all the time, and I completely admire your sensitivity to the evil constructs of vanity, but I fear that the little voice whispering in your ear has spilled some clouds in your coffee on this one. What about the children who may be watching? Aren’t you concerned about the implication of what you seem to be saying, simply just TM it instead?

Ron, having said all that, I hope we can still be friends, as I have no doubt, there a plenty of others still dreaming that they’d be your partner:

Last, but not least, Ron, will you need reminding that yet another price of purging your vanity is that you’ll need to remove all those fancy trademark registration symbols from your blog?

Nearly everyone in the IP community is talking about the hilarious viral Velcro music video released last week. Hat tip to Patently-O, Martha, and Brett. The “behind the scenes” video is here.

We’ve spoken before about nervous trademark types, behind the scenes doing their level best, and taking steps to try to avoid unwanted genericide of the trademarks they are charged to protect:

“Nervous, I say, because these types of advertisements frequently are designed to help prevent unwanted genericide of a trademark. The idea generally is, let’s show and create a record that we are educating the public about our trademark rights and hopefully deterring misuses that otherwise might find their way into the public eye and influence the relevant public’s understanding of a term or symbol as being generic and part of the public domain, free for anyone to use, even competitors.”

Velcro has been on our Genericide Watch list, and Wikipedia notes it is a trademark frequently used as a generic term. So, hats off to Velcro for letting their attorneys’ hairs down on this one.

And congrats to Penn Holderness and the rest of the WalkWest creative team, for helping give the impression in the Velcro video that at least some nervous lawyers can still have a sense of humor.

Julie Barry, Director of Global Brand, Velcro Companies, explained the Velcro video in this way:

“We’re here in North Carolina, shooting our ‘We are the World’ video which is an educational video explaining to folks details about the Velcro brand trademark and why it’s important that people refer to the mechanical fastener as ‘hook and loop.'”

Actors posing as lawyers, flanked by real Velcro lawyers, appear agitated at times, imploring listeners to not say Velcro, but instead “hook and loop,” or “our trademark will get killed,” “we’ll lose our circle ®,” and “our trademark goes away.” At the same time, Velcro is fully admitting the “First World” melodramatic nature of this worst case scenario and unfortunate situation.

Maybe it’s just me, but I’ve never heard of a “hook and loop” fastener before now, so the video certainly accomplished that bit of education. I’d be surprised, however, if the video moves folks to embrace the stiff and clunky six syllable “hook and loop fastener” generic phrase, over Velcro.

Perhaps what follows is one small example of where I’ve captured “at least some of the sparks” spinning from my mind’s eye, so please bear with me, but as I watched and listened to the Velcro video more times than I’d like to admit (kind of an addictive musical hook), the rapid repetition of “hook and loop” triggered thoughts of “hook and ladder,” then “chutes and ladders,” and how ladders can lead up to rewards while chutes can take you for a ride straight to the bottom:

Given those stark alternatives, given how a brand that deteriorates to the point that its primary meaning is perceived to be more generic than it is perceived a brand (is not a brand at all, under the law), and given a trademark owner’s understandable desire to try and influence and build up the primary brand meaning among the relevant consuming public, it’s worth asking whether the humorous Velcro video helps to move that critical needle. In other words, does it act as a ladder?

We’ve cautioned before that a brand designed to launch an entirely new category must also spend valuable time and effort in creating and donating to the public, an acceptable generic term that the public easily can embrace, so when the applicable patents expire and exclusivity is lost, the trademark doesn’t travel straight down the chute to genericness:

Brand owners launching a new category of product or service do well to design a simple generic category name too.”

“Remember how it took Rollerblade an entire decade to come up with “in-line skates”?  Before that, the generic name it adopted at the USPTO was “boots equipped with longitudinally aligned rollers used for skating and skiing,” leading to a multitude of generic Rollerblading misuses.”

Is “hook and loop” going to get the job done? Will it help prevent a death by a thousand cuts?

