Movies and TV rarely get legal stuff right, which is okay because they’re telling stories not giving legal advice.
Still, you can imagine my excitement when She-Hulk: Attorney at Law nailed trademark law in Episode 5. Here’s how it went down.
Jennifer Walters, She-Hulk’s alter-ego, was not amused when her nemesis, the evilly self-absorbed Tatiana, started selling a “luxurious line of skincare, wellness, and beauty products” under the trademark SHE-HULK. Jen hired Mallory Book, a lawyer who specializes in trademark litigation.
Mallory knew that no one can register a trademark that includes the name of a living person without having the written consent of that person. She also knew that the rule applies to shortened names, pseudonyms, stage names, titles, and nicknames.
Tatiana claimed Jen wasn’t actually known as SHE-HULK and presented as evidence a TV interview where Jen rejected the moniker. Mallory countered with evidence that showed She-Hulk is Jen, including:
Recordings of another, later, broadcast where Jen embraced She-Hulk as her pseudonym; and
Testimony of people who know Jen as She-Hulk.
Did the show get everything right? Of course not. For example, Mallory should have introduced testimony of Jen’s friend and boss, both of whom were actually confused into thinking Tatiana’s beauty line was associated with Jen.
Watching TV and movies is no place to learn the law but it’s really cool when the writers can get it right and tell the story.
Shout to to Bill B. for letting me know about Episode 5.
 Trademark Manual of Examination Procedure Section 1206.01.
She-Hulk’s friend told her whoever gets there first with trademarks wins. That’s often true but not in this situation.
She-Hulk asks Mallory if Thor or Dr. Strange had trademarks. Mallory says: “You just named two people her use their actual names.” That’s a true statement but irrelevant for trademark law. You couldn’t register DR. STRANGE without his consent either.
The procedural stuff was insanely wrong. The legal action was an argument over summary judgment but the whole thing was based on a factual determination, which is the exact opposite of how summary judgment works.
Also, obviously, Marvel owns all the trademark registrations for SHE-HULK. Apparently, neither Jen nor She-Hulk are real people.
You sell GRINS brand candy bars. You want to register GRINS as a trademark but, whoops, another company already has a registration for GRINS for cookies.
You’re probably going to have to rebrand but, maybe not.
I look at getting my client a trademark registration in terms of developing a strategy and then using just the right tactics to accomplish my client’s goal.
Candy bars and cookies are similar enough that your application’s probably not going to get through the Trademark Office review but, you might be able to make a deal with the cookie company:
You agree to use GRINS only for candy. They agree to use GRINS only for baked goods.
You can also divide up the trademark rights in other ways. For example:
You agree to use GRINS only west of the Mississippi. They agree to use GRINS only east of the Mississippi.
You agree to always use GRINS CANDY. They agree to use only GRINS COOKIES.
Without some kind of leverage, the cookie company has no reason to make a deal with you. We might get some leverage if there was something not entirely above-board about their application. Sometimes the other company agrees to enter into an agreement in exchange for a payment.
Most of the time, there’s nothing anyone can do about another application or registration that’s in the way of the trademark you want to use but, every once in a while, there is a way forward.
You’ve been selling GRINS brand candy bars. You want to register GRINS as a trademark but another company already has a registration for GRINS for candy
Usually, that’s it. Game over.
In Oppose, Cancel, or Make a Deal – Part 1, we looked at one way to move forward. This post looks at “cancellations.”
I think of getting a registration as a problem to solve with the tools I have at hand. Sometimes the tools are what I need. Sometimes they aren’t.
There are at least 27 different reasons for a cancellation. The three I see most are: Prior Common Law Rights; Abandonment; and Fraud. If I have the tools for one of those three, I might be able to cancel the other registration so your application can move forward.
Prior Common Law Rights
You were using GRINS before the other company started using GRINS; and
Your earlier use of GRINS was throughout the United States; and
The other company’s registration is less than 5 years-old.
The other company isn’t using GRINS anymore; and
The other company isn’t ever going to start using GRINS again.
It’s hard to know if the owner committed fraud unless it’s obvious from the documents at the Trademark Office. Faked “specimens” are the easiest fraud to find. Here are two hilarious examples of fakes from the Trademark Office.
If you can’t oppose the application and you can’t cancel the registration, you can try to make a deal. We’ll cover that in Part 3.
 (1) Trademark Act § 2(d), 15 U.S.C. § 1052(d): That defendant’s mark so resembles a mark registered in the Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods or services of the defendant, to cause confusion, or to cause mistake, or to deceive.
