Trademarkology: The Law of the Brand

Trademarkology: The Law of the Brand

The Trademarks of the World Cup Stars

Posted in Brands, Copyright, Patents, Registrations, Trademarks, Uncategorized

In honor of the world’s biggest sporting event, now occurring in Russia, let’s look at which of the big stars of the World Cup is winning the trademark competition. The competition, as I define it, is to show evidence of protecting the mark that is the player’s name or image.


We’ll start with Brazilian star Neymar (Neymar da Silva Santos Júnior), the last one on our list to bow out of the 2018 tournament. (Or fall down, roll around clutching his face or an appendage, and then pop up and walk out, as Neymar’s critics would say.) A search of the U.S. Patent and Trademark Office’s database shows that Neymar is doing better on the field (sorry, the pitch) than in the USPTO. There are no live applications or registrations for the word NEYMAR, and two dead applications filed by people who are not Neymar. A look at the World International Property Organization’s brands database shows 25 international applications and registrations containing the word NEYMAR, some of which have been abandoned. None of those indicates that it is owned by the actual Neymar personally, although several are owned by the Brazilian company Neymar Sport e Marketing S/S Ltda, which may very well have a genuine connection to the soccer star. That company has 14 active applications or registrations (10 of them in Mexico, whose World Cup hopes Neymar helped to dash), all of them for the stylized letters NJR shown below (presumably for Neymar, Jr.). There is one abandoned U.S. application for the stylized NJR mark, also filed by the Brazilian company.

So Neymar, though a great player, is not killing it in the trademark protection arena.

Neymar, who really does get fouled a lot, in an all-too-familiar pose.
Photo by Ronnie Macdonald, “Neymar on the deck 2” used under CC BY 2.0.

Lionel Messi

Next on our list is the man who may or may not be the greatest player in the world, but who, at 5 feet, 7 inches, has a very strong claim to having the greatest concentration of soccer talent per inch, Argentina’s Lionel Messi (Lionel Andrés Messi Cuccittini).

Mr. Messi is ahead of Neymar in the U.S., because he has one registered mark, although not covering his name but rather the stylized letter M shown below:

That mark is registered for a variety of goods, including clothing, balls, shin guards, and mobile phone cases. There are also three abandoned U.S. applications including the name MESSI, two of which seem to have been filed by people unrelated to the soccer great.

Outside the U.S., Messi has been active, as there are 22 registrations and pending applications for marks including MESSI, many of which also use the stylized M. Most of those are in Europe and Malaysia, and also Indonesia and Chile – but, surprisingly, not Argentina. As is often the case with registrations in countries outside the U.S. (which typically do not require proof of use to support a registration), the registrations cover a comically broad list of goods.

So Messi’s performance in trademark protection is okay, but not nearly as spectacular as his skills with a soccer ball.

Messi confounds opponents with his dribbling skills.
Photo by LG전자, at Available here, used under CC BY 2.0.

Cristiano Ronaldo

Portugal’s Cristiano Ronaldo obviously has game in the trademark protection field as well as on the pitch. A search of the WIPO database shows a total of 47 active registrations or pending applications worldwide, for marks incorporating the name CRISTIANO RONALDO or CR7 (his initials plus his jersey number). Fifteen of those are in the U.S. Some are owned by Cristiano Ronaldo himself, and others owned by entities that claim to have his consent to use the mark (rather than some uninvited interloper trying to cash in on the name).

Most of Cristiano Ronaldo’s U.S. applications are “intent to use” applications, meaning he was not using the mark with all of the listed goods at the time the application was filed. As a result, those look a little like some of the overseas registrations, claiming an intent to use the mark with a long list of goods. Most of the listed goods are plausible enough, including sporting equipment, toys and games, sports camps, various generally sports-related entertainment services, along with various paper goods, soaps and personal grooming products, hair styling products, perfumes, etc. etc. A European Union registration covers clothing, footwear, various online retailing services, and educational services.