“Hook and loop” is certainly more of a ladder, even a rescue “hook and ladder,” than the extreme generic identification of goods found in the first Velcro trademark application from 1957:

“NOTION-NAMELY, A SYNTHETIC MATERIAL SOLD IN RIBBON, SHEET, OR PIECE GOODS FORM, SAID MATERIAL HAVING COMPLEMENTAL PARTS WHICH ADHERE TO EACH OTHER WHEN PRESSED TOGETHER AND ADAPTED FOR USE AS A CLOSURE, FASTENER, OR BUTTON FOR CLOSING GARMENTS, CURTAINS, OR THE LIKE”

And, unlike Rollerblade who seriously delayed in donating a bite-size generic category term to the general public (“in-line skates”), Velcro seems to have been fully invested in “hook and loop” going all the way back to at least as early as 1975. Query whether the entry of the “hook and loop fastener” phrase closely tracks the lapsing of the patents (as the video mentions) “forty years ago.” If so, perhaps it still came twenty years too late?

Either way, I’m seriously wondering whether Velcro’s tongue-in-cheek reference to a “scratchy and hairy fastener” might be more easily and readily embraced by today’s general public as the generic alternative to genuine Velcro branded products.

I’m also left thinking that the video begs the question of who is the intended audience. In other words, who are the “folks” that Velcro would like to reach with this creative video?

I’ve always thought of Velcro as more of a B2B brand, but in researching this post, I see that I’ve missed some of their general consumer products, like general purpose straps, general purpose plastic bagschildren’s toy blocks, adhesive cementmedical splints, and hair rollers, for example.

Contractual efforts are probably the most effective way of controlling how the Velcro trademark is used by those who purchase authentic product from Velcro and incorporate Velcro fasteners into their own consumer products. And, when it comes to competitors who might be inclined to misuse the Velcro trademark, the cease and desist letter, and/or lawsuit is probably most effective.

So, perhaps the general public is the intended audience of this educational effort. If so, I’m not sure the effort anticipated how many in the general public don’t like to be told what to say and do.

Moreover, let’s face it, the video’s referenced “trademark laws being broken,” aren’t being broken by the general public speaking about the brand or a competitor’s alternatives to the brand. Nor are they being broken by the media who reports and writes about all kinds of things and happens to use “velcro” in lower case and in a generic sense.

I do seriously hope the video will strike the right chord with these important audiences, as they will have a significant impact on whether the brand is able to climb the ladder of distinctiveness and fame or slides down the chute to genericness.

For those still with me and wondering, while I’ve questioned the seriousness of the risk for genericide when intentional and controlled brand-verbing is involved (and the 9th Circuit’s recent decision affirming the survival of the Google trademark appears to validate the difficulty of bringing a trademark all the way to the ground zero), the Velcro mark seems different, as the generic uses don’t involve verbing, they go straight to nouning and naming what the product is, by the way, a far more efficient name for a “hook and loop” or “scratchy and hairy” fastener.

Which of the present options are most likely to roll off the tongues of those who matter?

To the extent you haven’t yet had a chance to fully digest the significant rule changes about to go into effect in all pending TTAB (Trademark Trial and Appeal Board) cases at the USPTO (United States Patent and Trademark Office) on January 14, 2017, now is your chance to hear how they will impact your cases and learn strategies for mastering them.

Strafford is reconvening a familiar threesome, including yours truly, to provide valuable insights and a dynamic discussion of these important rule changes, in a webinar scheduled for November 9, 2016. Here are the details on the program and how to register for it. And, as always here, the first three to post a comment below will enjoy free attendance.

Basically, you’ll learn how to do this on the TTAB gridiron:

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I’m very fortunate to be presenting again with two very capable TTAB practitioners: Linda McLeod of Kelly IP in Washington, D.C., and Jonathan Hudis of Quarles & Brady’s D.C. Office.

Seems just like yesterday, but do you remember the TTAB rule changes we discussed nearly a decade ago, in this 2007 Strafford webinar?

When we hear the word “overbreadth” in close connection with the word “trademark,” the often discussed “trademark bullying” topic will frequently come to mind.

Yet, discussions about “trademark overbreadth” are not limited to exaggerated and unrealistic trademark claims by a trademark owner.

