Space Force

What would you do if you knew that:

  • Worldwide licensing rights for your trademark will be huge[1]; and
  • An application to register your trademark in the U.S. will be refused.[2]

Faced with this challenge, the lawyers for Netflix chose to apply to register SPACE FORCE outside the U.S.[3]  That was a brilliant decision. Here’s why.

The U.S. Air Force is going to be able to call its new branch “Space Force”[4] and Netflix could not have prevented that by filing in the United States even if Netflix had filed as early as March 2018.

Here’s a list of recent applications that have been “refused because the applied-for mark consists of or includes matter that may falsely suggest a connection with the United States Government and its military.”

False association

Here’s a list of recent applications that are suspended now but will almost certainly be rejected for false association once they move forward.

Suspended

Here’s a list of recent applications that are already dead.

Already Dead

Meanwhile, the applications filed by the USAF in the U.S.[5] are being held up because of three of the applications[6] in the “false association” list.

Netflix is looking pretty smart here. They saw a traffic jam and chose another route.

Has anyone made it through? The only live registration for SPACE FORCE is for beer. It’s owned by Hop & Barrel Brewing Company.


Shout out to Max F. and Cassandra G. for the suggestions that led to this post.


[1] The pilot for the show is available in German, Latin American Spanish, European Spanish), French, Italian, Chinese, Czech, Slovak, Hungarian, Polish, Portuguese, Turkish, and Swahili.

[2] “No trademark . . . shall be refused registration on the principal register on account of its nature unless it— (a) Consists of or comprises . . .  matter which may . . . falsely suggest a connection with persons [or] institutions . . ..”  Trademark Act Section 2(a), 15 U.S.C. §1052(a). The U.S. government is a “person” within the meaning of Section 2(a).  TMEP §1203.03(a). In addition to qualifying as a “person,” U.S. government agencies and instrumentalities, as identified by their common names and acronyms, are also “institutions” within the meaning of Section 2(a).  TMEP §1203.03(a)(ii)

[3] As of May 2020, I was able to find Netflix applications to register SPACE FORCE in Mexico, Australia, the EU, and Canada.

[4] The articles that tittered about how Netflix beat the U.S. Department of Defense in filing to register the trademark SPACE FORCE missed the point. See e.g., Hollywood Reporter, Military.com, and Newsweek.

[5] The USAF’s March 2019 application covers only swag. Its May 2020 application covers “airplanes, helicopters, and space vehicles” but, really, it’s all about the swag, too. Here’s the listing of goods and services from the USAF application:

Airplanes; Helicopters; Space vehicles

Metal name plates; Plaques of common metal for use as awards; Sculptures made of non-precious metal; Trophies of common metal

Clocks; Key chains; Lapel pins; Non-monetary coins; Ornamental lapel pins; Rings being jewelry; Sculptures made of precious metal; Tie tacks; Watches; Metal key chains

Books in the field of THE DEPARTMENT OF THE AIR FORCE AND DEPARTMENT OF THE AIR FORCE AIRCRAFT; Business cards; Calendars; Coasters made of paper; Daily planners; Decals; Desk top planners; Greeting cards; Informational flyers featuring educational information to educate the public on Department of Air Force programs; Log books; Note paper; Notebooks; Paperweights; Postcards; Posters; Printed awards; Printed certificates for use as awards; Stationery; Telephone calling cards, not magnetically encoded; Writing paper pads; Ball-point pen and pencil sets; Printed books in the field of THE DEPARTMENT OF THE AIR FORCE AND DEPARTMENT OF THE AIR FORCE AIRCRAFT; Stationery-type portfolios; Three-ring binders

Backpacks; Briefcases; Duffle bags; Gym bags

Non-metal name plates; Non-metal trophies

Beer mugs; Shot glasses; Travel mugs

Bed blankets; Bedspreads; Comforters; Fabric flags; Throws; Towels; Blanket throws