By our measure, Cristiano Ronaldo wins the trademark protection cup. Perhaps he can take comfort in that victory as he watches the last four teams battle for the World Cup. And maybe four years from now, we’ll have to consider the trademark performance of England’s Harry Kane or France’s Kylian Mbappe, both of whom have been excellent in World Cup play.

Cristiano Ronaldo, one of the world’s best, with the ball.
Photo by Jan Solo, “Cristiano y Forlan,” used under CC BY-SA 2.0.

Childhood Trademarks

Posted in Brands, Copyright, Infringement, Trademarks, Uncategorized

Maybe it’s just because I am about to go on vacation with seven children under the age of 11 (and their parents), but it seems a lot of trademarks from my childhood have been making appearances in the news recently.

Just last month, Hasbro, Inc. obtained a federal trademark registration (Reg. No. 5,467,089) for the scent of Play-Doh. The mark is described as the “scent of a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough.” N.B.: You don’t always have to hire a sommelier to draft the description of your scent marks. On the other hand, I’m not sure how I would have described it (though I readily agree it is recognizable). I am going to have to borrow someone’s Play-Doh to see if my olfactory senses are sharp enough to detect the ‘cherry overtones.’

Scent marks are non-traditional marks, and the examining attorney required Hasbro to prove acquired distinctiveness to obtain the registration. Generally, a substantial showing of acquired distinctiveness is required to demonstrate that a scent is a mark. TO carry this heavy burden, Hasbro introduced hundreds of pages of evidence to prove that the scent functioned as an indicator of source. The evidence included the number of units of product sold (and its weight) as well as length of use and unsolicited media coverage referencing the scent of the product. The examining attorney accepted this evidence and allowed the application to publish for opposition. Nobody opposed, so the registration issued in May.

The Play-Doh scent is recognizable enough to inspire a cologne spray, which was released under license to celebrate the compound’s 50th anniversary.

Smells like childhood spirit.

There are not many scent marks registered with the US PTO. Of those that have registered or been the subject of TTAB proceedings, most involve conventional scents readily described by a single word (eg, orange, peppermint, cherry). While Play-Doh’s scent mark includes references to vanilla and cherry overtones, the total scent is more complicated than a single word could communicate. It would be interesting to hear whether this raises any particular enforcement challenges.

In other nostalgic news, trademarks associated with two childhood television shows have been in the news recently.

Just last week “Won’t You Be My Neighbor,” the documentary about Fred Rogers and his television show, “Mister Rogers’ Neighborhood,” opened in theaters around the country. I have not seen the film, but cannot help thinking that it would make the perfect counterweight to the daily news.

It is completely reasonable to change into a sweater and sneakers at work.
Even Fred Rogers did this.

Imagine all the goodwill packed into the MISTER ROGERS’ NEIGHBORHOOD mark. The McFeely-Rogers Foundation owns federal trademark registrations for that mark for use with a variety of goods and services (including education and entertainment services) so that even though the show is off the air, Fred Rogers’ legacy lives on. Although Fred Rogers has passed away and his show is no longer on the air, generations of children who formed his television audience remember (and hopefully carry on) the lessons of his television show.

PBS is celebrating the 50th year of the program’s inception.

The other childhood television show in the news recently is Sesame Street. The trailer for the movie “Happytime Murders” was recently released. The movie, scheduled for release in August, is described by Wikipedia as a ‘puppet crime-comedy’ film and is directed by Brian Henson, the son of Jim Henson, famous for Sesame Street and The Muppet Show. The movie is rated R and puppets in the movie behave badly. The tag line on the trailer “No Sesame. All Street.” grabbed the attention of the Sesame Workshop, which sought a temporary restraining order to prevent the STX defendants from using the tag line to promote the movie.

Sesame argued that the STX defendants’ use of the tag line ‘No Sesame. All Street.’ evoked Sesame’s SESAME STREET mark and confused consumers into believing that Sesame supported the movie. The STX defendants countered by saying the tag line clearly disclaims affiliation with Sesame and does not function as a mark.

The judge denied Sesame’s application for a TRO. Though that left Sesame with the option of pursuing preliminary and permanent injunctions, it chose to dismiss the case voluntarily without prejudice.

