One of O’Leary’s most famous lines from Shark Tank seems to fit this very moment, as we mourn the loss of O’Leary’s Mr. Wonderful trademark application for roasted nuts, with a popular meme:
Two months ago, our attention seized on a nutty and woefully deficient USPTO examination of a trademark application to register — Mr. Wonderful — for roasted nuts, and nut-based snack foods, among other food products, given the prior WONDERFUL trademark rights owned by these folks:
Just like clockwork, events now appear to be playing out as expected, so keep your eyes peeled and your watches synchronized. Last Friday, The Wonderful Company LLC, filed an extension of time to oppose registration, so the new deadline for opposition is September 8, 2018.
We’ll likely soon see whether a Letter of Protest was filed behind the scenes, giving the USPTO a chance to correct this mistake and issue a likelihood of confusion refusal — as it’s hard to imagine the Examining Attorney’s failure to issue a refusal won’t be considered clear error, so stay tuned.
Wonderful likely has made contact with Mr. Wonderful by now — my question would be, how hard will Mr. Wonderful play to salvage the other food items currently in the identification of goods?
What do you think, are these goods sufficiently related to roasted nuts to become toast, as well?
Jellies and jams; Banana chips; Dried fruit-based snacks; Fruit preserved in alcohol; Nut butters; Olive oil for food; Potato chips; and Yogurts.
It’s a wonderful life, collaborating with brand owners and marketing teams to advance their goals.
Our work for brand owners also involves a collaboration of sorts with the U.S. Trademark Office.
We work with the USPTO to obtain registrations for our clients and this triggers USPTO obligations.
As such, when examining applications, the USPTO must search its records for conflicting marks.
It also must refuse applications for marks that are confusingly similar to prior registered marks.
Mistakes happen, but sadly, if the USPTO misses a proper refusal, the brand owner holds the bag.
So, when the USPTO doesn’t do its job well, the brand owner is put in a position to spend money.
Several weeks ago, I expressed near certainty that the USPTO would refuse registration of Kevin O’Leary’s (of Shark Tank fame) application to federally register his nickname — Mr. Wonderful — given another’s well-established, federally-registered trademark rights in WONDERFUL for nuts:
As it reveals, the “session duration” lasted 218 seconds; not a single “wonderful” mark was “viewed” during examination, yet hundreds of “mr” trademark records were, maybe even him?
The “mr” portion of the search was narrowed to focus on the nuts class of goods (IC 29), but strangely this wasn’t done for the “wonderful” portion, leading to zero “wonderful” viewed records.
Let’s just call this oversight for what it is, not exactly a wonderful trademark examination by the USPTO — literally and figuratively. The Mr. Wonderful approval — for nuts –looks like clear error.
Were we in Wonderful’s camp, we’d be thinking about a Letter of Protest to have the USPTO issue the likelihood of confusion refusal, because it costs peanuts compared to a full-blown opposition.
Trademark types, would you get crackin’ on a Letter of Protest, were you holding Wonderful’s bag?
Marketing types, how nuts would you be spending a lot more than peanuts, if the USPTO doesn’t acknowledge clear error and issue the refusal, to help make a Notice of Opposition unnecessary.
To the extent you’re in Mr. Wonderful’s camp, how would you approach a registration refusal, knowing that 15 of the 16 live “wonderful” marks at the USPTO for nuts are Wonderful’s marks?
I’ve always been a big fan of practicing what you preach. Actually walking the talk. Not just talk.
Anyway, the registration issued in the nick of time, given my true fortune just two days earlier:
Seriously though, obtaining federal registration of a personal brand name can be a bit challenging.
A common refusal when personal names are involved is that they merely identify a person, and they fail to function as a mark, the very refusal the USPTO initially issued in my particular case:
“Registration is refused because the applied-for mark, as used on the specimen of record, is a personal name that identifies only the name of a specific individual; it does not function as a service mark to identify and distinguish applicant’s services from those of others and to indicate the source of applicant’s services.”