(2) Trademark Act § 2(e), 15 U.S.C. § 1052(e): For example, that defendant’s mark, when used on or in connection with the goods or services of the defendant, is merely descriptive or deceptively misdescriptive of them, or that defendant’s mark is primarily geographically descriptive or primarily geographically deceptively misdescriptive of them; or that defendant’s mark is primarily merely a surname; or that defendant’s mark comprises any matter that, as a whole, is functional.
(3) Trademark Act § 2(a),15 U.S.C. § 1052(a): For example, that defendant’s mark is geographically deceptive, that defendant’s mark falsely suggests a connection with plaintiff’s name or identity or that defendant’s mark is a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and was first used on or in connection with wines or spirits by the applicant on or after January 1, 1996.
(4) That there was no bona fide use of defendant’s mark in commerce prior to the filing of the use-based application for its registration under Trademark Act § 1(a), 15 U.S.C. § 1051(a), or for a Trademark Act § 1(b), 15 U.S.C. § 1051(b) application, within the expiration of the time for filing a statement of use.
(5) That defendant did not have a bona fide intent to use the mark in connection with the identified goods/services as of the filing date of the application under Trademark Act § 1(b), 15 U.S.C. § 1051(b). A plaintiff need not allege and prove that the defendant acted in bad faith and intended to deceive the USPTO. The requirements for pleading and proving a lack of a bona fide intent to use a mark do not equate to the requirements for pleading and proving fraud.
(6) That defendant’s mark is a mere background design that does not function as a mark separate and apart from the words displayed thereon.
(7) That defendant is not (and was not, at the time of the filing of its application for registration) the rightful owner of the registered mark.
(8) That defendant’s mark, consisting of a particular color combination applied to its goods, is ornamental and has not become distinctive as an indication of the source of defendant’s goods.
(9) That defendant’s mark, consisting of a particular sound applied to its goods, is not inherently distinctive and has not acquired distinctiveness.
(10) That defendant’s mark, consisting of trade dress, product design or packaging, is not inherently distinctive and has not acquired distinctiveness.
(11) That the term for which registration is sought or for which registration has been obtained has not been used as a trademark or service mark.
(12) That defendant’s mark represents multiple marks in a single application (or registration) (“phantom mark”).
(13) That defendant’s mark has been abandoned due to nonuse with intent not to resume use, and nonuse for three consecutive years shall be prima facie evidence of abandonment; or due to a course of conduct that has caused the mark to lose significance as an indication of source.
(14) That defendant’s mark consists of or comprises the name of a particular living individual without the individual’s consent. Trademark Act § 2(c), 15 U.S.C. § 1052(c).
(15) That defendant’s product design is generic.
(16) That defendant’s mark would dilute the distinctive quality of plaintiff’s famous mark.
(17) That defendant has used its mark so as to misrepresent the source of its goods or services.
(18) That defendant has misused the federal registration symbol with intent to deceive the purchasing public or others in the trade into believing that the mark is registered.
(19) That defendant committed fraud in the procurement of its registration or during the prosecution of its application for registration.
(20) That defendant’s registered mark interferes with the registration of a foreign owner’s mark under Article 8 of the General Inter-American Convention for Trademark and Commercial Protection of Washington, 1929 (“Pan American Convention”), 46 Stat. 2907.
(21) That defendant’s application is barred from registration by claim or issue preclusion.
(22) That defendant’s mark is the title of a single creative work and not considered a trademark.
(23) Trademark Act § 2(b), 15 U.S.C. § 1052(b): Registration of a mark which is “the flag or coat of arms or other insignia of the United States, or of any State or municipality” is prohibited.
(24) That defendant has not established a commercial presence in the country from which its underlying foreign registration issued where such foreign registration forms the basis of the U.S. registration or application for registration. Trademark Act § 44(e); 15 U.S.C. § 1126(e).
(25) That the intent-to-use application was assigned or transferred in contravention of Trademark Act § 10; 15 U.S.C. § 1060.
(26) That the mark is generis. A mark registered on the Supplemental Register is subject to cancellation on the basis that it is generic.
(27) That the mark is not in lawful use in commerce where the provision of the identified goods and/or services is unlawful under federal law.
 Check out Oppose, Cancel, or Make a Deal Part 1 to see how to figure this out
You’ve been selling GRINS brand candy bars. You think it’s about time to register GRINS as a trademark but, whoops, another company has already applied to register GRINS for candy.
Most of the time, your only choice is to completely rebrand but, sometimes, there’s a way forward.
