Does Sanas Health Practice Ltd. (“Sanas Health”) think that Daenerys or Sansa will win at the end of the wildly popular Game Of Thrones series and ultimately sit on the Iron Throne?  Sanas Health filed two applications for the mark “QUEEN OF THRONES” with the United States Patent and Trademark Office (“USPTO”). Interestingly, the Applicant’s name Sanas is extremely similar to the Game of Thrones show leading character Sansa Stark. This may be merely a coincidence but could be argued to enhance confusion between the GAME OF THRONES® marks and the applied for “QUEEN OF THRONES” mark.

I guess there could even be those out there that think Cersei will not die in the final season (not me) and instead will end up on the Iron Throne at the end of the series. But, I am thinking most people agree with me that she will not survive (and will likely be killed by one of her brothers – my bet is on Jaimie).

Not surprisingly, Home Box Office (“HBO”) believes that Sanas Health is trying to capitalize on the goodwill of its famous GAME OF THRONES® mark and brand; and thereby, diluting its distinctive and famous GAME OF THRONES® marks. HBO further believes that the “QUEEN OF THRONES” mark is confusingly similar with its marks. Accordingly, HBO has filed a Notice of Opposition against these applications (No. 91246195).

By way of background, HBO has thirty-one (31) registrations and applications for GAME OF THRONES marks (including design marks and GAME OF THRONES with additional words such as GAME OF THRONES CONQUEST®, GAME OF THRONES THE THREE-EYED RAVEN®, GAME OF THRONES ASCENT®, and GAME OF THRONES BEYOND THE WALL) in connection with various goods and services.

Sanas Health applied for its “QUEEN OF THRONES” mark in connection with:

  • “Castor oil for medical purposes,” IC 5 (Ser. No. 87/839,043); and
  • “Nutrition counseling; Dietary and nutritional guidance; Providing a website featuring information about health, wellness and nutrition; Providing information about dietary supplements and nutrition,” IC 44  (Ser. No. 87/922,698).

This is not HBO’s first time seeking to protect its marks related to the Game Of Thrones series and brands. HBO has three (3) trademark registrations and an application for WINTER IS COMING®, which is the House of Stark-centric premiere episode of the Game of Thrones series. The Purple Wine Company attempted to register the “WINTER IS COMING” mark in connection with wines. HBO opposed the application and the Purple Wine Company failed to respond. The mark is now abandoned.

The Examining Attorney found the recent application for “WINTER IS COMING” filed by Chen Yufang to be confusingly similar with HBO’s WINTER IS COMING® marks and issued an Office Action preventing registration. We will have to see if Mr. Yufang serves a response to this Office Action or abandons the application. If he does not abandon the Application and is able to overcome the Office Action, I would anticipate that HBO would file a Notice of Opposition against his application for the famous “WINTER IS COMING” mark.

Fans of the Game of Thrones series are aware of the fanciful word “Dracarys” as a command to Daenerys’ the fire breathing dragons. HBO opposed an application filed by Hangzhou Wanry Imp. & Exp. Co., Ltd.  (“Hangzhou”) to register the “DRACARYS” mark in connection with numerous automobile related accessories. HBO opposed the application and Hangzhou failed to respond. The mark is now abandoned.

Fan favorite Tyrion Lannister proclaimed, “That’s what I do. I drink and I know Things” in season six of Game of Thrones, and HBO’s official trailer for the sixth season included this saying. When Francis Collins from Florida tried to register this mark in connection with t-shirts, HBO relied upon its common law rights associated with its sale of t-shirts having the “That’s what I do. I drink and I know Things” mark to oppose the Application. Ms. Collins defaulted and her application for the mark is now abandoned and dead.

DuetsBlog has featured other posts related to the famous show and its brand, including Martha’s post here, and mine here.

The wait is almost over.  The final six episodes of Game of Thrones start on April 14.  We will have to see if there is a King or Queen who ends up on the Iron Throne and what happens to the “QUEEN OF THRONES” applications.

No worries, I’m back at the keyboard, refreshed after a busy January, from the ATA Show in Louisville to Las Vegas for the SHOT Show, then Austin, and well beyond.

2019 is off to a rapid start, not sure where the first half of February went, so I’ll make sure this is a good one, and with a little luck, it might even be a great one:

Did my iPhone capture a production anomaly in the soap on display? Note the disconnect between the word and the stuff that I’m not sure I’d want to rub on me.

How often do we hear, “Oh it’s good enough,” or “Yeah, it’s pretty good”? — Good seems pretty watered down today, bordering on being just OK, a passing grade.