Belt buckles; Belt buckles of precious metals

Golf clubs; Paper airplanes; Playing cards; Plush toys; Toy airplanes; Toy cars; Toy vehicles; Scale model airplanes; Stuffed toy bears; Stuffed and plush toys

Cigarette lighters of precious metal

Promoting public awareness of the need for the United States Space Force; Promoting public awareness of the United States Space Force; Association services, namely, promoting public awareness of the United States Space Force; Production and distribution of radio and television commercials

Educational services, namely, providing courses of instruction at the college level and distribution of course material in connection therewith; Educational services, namely, providing COURSES OF INSTRUCTION AT THE COLLEGE LEVEL in the fields of The United States Space Force; Training in the use and operation of WEAPON SYSTEMS, SYSTEMS RELATED TO THE SUPPORT OF THE WEAPON SYSTEMS, AND TRAINERS FOR THESE WEAPON SYSTEMS AND SUPPORT SYSTEMS; Providing on-line information and news in the field of employment training

[6] The office action that suspends the USAF’s application mentions 5 prior applications but 2 of those are now dead, so there are only 3 applications left. The five were:  87835334; 87839062; 88075744; 88077001; 88267739. Here’s the list of goods from one of the remaining three, which don’t even get me started.

On-line retail store services featuring dentifrices, dietetic drinks, namely, table waters, purified water for drinking, sparkling waters, flavored waters, waters containing caffeine, fruit-flavored beverages, fruit juices, non-alcoholic beverages, namely, carbonated beverages, non-alcoholic beverages containing fruit juices, vegetable juices, metal license plates, metal novelty license plates, souvenir license plates of metal, sport knives, kitchen knives, fishing knives, pen knives, hunting knives, diving knives, household knives, pocket knives, folding knives, throwing knives, knives for hobby use, knives for use in carving or decorating pumpkins, mini-pumpkins, gourds, and other fruits and vegetables, sabres, swords, eyewear, sunglasses, cellphone cases, downloadable video recordings featuring topics relating to space, downloadable electronic publications in the nature of booklets and manuals in the field of topics related to military activities in space, downloadable video recordings featuring topics relating to military activities in space, decorative magnets, mousepads, digital media, namely, pre-recorded dvds, downloadable audio and video recordings, and cds featuring military activities in space, digital music downloadable from the internet, downloadable mp3 files and mp3 recordings featuring military activities in space, downloadable electronic newsletters delivered by e-mail in the field of news, features and information relating to military activities in space, downloadable electronic newsletters in the field of news, features and information relating to military activities in space, apparatus for recording, transmission or reproduction of sound or images, digital media, namely, pre-recorded cds, dvds, downloadable audio and video recordings, and high definition digital discs featuring music, stories, dramatic performances, non-dramatic performances, learning activities for children, and games, audio books featuring fiction, audio recordings featuring music, stories, dramatic performances, non-dramatic performances, learning activities for children, and games, downloadable ringtones and sound recordings featuring music and other sounds, all for wireless communications devices, audio and visual recordings featuring animated entertainment, music, stories, and games for children, musical recordings, encoded electronic chip cards containing music, stories, dramatic performances, non-dramatic performances, learning activities for children, and games, computer hardware and peripheral devices, mouse pads, wrist and arm rests for use with computers, calculators, cell phone battery chargers, electronic personal organizers, camcorders, cameras, digital cameras, optical and magneto-optical disc players and recorders for audio, video and computer data, radios, audio speakers, headphones, earphones, ear buds, walkie-talkies, telephones, headsets for cellular telephones, adapters for cellular telephones, batteries for cellular telephones, cellular telephone cases, face plates for cellular telephones, eyeglasses, sunglasses, eyeglass and sunglass cases, binoculars, graduated rulers, microphones, protective covers and cases for tablet computers, radio frequency authentication device and transmitter, fitted plastic films known as skins for covering and protecting electronic apparatus, namely, mobile phones, portable music players, mobile computers, and table computers, video projectors, video projector with wireless connection capability for use with wireless