We previously have discussed how one might deal with prior registrations that contain overbroad descriptions of goods or services, utilizing Section 18 challenges to compel certain narrowing.

Trademark overbreadth also can have real meaning in connection with the representation of the chosen mark an applicant might select in attempting to federally register at the USPTO.

An applied-for mark, in standard character format, is the broadest possible method of protection: “Registration of a mark in the standard character format will provide broad rights, namely use in any manner of presentation.” (emphasis added)

Broad isn’t always best, especially when a new comer and Applicant is hoping to coexist with prior federally-registered rights that already enjoy the many benefits of that very broad standard character protection at the USPTO:

“[T]he TTAB decides likelihood of confusion “on paper” at the USPTO as opposed to how a federal district court finds likelihood of confusion in “the real world” with the specific marks in use in their full and complete marketplace context:

  • If a mark (in either an application or a registration) is presented in standard characters, the owner of the mark is not limited to any particular depiction of the mark. Cunningham v. Laser Golf Corp., 222 F.3d 943, 950, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); In re Cox Enters., 82 USPQ2d 1040, 1044 (TTAB 2007).
  • The rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1284 (TTAB 2009).
  • A registrant is entitled to all depictions of a standard character mark regardless of the font style, size, or color, and not merely “reasonable manners” of depicting such mark. SeeIn re Viterra Inc., 671 F.3d 1358, 1364-65, 101 USPQ2d 1905, 1910 (Fed. Cir. 2012); Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 1353, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011).
  • Therefore, an applicant cannot, by presenting its mark in special form, avoid likelihood of confusion with a mark that is registered in standard characters because the registered mark presumably could be used in the same manner of display. See, e.g., In re RSI Sys., LLC, 88 USPQ2d 1445, 1448 (TTAB 2008); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988).
  • Likewise, the fact that an applied-for mark is presented in standard character form would not, by itself, be sufficient to distinguish it from a similar mark in special form. See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); Sunnen Prods. Co. v. Sunex Int’l, Inc., 1 USPQ2d 1744, 1747 (TTAB 1987); In re Hester Indus., Inc., 231 USPQ 881, 882 n.6 (TTAB 1986).

“With this well-settled precedent governing most TTAB cases, it should become more and more clear that proving likelihood of confusion at the TTAB to prevent another from being able to register a standard character mark doesn’t necessarily mean that infringement should be assumed or that it can even be established in federal district court, based on the actual market conditions of the specific trademark uses of the parties.”

The reverse is true as well. Just because an Applicant might be successful in avoiding a finding of trademark infringement based on its particular stylized use, doesn’t mean the Applicant’s federal registration application — in standard character form — is sufficiently tailored and narrow enough to avoid a finding of a likelihood of confusion at the TTAB, especially when the new comer and Applicant is confronted by prior standard character trademark or service mark registrations.

So, there is certainly an advantage to being the first to obtain standard character protection at the USPTO, and there is no guarantee a new comer Applicant is entitled to one.

Applicants should think carefully about whether the broad standard character format puts them in the best position to defend against a likelihood of confusion claim at the TTAB.

For those interested in learning more about the valuable benefits of federal trademark registration and how to successfully navigate the registration process at the USPTO, it’s time to mark your calendars for an upcoming educational opportunity in Minneapolis on Tuesday February 16, 2016.

Here is the official brochure for the event, here is an online link for information on how to register for this event, and a listing of the talented panel of speakers for the day.

Attendees of this live Minnesota Continuing Legal Education full day seminar will learn how to overcome a wide variety of grounds for refusal, benefit from strategies and valuable tips for handling ex parte appeals and requests for reconsideration, understand how TTAB proceedings can help a brand owner’s registration efforts, especially in light of the Supreme Court’s recent B&B Hardware decision, and receive valuable insights from former USPTO Examining Attorneys.

As an added bonus over the lunch hour, attendees will learn how to develop a reputation for thought leadership using various social media tools, as I moderate an engaging discussion with these social media mavens: Aaron Keller of Capsule, Shayla Stern of Fast Horse, Seth Leventhal of Minnesota Litigator, and last, but certainly not least, Ron Coleman of Likelihood of Confusion.