Kind of reminds me of AT&T Wireless’ funny Just OK Is Not OK commercials. Let’s just say, good seems much further from CNP than BGE — Barely Good Enough.

A Friday evening shopping run to Whole Foods provided inspiration for this blog post; as you will recall, it’s not the first, others preceed it, e.g., here, here, and here.

So, imagine my surprise that someone actually would try to “brand” soap as good.

Turns out, that someone has infused more than the common meaning into the word, incorporating the more active “do-good” kind, with a real social impact.

Before learning of that aspect to the brand, I was left wondering, is good — well, enough to serve as a distinctive trademark, in other words, is it ownable, as IP?

Turns out, it apparently is, Good Soap is federally-registered for “sustainably manufactured beauty products, namely fair trade shea butter soap” — no less than 500+ pages of evidence was submitted to establish acquired distinctiveness.

At the end of the day, I’m still left wondering about the reasonable scope of rights?

With the mildly laudatory Good, it’s probably no surprise that other coexisting soap marks have slipped into the same laudatory-themed bubble bath as Good Soap:

Besides all those, why did the USPTO allow this Good soap mark to coexist, much less achieve federal registration without a showing of acquired distinctiveness?

Perhaps another less-than-wonderful style of truncated examination at the USPTO?

With a broader identification of goods, covering simply “soaps” — and no apparent “do-good” double meaning, how did the informational matter refusal slip by too?

Back to what Good might mean to consumers, at first blush, it seems facially about managing normal expectations, but Great is about exceeding them.

Assuming the product attributes live up to the name, wouldn’t a brand rather be great than simply good? In other words, can Good Soap, ever be a Great brand?

By the way, this is not anywhere close to our first soapbox when it comes to getting lathered up over soap trademarks:

You can be the judge of what is good versus great. Yes, lather, rinse and repeat.

Las Vegas has a welcoming brand, probably best known by the nearly decade old famous and iconic slogan: What Happens in Vegas Stays in Vegas.

LVCVA owns it for gaming machines, slot machine services, and “promoting the Las Vegas, Nevada area as a destination for leisure and business travelers.”

If you’re not aware of the origin and the connection to Minnesota, here you go.

Las Vegas has welcomed the SHOT Show for many years, so here we are, once again, connecting with our many brand-toting friends in the industry.

Although I haven’t yet noticed evidence of it on the streets or the strip, the famous WHIVSIV slogan is reportedly back from its brief hiatus.

MGM Resorts’ Aria appears to be building on the meaning of Vegas with a fairly new slogan of its own that interestingly employs the term being used as a verb:

Given all the other places we’ve seen and reported on brandverbing to date, and now that we know it happens in Vegas too, only time will tell if it stays in Vegas:

As you know, we have welcomed the challenge by marketing types to press the edges and not fall into the assumed knee-jerk legal trap when it comes to weighing the true risks of genericide based on the verbing of brands, but if you’re not Google, this recommended reading from our archives — on the subject of trademark verbing and the risk of genericide, is still highly useful:

Who will be the next to jump on the brandverbing bandwagon? How long will the ride last?

All that said, Aria’s This is How We Vegas, should not be confused with This is How We Hotel, much less, This is How I Vegas, for sure, or even this one either:

 

Last Friday, the Supreme Court decided it will hear the Brunetti case, and take a closer look at Section 2(a) of the Lanham Act, the portion forbidding federal registration of trademarks having matter that is scandalous or immoral.

So, it appears my big prediction for 2019 is pointing in the affirmative direction:

“In terms of my big trademark prediction for 2019, it will be revealed whether the scandalous bar to federal registration is invalidated, whether or not the Supreme Court agrees to hear Brunetti.”

Now that the Court has decided to review Brunetti, it will be the one to decide whether the “scandalous” and “immoral” bars to registration violate the First Amendment, not the Court of Appeals for the Federal Circuit.

So, perhaps Chief Justice John Roberts was foreshadowing a review of Brunetti, when he was speaking in Minneapolis, and said: “Obviously, if any court finds an Act of Congress unconstitutional, we will take it . . . .

To piggyback on what I wrote back in October:

“There are plenty of good reasons for the Court to decide the constitutionality of the “scandalous” and “immoral” language, separate and apart from the disparagement language found to violate the First Amendment in Tam (here, here, here, here, here, and here).”

“If the Court does hear Brunetti, let’s hope Section 7 of the Lanham Act — the provision expressly noting that federal registrations are issued ‘in the name of the United States of America‘ — won’t be some uninteresting and ignored ‘nuance’ of trademark law to the justices.”

You may recall, I previously said this about the Federal Circuit’s overreach in Brunetti:

“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.”