communication devices, pacifiers for babies, thermoelectric cooler/heater for food and beverages, portable evaporative air coolers, license plate frames, license plate holders, luggage specially adapted for holding firearms and accessories, gun holster fanny packs, pistol satchels, vests for carrying ammunition magazines, messenger bags for firearms, holster handbags, handgun satchels, pistol satchels, rifle cartridge wallets, police gear operator backpacks, tactical backpacks, waist packs for ammunition, food, medical supplies, waist packs for handguns, towels for firearm cleaning, towels for sports and training, pistol belts, rifle cartridge belts, ammunition belts, collectible coins, commemorative coins, lapel pins, ornamental lapel pins, jewelry pins for use on hats, jewelry, watches, clocks, decorative metal key fobs, luggage specially adapted for holding musical instruments, coloring books, posters, greeting cards, note cards, postcards and greeting cards, spiral-bound notebooks, decals, bumper stickers, decorative stickers for helmets, decals and stickers for use as home decor, decorative decals for vehicle windows, printed publications, namely, brochures, booklets, and teaching materials in the field of military history, tactics and doctrine, newsletters on the topic of military training, deployment, and lifestyle for active and inactive military personnel, military families, and friends, address books, almanacs, appointment books, art prints, arts and craft paint kits, autograph books, baby books, baseball cards, binders, bookends, bookmarks, a series of fiction books, books, magazines, newsletters and periodicals, featuring stories, games and activities for children, calendars, cartoon strips, christmas cards, chalk, children’s activity books, coasters made of paper, coin albums, printed children’s coloring pages, comic books, comic strips, coupon books, decorative paper centerpieces, diaries, drawing rulers, dry erase writing boards and writing surfaces, envelopes, erasers, flash cards, gift cards, gift wrapping paper, globes, guest books, general feature magazines, maps, memo pads, modeling clay, newsletters and printed periodicals, featuring stories, games and activities for children, newspapers, note paper, notebooks, notebook paper, paintings, paper flags, paper cake decorations, paper party decorations, paper napkins, paper party bags, paperweights, paper gift wrap bows, paper pennants, paper place mats, pen or pencil holders, pencil sharpeners, pen and pencil cases and boxes, photograph albums, photographs, photo-engravings, pictorial prints, picture books, plastic party goodie bags, plastic shopping bags, portraits, postcards, printed awards, printed certificates, printed invitations, printed menus, recipe books, rubber stamps, score cards, stamp albums, stationery, staplers, stickers, sports trading cards, collectible trading cards, trading cards, other than for games, ungraduated rulers, writing paper, writing implements, paper handkerchief, umbrellas, beach bags, book bags, canvas shopping bags, drawstring bags, duffel bags, gym bags, reusable shopping bags, school bags, sport bags, tote bags, wash bags sold empty for carrying toiletries, all-purpose carrying bags, all-purpose sport bags, baby backpacks, backpacks, calling card cases, coin purses, diaper bags, fanny packs, handbags, knapsacks, key cases, leather key chains, luggage tags, luggage, overnight bags, purses, satchels, shopping bags made of leather, mesh or textile, umbrellas, waist packs, wallets, accent pillows, bed pillows, floor pillows, novelty pillows, pillows, picture and photograph frames, picture frames, wind chimes, mugs, coffee mugs, bottle openers, buckets, plastic cups, shot glasses, water bottles sold empty, heat-insulated containers for household use, non-electric portable beverage coolers, thermal insulated containers for food or beverages, utensils for barbecues, namely, forks, tongs, turners, beer glasses, beverage glassware, bottle stoppers specially adapted for use with wine bottles, coolers for wine, cooling buckets for wine, cups and mugs, drinking flasks, drinking glasses, flasks, glass beverageware, glass mugs, heat-insulated vessels, hip flasks, insulated flasks, pilsner drinking glasses, wine cooling pails, wine glasses’ bakeware, beverageware, bowls, brooms, busts of ceramic, crystal, china, terra cotta, earthenware, porcelain or glass, cake pans, cake molds, candle holders not of precious metal, candle snuffers, candlesticks, canteens, coasters not of paper and not being table linen, cookie jars, cookie cutters, cork screws, cups, decorating bags for confectioners, decorative crystal prisms, decorative glass not for building, decorative plates, dinnerware, dishware, dishes, figurines made of ceramic, china, crystal, earthenware, glass, or porcelain, hair brushes, combs, household containers for