I see getting a trademark registration like a game of chess. There are rules and pieces that can move certain ways. If the pieces are lined up the right way, I can move them to get what my client wants.
One of those tactics is called an “opposition.”
Here’s how the chess board has to look for an opposition to work:
You were using GRINS before the other company’s “priority date”.
You were also using GRINS before the other company’s “first use” of GRINS.
The other company’s application to register GRINS hasn’t been “published for opposition” yet or was published within the last 30 days.
If the application was published for opposition more than 30 days ago, you’ve lost the chance to oppose. If you still want to try for GRINS, you can wait until the trademark is registered and then try to cancel it.
HitPiece lets fans collect NFTs of your favorite songs. Each HitPiece NFT is a One of One NFT for each unique song recording. Members build their Hitlist of their favorite songs, get on leaderboards, and receive in real life value such as access and experiences with Artists.
“One of One NFT for each unique song recording . . ..” So HitPiece is selling the only NFT for each song?
No. They aren’t. So they must be selling “real life value such as access and experiences with Artists . . .”
Nope. HitPiece never had a deal with the artists.
When recording artists got wind of what was going on, they were understandably quite a bit less than happy.
Let’s tally up what HitPiece did wrong:
1. Seriously pissed off everyone HitPiece needs to make happy in order for HitPiece’s business to succeed. After taking down the offending material, HitPiece’s website showed only this statement: “We Started The Conversation And We’re Listening.” Something about horses and barn doors comes to mind.
2. Some of the names of the artists are trademarks so using those names in connection with selling anything related to entertainment is trademark infringement.
3. HitPiece was also probably using imagery from album covers, which would be copyright infringement. (Full images don’t appear on the WayBack Machine® for the site but it looks like they were.)
A hat trick of bad choices!
While it isn’t clear what HitPiece purported to sell, it’s painfully clear it never owned whatever it is. Brilliant.
Shout out to Cassandra G. for letting me know about this fiasco.
There’s nothing good about getting a letter demanding that you stop infringing on someone else’s trademark. Threats of litigation loom. Thoughts of lost time and money dominate.
It’s bad, but it may not be as bad as it seems.
Houston, we have a problem.
If you really are infringing on the rights of another trademark owner, you’re going to have to rebrand. That’s pretty awful news but you can usually negotiate for a period of time to make the transition from your current trademark to the new trademark. It’s going to cost you money and lost good will, but there are ways to mitigate that.
Just a skosh.
Sometimes you can make your trademark non-infringing without having to completely rebrand. The other owner may agree to allow you to continue using parts of your trademark or to change just your logo or font.
So’s your mom
Sometimes the cease and desist letter is flat out wrong. The letter writer doesn’t know all the facts or screws up the legal analysis. Lots of lawyers don’t know that much about trademark law but that doesn’t stop them from shooting off nastygrams. They’re counting on your being so scared that you agree to whatever they ask. If that happens, you need to convince them to leave you alone by setting out the true facts and making the correct legal analysis.
None of these are as good as never getting a cease and desist letter but all are way better than a lawsuit.
There are lots of steps involved in bringing a trademark application through to registration. As a trademark attorney, I’m used to ticking off each of those steps knowing that my client is getting ever closer to a registration.
It’s rare for an application to go backward but it can happen. When it does, it’s usually some minor and hyper-technical issue. We get it fixed and the application gets back on track.
Recently, I saw a nightmare that was being foisted on a company in my co-working space: Their trademark registration was issued and then . . . immediately canceled.
The Trademark Office examiner checked the application and approved it for publication.
The application was published for opposition.
The applicant received a Notice of Allowance.
The applicant filed a Statement of Use.
The Statement of Use was reviewed by the Trademark Office and accepted.
The Trademark Office printed a Certificate of Registration and then
Canceled the registration the instant it was completed.
It’s like that moment when they announced best picture at the 2017 Oscars®. It’s been giving me nightmares ever since.
To register your trademark with the U.S. Trademark Office, you have to submit a “specimen” showing:
used on or in connection with
the goods or services.
Lots of people find specimens confusing. Let’s see if I can help with that.
Specimens of things you can touch are pretty straightforward: You submit a picture of the thing or the thing’s package. The picture above has images that could work as specimens for 34 different trademarks.*
But what kind of specimen does the Trademark Office want for something you can’t photograph, like computer software?
We used to submit pictures of the disc. Here’s the specimen submitted by AOL for software in 2006.
Today, most software is either downloaded or SaaS, so what do we use now?