These marks, the scent of PLAY-DOH, MISTER ROGERS’ NEIGHBORHOOD, and SESAME STREET, have been around for 50+ years. These brands exert powerful influence over the children who encounter them and that influence continues long after the children have ostensibly become adults. The goodwill of these brands continue to exert power over us, evoking creativity, kindness, and thoughtfulness. Let’s hope those lessons continue to exert power over us as well.

The Golden Knights are one step closer to securing the Stanley Cup and Federal Trademark Registration

Posted in Infringement, Trademarks, Uncategorized

This hockey season, the Las Vegas Golden Knights have been fighting to establish their name in the National Hockey League . . . and with the United States Patent and Trademark Office (USPTO). If you have no idea what I’m talking about, check out my post from January about “The Fight Over the “Golden Knights.”

The Golden Knights have had a remarkable inaugural season and have battled their way into the Stanley Cup Final – where they are currently tied in the series with the Washington Capitals 1-1. The Golden Knights have already made history as being only the third team in NHL history to win multiple playoff series in their inaugural season – but they certainly don’t want to stop there. Vegas is hoping its luck will help the Golden Knights become the first expansion team to ever win the Stanley Cup in its first season.

The team’s streak of success begs one to wonder . . . will the Golden Knight’s luck continue off the ice?

As previously discussed, both the College of Saint Rose and the United States Department of Army took issue with the Las Vegas Golden Knights’ trademark applications. The College of Saint Rose feared confusion with its prior-registered mark for GOLDEN KNIGHTS THE COLLEGE OF SAINT ROSE. The Army feared confusion with its parachute team, nicknamed the “Golden Knights”.

The Army filed its formal notice of opposition against the Golden Knights on January 10, 2018. The marks at issue are LAS VEGAS GOLDEN KNIGHTS (Serial No. 87147269) and VEGAS GOLDEN KNIGHTS (Serial No. 87147239).

The College of Saint Rose requested an extension of time in which to file a formal notice of opposition to the Golden Knights’ trademark application(s) back on January 8, 2018. The TTAB gave the College an extension through March 11, 2018 to oppose the marks. However, interestingly, the College of Saint Rose never filed a formal opposition.

With the College of Saint Rose out of the way, the Army is the last obstacle standing between the Golden Knights and a federal trademark registration. The most recent filing with the TTAB indicates that proceedings have been suspended through June 23, 2018. According to several sources, the parties have indicated that they are engaged in a series of negotiations as to a co-existence agreement – which would allow both parties to use the mark “Golden Knights” within their respective realms.

Will the Golden Knights be able to win this off-the-ice series? Only time will tell. Stay tuned for more updates!

P.S. Now that the Nashville Predators have been eliminated, I don’t have a dog in the Stanley Cup fight and am not pulling for one team over the other. The Golden Knights have former Nashville Predator James Neal, and the Capitals are led by none other than Barry Trotz, who coached the Predators during their first 15 seasons. If the Preds can’t win the Stanley Cup – then at least a team with Nashville ties can!

Design Patents and Trade Dress

Posted in Patents, Registrations, Trade Dress, Trademark Basics, Trademarks

There are several different kinds of intellectual property protection (e.g., trademarks, patents, and copyrights). The borders between the types of protection are not always clear, and it may be that some subject matter is eligible for protection in more than one category. Conversely, it may be that qualifying for protection in one category excludes the subject matter from protection in another. This blog post examines the border between patent protection and trademark protection, particularly the border between design patent protection and trade dress.

Design patents protect the ornamental features of a manufactured article (while utility patents protect the utilitarian features). The drawings of a design patent show the parameters of design patent protection. Design patents remain in force for 14 years from the date the patent was granted if the application was filed before May 13, 2015 and for 15 years from the date the patent was granted if the application was filed on or after May 13, 2015.

Trade dress is a type of trademark that protects packaging or product configuration. Like other trademarks, trade dress marks serve as indicators of source. To qualify for trade dress protection, packaging or product configuration must be non-functional (that is, the features protected as trade dress must not be necessary for competitors to have to compete against the claimant) and must be either inherently distinctive or have acquired distinctiveness. Product configuration marks are considered inherently not distinctive and must acquire distinctiveness in order to qualify for trademark protection. Trade dress marks (like other marks) may be protected for an indefinite length of time.