food and beverages, insulating sleeve holders for beverage containers, kettles, lunch boxes, lunch kits comprising of lunch boxes and beverage containers, napkin holders, napkin rings not of precious metals, non-metallic trays for domestic purposes, namely, valet trays, serving trays, pie pans, pie servers, plates, non-electric portable coolers, removable insulated sleeves for drink cans and bottles, servingware for serving food, sports bottles sold empty, soap dishes, tea pots, tea sets, toothbrushes, trivets, vacuum bottles, waste baskets, drinking straws, barbecue mitts, oven mitts, pot holders, thermal insulated containers and bags for food or beverages, drawstring bags for washing hosiery, drawstring bags for storing clothing and shoes, drawstring bags for storing toys and other household items, cloth flags, fabric flags, afghans, bath linen, bath towels, bed blankets, bed canopies, bed linen, bed sheets, bed skirts, bed spreads, blanket throws, calico, children’s blankets, cloth coasters, cloth doilies, cloth pennants, comforters, crib bumpers, curtains, felt pennants, golf towels, hand towels, textile handkerchiefs, hooded towels, household linens, kitchen towels, pillow cases, pillow covers, plastic table covers, quilts, receiving blankets, silk blankets, table linen, table napkins of textile, textile place mats, textile tablecloths, throws, towels, washcloths, woolen blankets, ornamental novelty pins, action figure toys, collectable toy figures, model toy vehicles, modeled plastic toy figurines, molded toy figures, playing pieces in the nature of miniature action figures and toy model vehicles for use with table top hobby battle games in the nature of battle, war and skirmish games, and fantasy games, positionable toy figures, toy action figures and accessories therefor, action target games, toy spacecraft, toy rockets, toy space vehicles, toy figures, toy vehicles, toy weapons, scale model spacecraft, scale model rockets, scale model space vehicles, christmas tree decorations, christmas tree ornaments, action skill games, board games, children’s multiple activity toys, badminton sets, balloons, basketballs, bath toys, baseball bats, baseballs, beach balls, bean bags, bean bag dolls, toy building blocks, bobblehead dolls, bowling balls, bubble making wand and solution sets, chess sets, toy imitation cosmetics, christmas stockings, christmas tree ornaments and decorations, crib mobiles, crib toys, disc toss toys, doll clothing, equipment sold as a unit for playing card games, fishing tackle, footballs, golf balls, golf gloves, golf ball markers, hand-held units for playing electronic games for use with or without an external display screen or monitor, hockey pucks, hockey sticks, infant toys, inflatable toys, jump ropes, kites, magic tricks, marbles, manipulative games, music box toys, party favors in the nature of small toys, paper party hats, puppets, roller skates, role playing toys in the nature of play sets for children to imitate real life occupations, rubber balls, skateboards, snow boards, snow globes, soccer balls, spinning tops, table tennis balls, table tennis paddles and rackets, table tennis tables, target games, tennis balls, tennis rackets, toy bucket and shovel sets, toy mobiles, toy scooters, toy cars, toy banks, toy trucks, toy watches, toy building structures and toy vehicle tracks, video game machines for use with televisions, volley balls, wind-up toys, yo-yos, toy trains and parts and accessories therefor, toy aircraft, fitted plastic films known as skins for covering and protecting electronic game playing apparatus, namely, video game consoles, and hand-held video game units, action figures and accessories therefor, card games, dolls, doll accessories, doll playsets, electric action toys, jigsaw puzzles, mechanical toys, musical toys, parlor games, paper party favors, party games, playing cards, squeeze toys, talking toys, sabres, trading card games, yogurt-based smoothies, vegetable juices for cooking, tea-based smoothies, confectionery, namely, frozen flavored waters, drinking water, energy drinks, flavored waters, fruit juices, fruit-flavored beverages, juice base concentrates, lemonade, non-alcoholic punch, non-alcoholic beverages, namely, carbonated beverages, non-alcoholic beverages containing fruit juices, smoothies, sparkling water, sports drinks, syrups for making soft drinks, table water, vegetable juices, lighters for smokers, cigar lighters; Food kiosk services featuring drinking water, energy drinks, flavored waters, fruit juices, fruit-flavored beverages, lemonade, non-alcoholic punch, non-alcoholic beverages, namely, carbonated beverages, non-alcoholic beverages containing fruit juices, smoothies, sparkling water, sports drinks, table water, vegetable juices, yogurt-based smoothies, tea-based smoothies, and confectionery, namely, frozen flavored waters