I’m thinking the Court will decide that the Federal Circuit went too far in Brunetti, and it will find a way to retain the “scandalous” bar to federal registration, though I’m doubting the “immoral” bar will survive, so stay tuned.

What are your predictions dear readers?

Before we think predictions for 2019, let’s consider the vast ground we’ve covered in 2018:

Wow, I’m exhausted, and these highlights are only a small fraction of what we delivered in 2018.

You may recall, earlier this year, I predicted more informational and failure to function decisions.

As our friend John Welch reported, there were more than a few (here, here, here, here, and here).

Stay tuned, on March 13, in New York City, I’ll be diving deeply into the failure to function topic, among others, at Practicing Law Institute’s Advanced Trademark Law 2019: Current Issues.

In terms of my big trademark prediction for 2019, it will be revealed whether the scandalous bar to federal registration is invalidated, whether or not the Supreme Court agrees to hear Brunetti.

So, what is your big trademark prediction for 2019?

Earlier this year I posted about a trademark dispute regarding the use of the term “Square Donuts” for square-shaped donuts. The case involved proceedings both in federal court and at the Trademark Trial and Appeal Board (TTAB), between the Square Donuts cafe in Indiana (which claimed decades of prior use and a trademark registration); and the Family Express convenience-store chain (which sold square-shaped donuts called “square donuts,” claiming the term is generic). As we discussed, the case raised the interesting question of whether the term Square Donuts is generic for cafe services that feature square-shaped donuts (which still look delicious by the way, see below).

Perhaps fortunately for the parties involved, but unfortunately for our curious readers, it appears there will never be a decision answering this question, as the case is headed to a settlement and dismissal. A docket entry on August 30, 2018 in the federal court proceeding states “Settlement Reached,” following a settlement conference between the parties.

However, the case has not yet been dismissed, as the parties have not yet finalized the settlement and dismissal documents. After the court recently granted a joint motion for extension of time, the deadline to file dismissal papers is by the end of this month. In the meantime, there do not appear to be any public updates or press releases yet, regarding the nature of the settlement, on the parties’ respective websites (here and here). However, I do note that the Family Express sub page, “Our Brands,” no longer features “Square Donuts” as one of their “our proprietary brands,” as it did at the time of my previous post in May.

Therefore, just a guess, but perhaps the parties have reached a licensing agreement, in which Square Donuts will maintain its registration and claim to trademark rights, and Family Express will have a license to continue using the Square Donuts name for its donuts. Alternatively, perhaps Family Express has agreed to entirely give up calling its donuts “Square Donuts.” Based on the deadline for dismissal at the end of this month, I’m sure there will be more significant news soon, regarding the nature of the settlement and any changes to the parties’ branding and websites. What do you think will happen — any predictions? Stay tuned for updates.

You’re well aware of the fact that we have a burning desire for great brands and trademarks.

Outside Whole Foods last evening, with snow falling, I found a beautiful display of firewood:

A smile came to my face as I read the SnuggleWood brand name for this kiln-dried firewood.

We’ve written a lot about the many legal benefits of suggestive over descriptive trademarks.

I’m fortunate to have enjoyed many evenings snuggling with loved ones around a blazing fire.

Later, it also brought warm and toasty feelings to see a federal trademark registration exists:


Sadly though, the fire was doused after learning that an earlier, broader trademark registration for the single word SNUGGLEWOOD lapsed, extinguishing more than 15 years of nationwide priority.

Apparently ownership changed between the original 1998 filing and a decade later when renewal evidence was due, so the USPTO rejected the evidence, as no clear chain of title was provided.

It’s sad to see because trademark ownership and chain of title issues are preventable and fixable.

Let’s hope for the SnuggleWood brand that it is never burned by unregistered trademark rights that could have developed in remote geographic parts of the country before the new filing in 2014.

Readers of this blog may recall that in the past year, I wrote extensively about the U.S. Supreme Court case of Oil States v. Greene’s Energy. But I paid little attention to another important case decided around the same time: SAS Institute v. IancuOil States centered on whether the USPTO’s inter partes review (“IPR”) process (challenging a patent at the USPTO, rather than in court) was constitutional. SAS followed up with a seemingly less-pressing issue: whether, when the USPTO institutes an IPR to reconsider a patent by accepting an IPR petition, the USPTO must decide the patentability of all of the claims of the patent that the IPR petitioner challenged in the IPR petition. The Supreme Court ruled that IPR is constitutional in Oil States and that the USPTO must decide the patentability of all of the claims which were challenged in the accepted IPR petition in SAS.