A product design or feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. There are several factors one may consider to determine if a feature is functional. One factor is whether the features that are the subject of an application seeking to register trade dress were also the subject of claims in a utility patent. If so, the utility patent is strong evidence that the features are functional and therefore ineligible for trade dress protection.

But if a feature is protected by a design patent, that fact weighs against a finding of functionality (since design patents protect ornamental features) and may mean the design could be eligible for trade dress protection (even though it is still possible for other evidence to establish functionality). If the features are conclusively determined not to be functional, trade dress protection and design patent protection may exist for the same subject matter, either concurrently or consecutively, so long as the features are determined to be distinctive.

Deciding when, whether, and how to pursue design patent protection and/or trade dress protection may depend on a number of factors, including whether the design has been available in the marketplace before one files a patent application and whether the features are inherently distinctive or need to acquire distinctiveness before they can serve as an indicator of source. Having a design patent may aid in the development of trade dress rights by giving the features in question the time to acquire distinctiveness while the design patent remains in effect and prevents others from using the design. It is possible to facilitate the acquisition of distinctiveness through the use of “look for” advertising that instructs consumers of the product to identify the features as an indication of the source of the goods and services. Then, when applying for registration of the trade dress mark, the applicant can present evidence of the advertising in support of its claim of acquired distinctiveness. If the advertising is effective, this should also allow the applicant to produce evidence that consumers in fact recognize the features as an indicator of source. Thus, the applicant may secure trade dress protection prior to or after the design patent’s expiration.

Of course, not all packaging or product configurations that are worth protecting by design patents will merit trade dress protection. While obtaining a patent is typically more expensive than obtaining a trademark registration, design patents tend to be significantly less expensive to obtain than utility patents, and trade dress applications are often more expensive to prosecute than traditional trademark applications. Consulting with legal counsel will help decide the appropriate strategy for each case.

PS: Thanks to guest-blogger Sean Ritchie for co-authoring this post!

A Tradition Unlike Any Other® – The Masters® at Augusta National®

Posted in Brands, Copyright, Infringement, Trade Dress, Trademarks, Uncategorized

Hi everyone! You’re favorite Trademarkologist-in-training is back! I apologize for not blogging last month but my husband, Chris, and I were at the 2018 Masters Tournament® in Augusta, Georgia! If that’s not a “get-out-of-work-free card” then I don’t know what is!

Tickets to the Masters® have been referred to as some of the toughest tickets to score in all of sports, perhaps only rivaling tickets to the NFL Super Bowl. Aside from corporate sponsorships, being a PGA pro, and connections with people in high places, most people rely on the Masters® ticket lottery system (like me). Every year hundreds of thousands of people enter the lottery for tickets to the tournament and practice rounds and then wait in great anticipation to see if the odds were in their favor. Some people wait an entire lifetime for the opportunity to visit the hallowed grounds of Augusta National Golf Club®, where the Masters® is played – and trust me, it’s worth the wait!

The best way to describe Augusta National® is just pure horticultural perfection. Regardless of whether you are a golf fan, there is no denying the unmatched beauty that exists there, and, every year, during the first week in April, the top golfers in the world converge to play in the Masters Tournament® and compete to win a coveted Green Jacket®.

(photo obtained from USPTO)

The powerhouse institution behind all of these iconic golf places, logos, and names is Augusta National, Inc. (“ANI”). ANI owns all trademarks, service marks, trade names, trade dress, and copyrights relating to Augusta National Golf Club® and the Masters®. Talk about a valuable and expansive trademark portfolio!











In addition to owning countless trademarks, including AUGUSTA NATIONAL GOLF CLUB, MASTERS, MASTERS TOURNAMENT, GREEN JACKET, AMEN CORNER, and A TRADITION UNLIKE ANY OTHER, ANI has also been very active in its claim of rights and enforcement efforts. ANI has not been shy when it comes to clearly defining what use is safe in the fairway and what is out of bounds. Just take a look at the disclaimers on its website. ANI takes it exclusive trademark rights very seriously!

