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:
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.
In the wake of Jon Stewart and Stephen Colbert leaving their respective shows on Comedy Central for newer pastures, John Oliver has emerged as a new beacon of political humor and satire. If you haven’t watched his show, and especially if you considered the former two as having an obvious political slant, you should check out Last Week Tonight on HBO. His shots get fired everywhere.
On this week’s, John Oliver took a shot at the patent system, particularly patent trolls:
I don’t know who looks worse out of Oliver’s segment – trolls or trial lawyers. Or maybe Mark Cuban since he never seems to ask about patents. Until this segment, I didn’t take note of how often Shark Tank uses the lack of a patent as a reason for rejecting a business idea, but I digress.
As Oliver’s comments make clear, there certainly is room for improvement to correct the litigation flaws created by so-called “patent trolls” – a hotly discussed topic lately in many business, law offices, blogs, and legislatures.
Much of the discussion of the “patent troll” surrounds how exactly a “patent troll” is defined. Some refer to patent trolls as “non-practicing entities,” and others to “patent assertion entities.” These sound in the media like lazy, menacing, evil, money-grubbing corporate shells waiting for their crossing fee from under the bridge – and surely there are some of those. But that “patent troll” definition can also appear as an independent inventor who doesn’t make, use, or sell his invention. Maybe that inventor’s idea was stolen by another company that now makes, uses, or sells it. Before filing a lawsuit, he may set up a corporate entity to hold the asset to help protect him from personal liability or fund the litigation. Patent litigation is expensive and shouldn’t that right be afforded to everyone? Otherwise wouldn’t the Apples and the Samsungs be the only ones skating in the rocket docket of Marshall, TX? We need to think very carefully about how we define “patent troll” before we try to make it unjustly hard for so-called trolls to litigate.
The major “troll” examples identified in Oliver’s segment – a patent that underlies the technology in every Android app and patents for copying – are technology that has become so woven in the fabric of our everyday lives that targeting people for making, using and selling a patented invention seems to the general public as utterly ludicrous. And I don’t blame them. In the trademark realm, we don’t allow the enforcement of trademark rights where the mark has become generic and therefore lacking in its ability to identify source. Aside from defenses of laches or prosecution history estoppel, patent law doesn’t have a similar provision that protects such generally known ways of doing something from being asserted against others for making, using or selling the patented product. But does it need something like the concept of genericide?
One way of resolving the issue may be to take from the model of trademark law – the Declaration of Use filed at the 6th anniversary of registration and then with the renewal every 10 years after the registration date. This Declaration of Use requires a statement that use is continuing and providing a specimen showing use (and of course, a fee). Patent law has maintenance payments that are required only for utility patents at 3.5 years, 7.5 years, and 11.5 years from grant of the patent. But aside from payment of the fee, nothing else is required. Maybe instead of a declaration of use, it may need a declaration of relevancy – and maybe that relevancy term is dependent upon the industry.
The patent law currently provides a 20-year term of an exclusive right to make, use, or sell the patented invention, in exchange for an enabling public disclosure of the invention to the public. The whole purpose behind the system is for the public to gain possession of an inventive idea and replicate it or re-purpose it. But 20 years in some industries, like the rapidly advancing software industry, may be too long of a term of protection. Maybe we need shorter terms for software patents, much like we have a shortened term for design patents (14 years from issuance).
We must think very carefully about how we define “patent troll” and how we treat them. We also need to find a delicate balance in avoiding seemingly frivolous lawsuits and protecting inventors’ rights.
How might Oliver treat the similar subject of trademark bullying?
Every now and then it’s worth checking in at the USPTO to see what’s cooking in the world of non-traditional product configuration trademarks:
As it turns out, the Big Green Egg is seeking to be more than a word mark — two days before Christmas, a federal trademark application was filed for the product shape described this way (in connection with barbecue smokers and grills): “The mark consists of a three dimensional oval configuration of a cooking vessel in the particular shade of green as shown.”
As we’ve discussed before, unique product shapes can be protected through design patents for a limited period of time, but if the product design is non-functional and distinctive, the power of trademark protection can last forever.
It appears there may be a year end rush at the USPTO by those seeking this forever kind of protection — as this December, it has attracted more than a few interesting product configuration trademark applicants beyond the egg shaped smoker.
According to the trademark application, claiming use since September 5, 2009: “The mark consists of the configuration of candy comprising irregularly shaped chips with multiple irregular facets and edges.”
But that’s not all, this month Smith & Wesson is seeking federal registration of its M&P pistol shape as a trademark too:
But, what do you make of the below shown claimed trademark, the “interwoven configuration of a cord affixed to a magazine pouch”? Since dotted lines aren’t part of the mark — they merely show position and placement and give context to the lined portions forming the claimed mark, it appears the laced cord configuration is all that is being claimed.
Do you suppose the Applicant’s specimen of use will trigger a functionality refusal? It surprisingly reads: “This unique pouch uses injection molded polymer sides, Cordura™ front and back, and shock cord lacing to lock just about any rifle magazine into place.” (emphasis added)
While the magazine might be secured by the lacing, the Applicant might as well have taken the Smith & Wesson pistol and pointed it at its foot, inviting the USPTO to issue a functionality refusal.
Will the “lacing to lock” advertising copy turn out to be another marketing pitfall example that ends badly?
So, dear readers, any predictions on which of these December filings, if any, will satisfy the USPTO that the claimed configuration functions as a distinctive trademark to indicate the source of the product?
Stay tuned, we’ll be following these and others in the coming year.
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.