Zooming Toward a Cliff

If there’s one trademark that’s become a household word in the past few months, it’s ZOOM. Surely Zoom Video Communications, Inc. is 100% sure it has the right to use ZOOM and it secured that right by registering it with the U.S. Trademark Office.

You know where this is going, right?

Zoom filed its first trademark application with the U.S. Trademark Office in August 2017, claiming it started using ZOOM as a mark for video conferencing services in May 2012.

As of this writing (May 2020), that application is still being held up because of two applications that were filed in September 2012 and November 2013, after Zoom’s first use but before Zoom filed its application.

If Zoom had filed its application when it started using the ZOOM mark, it would have been ahead of those two applications in priority. Instead the 2017 application is still up in the air as are:

  • Zoom’s application filed in May 2018;
  • Zoom’s application filed in July 2018;
  • Zoom’s application filed in May 2020; and
  • Zoom’s other application filed in May 2020.

Is Zoom going to have to rebrand? Probably not. The brand is too valuable now to walk away from it so Zoom will continue fighting with the Trademark Office and might end up paying some other companies for their rights.

There are lots of risks when starting a business. Some, like this one, are easily avoided.

Shout out to Alyssa for bringing this topic to my attention.

Tradename ≠ Trademark

Recently one of my clients received a cease and desist letter demanding that my client stop using its trademark. The lawyer included a certificate from the state of Ohio evidencing her client’s registration of a tradename.

My response: No one cares about your tradename registration. Do you have any trademark rights?

I also recently had a client tell me he knew he was safe using a certain trademark because he just formed a corporation using that word.

My response: No one cares that Delaware allowed you to form a corporation using that tradename. I’m worried that someone else has the trademark rights.

A tradename is NOT the same thing as a trademark.

  • A tradename is the legal name or assumed name of your business. The name of my business is Berdinis Law P.C.
  • A trademark is how consumers identify a source of goods or services. My trademark is BEELINE®.

A partridge isn’t porridge. A candle isn’t a cradle.

It’s possible for the some of the words a company uses for its tradename to also be used as its trademark. For example Starbucks Corporation uses STARBUCKS as its trademark for coffee. The numbers of my street address might also appear in my telephone number but that doesn’t mean my house and my phone are the same thing.

Okay? Are we all clear on that now?

Thanks for listening. I feel better.

 

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Right and Wrong on Instagram®

“I officially own the trademarks for PUSSYPOP® & BUSSYBOY®. Today is an excellent day,” said Azealia Banks on Instagram®.

RIGHT. Her application for PUSSYPOP faced a problem because “pussy” was considered “scandalous.” Her application eventually went on to registration after the ruling in Iancu v. Brunetti, which is the FUCT gift that keeps on giving to “scandalous” trademarks.

Unfortunately, Ms. Banks also posted some things that are WRONG. Ms. Banks insisted that Iggy Azalea stop using “Pussy Pop” as a song title “before things get ugly.” 