We’re counting the days, and we hope to see you there . . . .

Excerpt from Chudleigh’s Website

As if we all haven’t already indulged a little too much over the holidays, we chose our first day back to write about non-traditional trademark protection for the configuration of single-serving apple pie pastries. It’s OK, don’t worry, if the Blossom pastry to the left is tempting, you always can get back on track tomorrow!

Having said that, I’m afraid that neither counting calories, nor exercising a healthy dose of dietetic discipline will protect the once-believed “distinctive configuration for baked goods” from the fiery furnace of the deadly trademark functionality doctrine.

To that point, and in case you’re wondering what the trademark registration symbol to the left is supposed to say, for now, it references the federal configuration trademark registration that Chudleigh’s obtained back in 1999, and renewed in 2009, for this shape of pastry:

 

 

We say, for now, because the federal district court in the Eastern District of Pennsylvania — just prior to Christmas — granted summary judgment against Chudleigh’s, concluding as a matter of law, that the pastry design is “essential to the use or purpose” of the pastry, and the design “affects the cost or quality of” the pastry, rendering the pastry design functional and incapable of trademark protection and registration. So, unless Chudleigh’s appeals the decision and is able to overturn the functionality ruling, its fifteen year old non-traditional trademark registration will be burned to a crisp (revoked/cancelled, for the benefit of our non-pastry-chef-readers).

The court summarized its functionality determination without a lot of legalese:

“The product’s size, shape, and six folds or petals of upturned dough are all essential ingredients in the Blossom’s ability to function as a single-serving, fruit-filled dessert pastry. The six folds or petals of upturned dough are essential to contain the filling, and the number of folds or petals is determined in part by the size of the product and the need to limit the number of openings in the top for reheating. Furthermore, permitting Chudleigh’s to maintain proprietary rights in the Blossom Design would have the deleterious impact on competition that the functionality doctrine aims to prevent.”

Now, to the extent you’re wondering how exclusive trademark protection can go up in flames fifteen years after the USPTO granted a federal registration in the first place, it’s worth knowing, there is no time limit on challenging non-traditional trademark rights based on functionality grounds — even incontestability does not validate protection for a design shown to be functional at any later point in time.

To the extent you’re wondering why the USPTO didn’t smoke out functionality sooner and flip the claimed configuration trademark before issuing the registration in 1999, another good question, and the prosecution history at the USPTO provides some interesting answers.

The pastry design trademark application was examined at the USPTO in 1998, before the Supreme Court had decided Wal-Mart (2000) or Traffix (2001), so the examination focused on the product configuration lacking inherent distinctiveness, the USPTO’s initial registration refusal did not raise functionality.

Chudleigh’s was able to overcome the refusal with argument and evidence, convincing the USPTO that the design was sufficiently unique to be considered inherently distinctive, since the USPTO had not yet been informed by the U.S. Supreme Court that product configurations can never be inherently distinctive. Following the Supreme Court’s decisions in Wal-Mart and Traffix, it is settled that only non-functional product configuration designs that have acquired distinctiveness are capable of trademark protection and registration on the Principal Register.

Last, to the extent you’re wondering how this trademark validity challenge came before the federal district court in the Eastern District of Pennsylvania, that’s an interesting story too. But for our limited purposes here, Chudleigh’s noticed that Applebee’s was selling a similarly shaped dessert pastry, so it sent to Applebee’s a cease and desist letter. Applebee’s supplier of the pastry ended up bringing a declaratory judgment action, asking the federal court in Pennsylvania, for a number of things, including a declaration that Chudleigh’s configuration trademark registration is invalid and was not infringed.

One possible takeaway: To the extent your trademark portfolio includes pre-Wal-Mart/Traffix non-traditional trademark registrations, it is probably a good idea to make sure they can withstand the heat of the fiery furnace of functionality, before you seek to enforce them.

If December 2014 was the month for configuration trademark filings, will 2015 be the year of functionality decisions?

It is State Fair time again in Minnesota, so let’s examine the Tilt-a-Whirl brand.

