Hickies Design Trademark

Hickies, Inc. has a metric assload of trademarks registered with the U.S. Trademark Office. Words, taglines, and, most interestingly, this design trademark:

Hickies 1

As of this writing,[1] the U.S. Trademark Office has refused to register the Hickies design trademark shown below because the Trademark Office believes the design in the trademark is functional[2] and you can’t register a trademark that consists of functional elements.

Hickies 2

What does it mean for a design to be functional? Play-Doh® CAN get a trademark registration for its smell because its smell has nothing to do with how Play-Doh works as modeling clay but Chanel® can NOT get a registration for the smell of No. 5® because the smell is the product.

Hickie’s attorney has provided arguments and, literally, thousands of pages of evidence to support a finding that the elements of the design of its fastener aren’t functional. So far the Trademark Office isn’t having it.

“Why don’t they just get a design patent?”, I pretend to hear you ask. Hickies’s did get a design patent but they also want a design trademark. Why? There are lots of reasons. Here are some that may or may not be theirs:

  • Patents expire. Trademark registrations can be renewed forever.
  • Trademark infringement is easier to prove and defend than patent infringement.
  • Two forms of protection are better than one, especially with a product that’s relatively easy to knock-off.

It’s great that Hickies is using all the tools available to it to protect its product and brand. I’ll be watching to see how this all plays out.

 

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[1] March 2020.

[2] The European Union Intellectual Property Office feels the same way. Hickies applied for a to register the design in the EUIPO in 2017. The application was rejected by the examiner at EUIPO and the Board of Appeal of EUIPO. Hickies has appealed that decision.

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