WRONG. Ms. Banks’s trademark registrations are for soap, tampons, lube and probiotic supplements. That doesn’t give her the right to stop someone from naming a song “Pussy Pop.”[1]

Ms. Banks points out that she “Definitely [has] proof of usage prior to [Iggy Azalea’s] song release . . ..”

WRONG. Ms. Banks just flat out doesn’t have the right to stop someone from using “Pussy Pop” as a song title. Who used it first doesn’t matter in this situation.

Ms. Banks says that she has “a slew of disparaging tweets from [Iggy Azalea] about [Ms. Banks’s] company.”

WRONG. Dissing a company isn’t necessarily trademark infringement.

Ms. Banks says people: “Can’t make a song called ‘Doritos’ if the CEO of Doritos does not approve of usage.”

WRONG: You can make a song named “Doritos” and no one can do anything about it. Also, there’s no CEO of Doritos. Frito-Lay North America, Inc. owns the DORITOS brand.

So many teachable moments in a couple of Instagram posts.
Super shout out to Cassandra G. for bringing this to my attention.
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[1] Ms. Banks included a copy of a letter from her lawyer with her post. The letter wasn’t a cease and desist letter. It was just the letter her lawyer sent her with her Certificate of Registration. Ms. Banks redacted her lawyer’s mention of the registration number.
WRONG. The registration number isn’t a secret. Anyone can look it up online. Redacting the number is like taking a photo of your face tattoo and redacting the words in the tattoo.

Eating Your Cake

On May 5, 2020, the United States Supreme Court had its first teleconference oral argument in history.[1] It was a trademark case.[2] Here’s what went down.

Booking.com built a business on owning a domain that’s the generic word for their services. That has earned them a very strong position in their industry but has left them with essentially no trademark rights and no U.S. trademark registration. Booking.com is now trying to change established trademark law so they can eat their cake and have it, too.

Booking.com concedes that BOOKING is generic for what they do but argues that BOOKING.COM is not generic.[3] It’s possible for a domain name to create a different commercial impression than the domain alone. For example, TENNIS.NET for tennis equipment isn’t generic because of the play on words. BOOKING.COM doesn’t meet that standard.

Why do we care if they register BOOKING.COM?

Trademark law prevents companies from monopolizing language: You can’t give exclusive rights to the word “booking” to one booking company because then other booking companies won’t be able to describe what they do.

Booking.com B.V. argued that they don’t plan to use the registration to go after competitors like ebooking.com or hotelbooking.com. They said they need the registration to go after spoofers and cyberscammers.

First, I don’t believe Booking.com won’t use the registration to attack competitors.

More importantly, they have reaped the benefits of choosing a generic word for their brand. There’s no reason we should sacrifice fair competition to save them from the disadvantages inherent in their choice.

 

Thanks to Cassandra for suggesting this post.

 

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[1] The case was United States Patent and Trademark Office v. Booking.com. B.V.  The absence of the august chamber and the physical presence of the justices resulted in one tiny slip in the formality shown by the attorney for the USPTO:

Mr. Chief Justice Roberts: “Ms. Ross, why don’t you take a minute to wrap up.”

Erica Ross: “Sure. Uh. Thank you Mr. Chief Justice.”

[2] The case concerns four applications to register trademarks containing BOOKING.COM filed by Booking.com B.V. The examining attorney at the Trademark Office refused registration because the term “booking” was generic for hotel reservation services and merely adding the generic top-level domain “.com” did not change a generic word to a protectable trademark.

[3] That said, the general rule is included in the Trademark Manual of Examination Procedure Section 1215.05:

“Generally, a mark comprised of a generic term(s) combined with a non-source-identifying gTLD is generic and without trademark or service mark significance. In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682 (Fed. Cir. 2009) (MATTRESS.COM generic for “online retail store services in the field of mattresses, beds, and bedding”); In re Hotels.com, L.P., 573 F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009) (HOTELS.COM generic for “providing information for others about temporary lodging; travel agency services, namely, making reservations and bookings for temporary lodging for others by means of telephone and the global computer network”).”