To the right is an excellent specimen for the trademark QUICKBOOKS for SaaS:
QUICKBOOKS is clearly visible.
It’s a sign-in page so it shows “use.”
It’s clear that QUICKBOOKS is a trademark for SaaS.
Here’s an excellent specimen for ZYNGA for downloadable software:
The word ZYNGA is clearly visible.
It’s an actual screen shot from a phone so it shows “use.”
It’s clear this is a mobile software app.
This is NOT an acceptable specimen for KISI for software. The trademark KISI doesn’t appear anywhere.
This is NOT an acceptable specimen for MINECRAFT for software:
It’s not clearly in “use”. This could just be an ad for a game that’s going to be released next month.
It’s not clear it’s software. This could be a board game.
You gotta have all three: The trademark; in use; for the goods and services in your application. If you’re missing any one of those requirements, it won’t work as a specimen.
*Here’s the list.
Revlon® for hairbrushes
Aveeno® in plain font for skin lotion
Aveeno® in stylized font for skin lotion
Active Naturals® for skin lotion
Scotch® for tape
The tartan pattern used by Scotch brand
Magic™ used by Scotch brand
3M® (on the Scotch brand tape dispenser)
KleenEARTH® in plain font for scissors
KleenEARTH® in stylized font for scissors
The “W with an arrow through it” logo for scissors
iPhone® for mobile phones
Semikolon® for paper products
Amarelli® in plain font for candy
Amarelli® in stylized font for candy
Amarelli® in a different stylized font for candy
Quartet® for markers
Artgum® in plain font for erasers
Artgum® in stylized font for erasers
Prismacolor® for erasers
Expo® in plain font for markers
Expo® in stylized font for markers
Pentel® in plain font for erasers
Pentel® in stylized font for erasers
Hi-Polymer® for erasers
Mead® for envelopes
Paperpro® for staplers
Bobino® for cord holders
Swingline® in plain font for hole-punchers
Swingline® in stylized font for hole-punchers
Krazy® for adhesives
Gold® for batteries
Leatherman® for tools
Quartet® for erasers
If I had been more careful with way I oriented the stuff, there would have been 6 more:
When Pat McDonagh started a chain of burger joints in Ireland, he called them SUPERMAC’S after the nickname he earned when he played soccer.
If you want a SUPERMAC’S burger and chips you have to go to Ireland because, so far, McDonald’s has argued that SUPERMAC’S is “confusingly similar” to BIG MAC to keep the chain from expanding.
That might be changing. In April 2017 Supermac’s filed to cancel McDonald’s BIG MAC registration.
McDonald’s submitted a variety of evidence to show that it had been using BIG MAC but the three-judge panel of the Cancellation Division was not impressed and concluded that “the documents [submitted by McDonald’s] do not provide conclusive information that the products marked with [BIG MAC] are offered for actual sale . . ..”
The panel revoked McDonald’s BIG MAC trademark registration and ordered McDonald’s to pay all the costs.
When I read a story like this, I see McDonald’s shooting itself in the foot. Trademark owners need to protect their trademarks, but sometimes trademark owners overreach and find themselves trapped by their own unqualified argument that someone else’s trademark is confusingly similar to theirs.
McDonald’s can’t now argue that BIG MAC isn’t confusingly similar to SUPERMAC’S because McDonald’s is already on record in the opposition it filed saying that it is.
Supermac’s and McDonald’s will probably agree to each allow the other to use and register its trademark. That should have happened in 2014 but McDonald’s needed to have its nose bloodied before it would play nice.
Huge shout out to Rebecca M. for sending me an article that led to this post.
 In March 2014 Supermac’s Holdings Ltd filed an application to register SUPERMAC’S for, among other things, hamburgers and restaurant services. McDonald’s International Property Company, Ltd opposed the application and won the opposition.
 McDonald’s was granted a registration for BIG MAC in the European Union in December 1998. In the European Union, a trademark registration can be cancelled if the owner can’t prove use in the five-year period before the cancellation request was filed.
 Here’s the description of the evidence that McDonald’s submitted:
3 affidavits, signed by representatives of McDonald’s companies in Germany, France and the United Kingdom. They claimed significant sales figures in relation to ‘Big Mac’ sandwiches for the period between 2011 and 2016 and attach examples of the packaging of the sandwich (boxes), promotional brochures and what appear to be menus, further referred to below:
Brochures and printouts of advertising posters, in German, French and English, showing, inter alia, ‘Big Mac’ meat sandwiches; and packaging for sandwiches (boxes); the materials appear to originate from the EUTM proprietor and are dated between 2011 and 2016. The brochures and posters show a sandwich on the menu along with other products, or on its own, and the prices are also provided on some of the materials; other documents appear to be blank menus in which the price can be filled in. The EUTM appears on the submitted material in relation to sandwiches.