The brand originated in Minnesota almost 90 years ago, after the amusement park ride was invented by Herbert Sellner of Faribault, Minnesota. Since 2011 the Tilt-a-Whirl brand and trademark has been owned by J&S Rides, d/b/a Larson International out of Plainview, Texas.

The first federal trademark registration for the Tilt-a-Whirl mark issued December 14, 1926, covering “merry-go-round or carrousel” in Int’l Class 28 (generally covering games and sporting goods), which sounds a little tame and perhaps even a bit misdescriptive, since the ride is well-known to cause nausea.

The second federal trademark registration for the Tilt-a-Whirl mark issued on December 5, 1995, covering more broadly “carnival and amusement park rides” in Int’l Class 22. This strikes me as an odd classification for this expensive piece of equipment, since Int’l Class 22 covers such unrelated and eclectic products as:

“Alpaca hair, bailing twine, bungee cords, clotheslines, down feathers, hammocks, laundry bags, plastic twist ties, human hair for stuffing and padding purposes, tents, unfitted spa covers, vehicle rescue apparatus, namely, rope cables used to affix between vehicles to pull a jammed or stuck door of one of the vehicles, and waterproof bags, namely, wet bags for temporary storage of wet and/or soiled cloth diapers.”

Perhaps it was incorrectly classified in Int’l Class 22, less for what the Tilt-a-Whirl is and does, and more for what you might need before or after experiencing a ride on one. I experienced my last ride a couple of years ago, so my daughter has been since, and is on her own this go round.

Here’s an interesting question to ponder: Why no coverage for Tilt-A-Whirl entertainment services? The registrations only cover the product, a very expensive piece of manufactured equipment, costing more than $300,000. So, the consumers of the Tilt-a-Whirl branded product are those who operate amusement parks and rides, not those who buy tickets to ride on them.

It seems to me that to create service mark rights in Int’l Class 41 under the Tilt-a-Whirl brand for “entertainment in the nature of an amusement park ride,” the brand owner would have to operate the equipment itself to provide the entertainment service, or at least license another to do so.

To the extent the brand owner thought this one through, I’m thinking the risk of controlling independent carnival operators as trademark licensees and the resulting potential liability for any operational mishaps far outweighs the additional benefit of owning technical service mark rights in the Tilt-a-Whirl brand and mark. But, what do you think?

Louis Armstrong first performed “Mack the Knife” in 1956, a year later McDonald’s introduced the Big Mac, and then, Bobby Darin’s version of “Mack the Knife” became a chart-topper in 1959.

So, these events were all before my time, but I’m left wondering if there was any connection between them, back in the day, or whether they were an unrelated coincidence of events.

Either way, who could have known and who would have guessed that more than fifty years later, the Super Sized sandwich brand would be truncated to “mac” — no less in all lower case style?

Still looks big enough to require a knife though. One of the other things that intrigued me about this billboard is the federal registration symbol on the “mac” reference, because I hadn’t previously seen or noticed any use by McDonald’s of MAC or mac standing alone.

Turns out, despite my best investigative efforts in scrolling through some 123 USPTO records for McDonald’s and a multitude of third-party registrations for a wide variety of goods and services ranging all the way from hair pieces and wigs to boat seats to lip gloss, and then all the way to apparent evidence of some peaceful coexistence with Mac’s fried pork skins, all I could find for McDonald’s was a pair of abandoned MAC applications from 1994, and a few federally-registered slogan marks incorporating the “mac” term: (a) Get Your Mac On; and (b) Are You Mac Enough?

Do you suppose that the creatives behind this work of art thought the sheer size of the sandwich might double as a visual representation of the missing — or perhaps, supposed redundant word “big” — if so, the trademark types should know better, as it’s definitely not an equivalence the USPTO or the courts would recognize for purposes of Big Mac trademark use. Leaving me to wonder whether McDonald’s has gotten the memo on proper use and misuse of the federal registration symbol?

In the end, it would appear that this mac needs a knife too: It might double as one for dining and one for legal surgery to remove the errant federal registration symbol, at least for this mac.