Trademark Training Wheels

You apply to register your trademark. The U.S. Trademark Office says your trademark can’t be registered because it’s “merely descriptive” but, rather than reject your application, the Trademark Office offers you an alternative: You can have your trademark registered on the “Supplemental Register.”

Should you take that deal?

Unless you have some very strong arguments for why your trademark isn’t “merely descriptive” you should probably take the deal and register on the Supplemental Register. Here’s what that will get you:

  • You’ll be able to use the ® symbol.
  • It’ll deter other people from using a trademark similar to your trademark.
  • It’ll give the Trademark Office a basis for rejecting applications to register trademarks that are similar to yours.
  • After five years on the Supplemental Register, you’ll be able to get a registration on the Principal Register.

There are some things you don’t get,[2] but the stuff above is a pretty good bundle of rights.

The Supplemental Register is like training wheels for a trademark. If gives a “merely descriptive” trademark[1] a chance to prove itself and someday make it to the Principal Register, the major leagues of trademarks in the United States.

If the Trademark Office makes that choice available to you, you should probably take it.

 

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[1] The U.S. Trademark Office will allow a “merely descriptive” trademark to be registered on the Supplement Register. The generic word for your goods or services (APPLE brand apples) can’t be on the Supplemental Register because the generic word can never ever become a trademark.

[2] Here’s what you do NOT get:

  • You can’t use a registration on the Supplemental Register to prevent infringing goods from being imported into the United States. 15 USC 1124
  • You don’t get a bunch of advantages in legal actions that make it much easier to establish that you have exclusive rights to the trademark. 15 USC 1057(b) and 15 USC 1115.
  • You can’t move forward with your application on the basis of “intent to use.” Only an application based on actual use (or one that has become an application based on use by filing an “amendment to allege use”) can be registered on the Supplemental Register. 15 USC 1051(b)
  • Your registration doesn’t count as though you had used the trademark everywhere in the United States. 15 USC 1057(c)
  • Being on the Supplemental Register doesn’t count as “constructive notice” to everyone that you have rights in the trademark. 15 USC 1072
  • Your trademark doesn’t go through publication and possible oppositions as part of the process of being registered on the Principal Register. 15 USC 1062 and 15 USC 1063.
  • Your time on the Supplemental Register doesn’t count toward the time needed to claim “incontestability.” 15 USC 1065

Initial Interest Confusion

Friendly's“Oh, look, there’s a Friendly’s! Let’s go there. I didn’t know they had those in Florida,” I said to my son as we walked along looking for a place to eat.

Freddy's B&WAs we got closer, I saw that it wasn’t a Friendly’s but a Freddy’s. The font, the color (both use the same shade of red) and the overall shape of the word made me think it was a different restaurant than it actually was.

This is a perfect example of what trademark attorneys call “initial interest confusion.”

My “initial interest” in eating there was the result of my “confusion” about what company was about to make my burger. I realized I was mistaken before I went in, but I was initially confused.

Some courts think “initial interest confusion” is enough harm in certain situations to be considered trademark infringement. It’s easy to see how this feels wrong but it’s hard to nail down.

  • Would this FREDDY’s restaurant have gotten my business if I hadn’t started out thinking it was a FRIENDLY’S?
  • How does this harm Friendly’s?
  • Does it matter whether or not there’s a FRIENDLY’S nearby? (They mostly don’t overlap geographically, but that’s changing. Orlando, Florida has both a FRIENDLY’s and a FREDDY’S.)
  • Assuming Friendly’s trademark rights beat out Freddy’s trademark rights[1], do you think Freddy’s is infringing Friendly’s rights?
  • Should Friendly’s should go after Freddy’s?

These are hard questions with complicated answers, which makes it fun to think about, but not if you’re Friendly’s or Freddy’s.

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[1] Friendly’s first registered FRIENDLY’S in that font for restaurant services in 1990. It had been using that trademark since 1967.