Just this week, I was attending a “Supreme Court Preview” event hosted by the Eighth Circuit Bar Association. One of the topics was upcoming patent cases before the Supreme Court. I’ll admit; they’re not as juicy as last term (but perhaps only lawyers would have salivated over last year’s cases). However, one gave me a squirrelly thought: Return Mail v. United States Postal Service. The major issue in Return Mail is whether the federal government is a “person” who may petition to institute review proceedings before the USPTO.

Credit: Channel 3000

Technically, Return Mail doesn’t involve IPR, but rather a different proceeding called covered business method (“CMB”) review. CMB review, as its name implies, is limited to review of business method patents–that is, patents that claim a method or apparatus for performing data processing or similar operations relating to the practice, administration, or management of a financial product or service. But CMB review is very similar to IPR; a person files a petition with the USPTO seeking review, and the USPTO decides whether to institute proceedings. For example, in the Return Mail case itself, Return Mail, Inc. sued the United States Postal Service (“USPS”) for infringement of a business method patent described as: encoding information about the name and address of intended recipients in the form of a barcode, returning undeliverable mail to a processing location, scanning the barcode, obtaining the corrected information, and then providing that information to the sender to choose whether to resend with correct addressee information. (Description in the Federal Circuit opinion.)

Credit: Postal Reporter

Does Return Mail’s patent seem a little…obvious? Sounds like USPS might have a good shot at challenging the patent via CMB review, right? That’s what the USPS thought, so it petitioned for CMB review of certain claims of the patent. There’s just one problem: current patent law says that only a “person” can institute CMB review, and that person must meet certain other requirements, which include being sued or charged with infringement. Is the USPS–an arm of the government–a person? Current patent law does not define the term. In a short opinion, the Federal Circuit held that the federal government is a “person” for the purposes of CMB review. There was a fiery dissent. The Supreme Court granted cert on this specific question.

And here is where the squirrely thought arises. Just like CMB review, IPR review starts with a petition by a “person.” But unlike CMB review, an IPR petitioner need not have been sued or charged with infringement. Indeed, an IPR can be instituted by any person “who is not the owner of a patent.” 35 U.S.C. § 311. The USPTO must review all claims challenged in a petition if the USPTO accepts the petition. But the USPTO might not want to do that in every case–as in SAS. If the government is a person, can it escape SAS‘s mandate by filing its own petition for IPR limited to the claims it actually thinks should be evaluated?

The process would go something like this: (1) the USPTO receives an IPR petition from a third party and reviews the petition, (2) the USPTO determines it would like to institute review on some of the claims of the patent challenged in the petition, but perhaps not the same claims as those listed in the petition, (3) the USPTO works in collaboration with another governmental agency (say, for example, the Attorney General or USPS), (4) the other governmental agency files a petition for IPR of the same patent, but on the claims and grounds desired by the USPTO, and (5) the USPTO accepts the governmental petition, achieving the goal of escaping SAS‘s mandate that it decide the patentability of claims listed in the third party petition that the USPTO thinks need not be considered. And voila! Return the earlier petition for IPR as uninstituted to sender.

Thus, affirming the Federal Circuit could provide the government an escape from SAS, so to speak. While reversal could preclude agencies like the USPS from seeking cost-effective review of patents with the USPTO. What do you think?

Trademark owners should beware of a scam involving the Amazon Brand Registry. There have been several reports of rogue users exploiting the Amazon Brand Registry through the unauthorized modification of trademark registration records at the U.S. Patent and Trademark Office (USPTO). These scammers are submitting fraudulent requests to change the email addresses for trademark registrants, and thereafter, updating the brand ownership records with the Amazon Brand Registry.

Continue Reading Watch Out: Unauthorized Changes in USPTO and Amazon Brand Records

A loyal reader brought to our attention the logo for a rather interesting chiropractic practice:

Without too much pain, can we all agree on the likely inspiration for the above name and logo?

What’s really interesting is that the name Thorassic Park has been federally-registered since 2004, so there is little doubt that the names may co-exist without likelihood of confusion or dilution.

But, what about the visual identities? Don’t they seem far too close, even if the businesses are very different? It appears the chiro-logo is almost a fossil now, having been around twenty years.

How can that be, given the close proximity between Orlando, Florida and Bradenton, Florida? What are the odds that the Jurassic Park franchise owner hasn’t discovered the chiro-logo before now?

And, what are the odds a patient of Thorassic Park in Bradenton might need an adjustment after visiting Jurassic Park in Orlando? Might there be an opportunity for a shuttle service in between?

So, if you are the brand police for the Jurassic Park franchise, does the chiro-logo give you back pain? For the creatives in the crowd, does your spine tingle seeing this painstakingly cloned logo?