“In this case, the specimen shows the applied-for mark used only to identify the name of an individual and not as a service mark for applicant’s services because it is used to identify the author of blog posts, but does not separately indicate the source for any service. Applicant has applied for services including providing information in the field of law. The specimens shows the applied-for mark being used merely to name the author writing the posts, and to identify a particular individual and give information about him. The specimens include a short biography or “about the author” post with the name of the author or individual at the top, and several posts that show the applied-for mark included only as “By Steve Baird.” This shows the applied-for mark being used in a by-line, attributing authorship, but not identifying source. The applied-for mark is not used in association with the offering of any service in a way that would make it a service mark.”
Trust me, the irony has not escaped me, that one of these generous giants recently allowed the registration for his blog’s name to lapse, and the other giant likely prefers to Just TM It instead.
So, if you have a personal brand name that truly functions beyond indentifcation to indicate the source of goods or services, my hope is that you will consider federal registration to help protect it.
So, I’m left thinking that Mr. Wonderful best get crackin’ on his anticipated response to the inevitable likelihood of confusion refusal that he’ll be experiencing in the not-to-distant future.
For those who haven’t seen or heard of it yet, Shark Tank is an ABC reality television series in which entrepreneurs pitch investment proposals to a panel of five wealthy and feisty “sharks” — including these independent and successful investors: Robert Herjavec, Barbara Corcoran, Kevin O’Leary, Daymond John, and Mark Cuban.
Shark Tank’s third season began last month, and my boys convinced me to watch Episode 301 with them this past weekend — I’ll have to admit I was more than a little entertained.
Because intellectual property issues can play such an important role in sizing up a business plan and investment opportunity, as you might imagine, the show includes many references and questions about whether the entrepreneur has procured any exclusive intellectual property rights to support the business plan. The problem, of course, for those of us who enjoy probing the details of any claimed intellectual property rights, is the limited amount of time devoted to any meaningful due diligence of the claimed rights.
The segment of Episode 301 that I found most interesting is the one depicted above where Pat McCarthy offered the “sharks” a meager 5% share of his company Liquid Money for $100,000. Each of the investors uttered the words “I’m out,” and bailed on McCarthy’s pitch for various reasons, except for Daymond John, who countered with an offer of $100,000 for 80% of the company, following McCarthy’s representations that he “owned the name” MONEY and that it is “trademarked” in the fragrance class. Most of the “sharks” seemed to agree that the “obvious” business path should be to license the trademark, and that his rights in the name is the only thing of value — not the fragrance itself.
Turns out, my trip to the USPTO’s online trademark database during a commercial break revealed a bit of, well, puffing, let’s say. My search for live marks in Int’l Class 3 (the class covering fragrances) revealed only five federally-registered marks containing the term MONEY, one pending trademark application, and perhaps most importantly, none appear to be for the MONEY trademark claimed by McCarthy:
- MORE POWER FOR LESS MONEY
- KA$H MONEE
- MONEY THE SCENT OF AMERICA
- COLONIA LUCKY DON DINERO LUCKY MR. MONEY COLOGNE DE CRUSELLAS $
- MONEY HOUSE BLESSING; and
- YOUNG MONEY
Busted. [Trademark types will appreciate the irony in that most associate the McCarthy surname with the leading trademark law authority: McCarthy on Trademarks and Unfair Competition.]
In any event, consistent with Pat McCarthy’s oral representations in the Shark Tank, his Liquid Money website further represents: “MONEY IS A REGISTERED TRADEMARK OF LiquidMoney, Inc. | ©2012 | ALL RIGHTS RESERVED.”
Given my search results, a good question might be, registered where? Croatia? [you need to watch the segment to appreciate this question]
In fact, the only trademark record in the entire USPTO database for a company having “liquid” and “money” in the name is Money Liquids, a company that once owned a federal trademark registration for MONEY LIQUIDS in connection with wine.
So, my humble suggestion to the producers of Shark Tank would be to employ the talented services of an IP shark, even if only behind the scenes, someone capable of sniffing out bogus intellectual property claims in real time, kind of like blood in the water. Or, at least train the other “sharks” to use the USPTO database so they can readily verify any IP claims themselves.
Basically, I’d like to see more than a minnow amount of due diligence, especially when it could be at the fingertips of any “shark” equipped with a laptop or smart phone.