Freddy’s first registered FREDDY’S in their font for restaurant services in 2011 with a date of first use in 2009.

Little Trademark Infringement

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A Little Free Library® in Jacksonville Beach, Florida

Tod Bol and Rick Brooks had a brilliant idea: Build a little box, fill it with books, put it somewhere public, and invite people to take a book and leave a book. They called it all:

LITTLE FREE LIBRARY.

LogoThey took care to protect what they were creating.

They registered their trademark rights in LITTLE FREE LIBRARY and the logo that went with it.

They formed a non-profit, Little Free Library, Ltd., to run the operation.

When Tod Bol died in 2018, everything was in place to assure that what he and Mr. Brooks had created would continue to grow and serve individuals and communities.

In 2019, Tod’s younger brother, Tony, started selling wooden book boxes. Nothing wrong with that. No one has an exclusive right to make or sell wooden book boxes but Tony started calling his wooden book boxes:  “Little Libraries.”

Unsurprisingly, Little Free Library, Ltd. objected to that use.

The Washington Post quotes Tony as saying that Little Free Library, Ltd.’s actions are “akin to some organization wanting to own all bird houses by applying to have trademark control over ‘wooden boxes with a nesting area for birds.’ ”

No, Tony, no one’s doing that!

Tony can sell wooden book boxes today, tomorrow, and forever because trademarks give the owner exclusive rights in the brand, not in the product.

In other words, making and selling book boxes is fine, just stop implying they’re coming from Little Free Library, Ltd.

 

 

Thanks to Liz B. for sending me the Washington post article that inspired this post.

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Generic Much?

Imagine using a brand for your business for nearly 35 years and still having almost zero trademark rights.

The Tile Shop, LLC first used THE TILE SHOP for retail sales of, well, tiles, in 1985, the same year that Michael Jordan was named Rookie of the Year. The Tile Shop is still working on securing exclusive rights to that brand.

1988: It tried to register but didn’t get exclusive rights to the words THE TILE SHOP because other people who sell tiles in shops need to use the words “tile” and “shop.”

1995: Undaunted, it tried again. And failed.

1997: Yet another try. Yet another failure.

2003: And again. Failure.

2004: Again? Yes. And failed? Yes.

2016: Tried again and actually managed to argue its way into a registration that includes exclusive rights to the word “tile.” Good luck enforcing that.

2019: As of this writing, it’s on its way to getting a second registration that includes exclusive rights to “tile.”

Thirty plus years and seven tries later, it has managed to acquire some feeble rights but The Tile Shop, LLC is never going to be able to stop stores that sell tile from using the word “shop” or the word “tile.”

The brand started weak. It remains weak. It could have spent the last 35 years building value into an actual trademark instead of trying to get rights to the generic words for its goods and services. This happens all too often.

 

Thanks for regular reader Liz B. for the suggestion and the photo.

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THE

In August 2019, The Ohio State University filed to register THE as a trademark for T-shirts & hats.

The pundits went wild. “How can someone own the word THE?” they asked. Actually, there’s no reason why someone can’t have THE as a registered trademark. If The Ohio State University has THE as a trademark, that doesn’t mean people can’t use the word “the” or have the word “the” as part of another trademark.

In September 2019 one of those pundits gloated when the Trademark Office rejected the application filed by The Ohio State University. “Ha, ha, Ohio State. We told you you can’t do that!”

But the Trademark Office’s objections had nothing to do with the issues raised by the snickering hoards and, in fact, it kinda shows that the snickering hoards are 100% wrong.

The big issue raised by the Trademark Office is the fact that Marc Jacobs already has a pending application for THE for clothing. So it’s not that The Ohio State University can’t register THE for hats and T-shits, it’s that Marc Jacobs is ahead in line.

I predict that the Marc Jacobs application won’t make it to registration because the specimens submitted by Marc Jacobs aren’t acceptable. I also predict The Ohio State University’s application will register.

 

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