Printouts from the websites mcdonalds.de, mcdonalds.at, mcdonalds.be, mcdonalds.cz, mcdonalds.dk, mcdonalds.es, mcdonalds.fi, mcdonalds.fr, mcdonalds.hu, mcdonalds.ie, mcdonalds.it, mcdonalds.nl, mcdonalds.pl, mcdonalds.ro, mcdonalds.se, mcdonalds.si, mcdonalds.sk, mcdonalds.co.uk,
dated between 07/01/2014 and 03/10/2016. They depict a variety of sandwiches, inter alia ‘Big Mac’ sandwiches, some of which state that they are sandwiches made with beef meat.
A printout from en.wikipedia.org, providing information on ‘Big Mac’ hamburger, its history, content and nutritional values in different countries.
Decision on Cancellation No. 14 788 C (Revocation), Supermac’s (Holdings) Ltd v. McDonald’s International Property Company, Ltd. (2019), p. 3.
 Here’s what the Decision on Cancellation said about each of the types of evidence:
“As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perceptions of a party involved in a dispute may be more or less affected by its personal interests in the matter.
“However, this does not mean that such statements do not have any probative value at all.
“The final outcome depends on the overall assessment of the evidence in the particular case. The probative value of such statements depends on whether or not they are supported by other types of evidence (labels, packaging, etc.) or evidence originating from independent sources. In view of the foregoing, the remaining evidence must be assessed in order to see whether or not the content of the affidavits is supported by the other items of evidence.”
Decision at p. 4.
“Consequently, the presence of the trade mark on websites can show, inter alia, the nature of its use or the fact that products or services bearing the mark have been offered to the public. However, the mere presence of a trade mark on a website is, of itself, insufficient to prove genuine use unless the website also shows the place, time and extent of use or unless this information is otherwise provided.
“In particular, the value of the internet extracts in terms of evidence can be strengthened by evidence that the specific website has been visited and, in particular, that orders for the relevant goods and services have been made through the website by a certain number of customers in the relevant period and in the relevant territory. For instance, useful evidence in this regard could be records that are generally kept when operating a business web page, for example, records relating to internet traffic and hits attained at various points in time or, in some cases, the countries from which the web page has been accessed. Neither of these, however, was provided by the EUTM proprietor.
“Although some of the printouts of the proprietor’s web pages exhibit sandwiches (the prices are not provided), some of which marked with the EUTM, it could not be concluded whether, or how, a purchase could be made or an order could be placed. Decision on Cancellation No 14 788 C page: 5 7 of Even if the websites provided such an option, there is no information of a single order being placed. Therefore, a connection between the EUTM proprietor’s websites (irrespective of the used country code top-level domains and languages) and the eventual number of items offered (sold) could not be established.”
Decision pp. 4-5.
The Brochures, Advertising, and Menus
“Indeed, although the submitted packaging materials and brochures depict the EUTM, there is no information provided about how these brochures were circulated, who they were offered to, and whether they have led to any potential or actual purchases. Moreover, there is no independent evidence submitted that could show how many of the products for which the packaging was used (if that is the case) were actually offered for sale or sold.” Decision p. 5.
The Wikipedia Printout
“As far as the printout from en.wikipedia.org is concerned, it is noted that Wikipedia entries cannot be considered as a reliable source of information, as they can be amended by Wikipedia’s users and therefore these could only be considered relevant as far as they are supported by other pieces of independent concrete evidence.” Decision at p. 5
 “Taking into account the submitted evidence as a whole, it is concluded that the documents do not provide conclusive information that the products marked with the EUTM are offered for actual sale, as there is no confirmation of any commercial transactions, either online, or via brick-and-mortar operations. Even if the goods were offered for sale, there is no data about how long the products were offered on the given web page or in other ways, and there is no information of any actual sales taking place or any potential and relevant consumers being engaged, either through an offer, or through a sale. Finally, as far as the relevant services are considered, there is no single piece of evidence that refers to any of the registered services being offered under the EUTM.” Decision at p. 5
 “It follows from the above that the EUTM proprietor has not proven genuine use of the contested EUTM for any of the goods and services for which it is registered. As a result, the application for revocation is wholly successful and the contested EUTM must be revoked in its entirety.” Decision at p. 6.