For example, you can only purchase Masters® merchandise and memorabilia at the Augusta National Golf Shop® (yes, that’s trademarked too!). This explains why most people in the check-out-line are purchasing hundreds or thousands of dollars’ worth of items – racking up for friends, family, Christmas gifts, etc. Seeing as tickets to the tournament are elusive, you’ve gotta’ stock up and take advantage of the fabulous shopping when you get the chance! (Don’t worry – I did) The golf shop is even almost as magical as the course itself – check out their promotional video.

Recently, ANI brought a federal lawsuit against a Florida-based online auction site that was selling the famed Green Jackets® to people who did not in fact win the Masters®. In fact, the policy, customs, and rules of the Masters Tournament® provide that the Green Jacket® presented to the winner of the tournament cannot be removed from the course except during the first year following its presentation. All other times it must be stored on ANI’s premises and can only be worn on the course and during the annual tournament. In this particular lawsuit, ANI wants the site shut down and claims that the items, regardless of whether they are stolen or fake replicas, infringe their trademark rights. In addition to seeking injunctive relief, ANI, in its take no prisoners way, is also seeking monetary damages in the form of restitution, enhanced damages, punitive damages, liquidated damages, and its attorneys’ fees and costs.

The case is still ongoing and I will report back if there are further developments. All in all, ANI and the Masters® serve as a great lesson that securing federally registered trademarks and exclusivity is a powerful tool if you want to develop and protect your brands for generations to come.


Is a Design Mark Worth a Thousand Words?

Posted in Brands, Copyright, Registrations, Trademarks

Someone said a picture is worth a thousand words. If true, that would make it really difficult to compare a design mark and a word mark for likelihood of confusion purposes. Fortunately, a recent case from the Trademark Trial and Appeal Board (the “TTAB”) provides clearer guidance.

Aquitaine Wine USA, LLC sought to register the mark below in connection with certain French wines protected by an appellation of origin:

It was refused registration on the grounds of likelihood of confusion with the registration for the mark CHATEAU LAROQUE for use with wines having a different controlled appellation. Aquitaine appealed.

In this case, the TTAB had to analyze whether there was a likelihood of confusion between a mark comprised of both literal and graphic elements against a standard character mark. The TTAB began its analysis emphasizing the factors involving similarity of the marks and relatedness of the goods. The TTAB observed that when comparing a mark with a design element, the words are normally accorded greater weight because they make the greater impression on consumers and consumers use them to request the goods.

Applying this logic to the marks before it, the TTAB concluded that LAROQUE is the dominant element in Aquitane’s mark because of the size, placement and font of the word in the mark. Similarly, it concluded the term LAROQUE is the dominant element of the registrant’s mark because “chateau” was disclaimed as descriptive. Furthermore, the word ‘chateau,’ which refers to a large French country house or castle, and appears in registrant’s mark, corresponds with the image displayed as part of Applicant’s mark.

The TTAB emphasized its obligation to confine its analysis to the manner in which the marks appear in the drawings of the registration and application respectively (rather than the way the marks might be used in commerce). For what it’s worth, below is a copy of the specimen the registrant submitted when renewing its registration last year alongside an image of the specimen submitted by Aquitane in its application:










This may explain why the examining attorney focused on the ‘possibility’ that the registered mark could appear alongside the image of a chateau.

The TTAB spent some time reviewing the way it must analyze the similarity of the marks when one of the marks is a standard character mark. Registrations for standard character marks afford protection for the words (or letters or numbers) for use in any font, style, or color. Thus, when considering the similarity of the marks factor of the likelihood of confusion analysis, the TTAB considers that the words in the standard character mark could appear in various fonts, styles, or colors.

The parties disagreed about the scope of variations this would allow the TTAB to consider. Aquitaine argued that it would be impossible for the registered mark to appear in the same manner of display as its own because that would necessarily lead to copyright infringement of its artwork. The examining attorney argued that the registered mark could easily be displayed alongside an image of a house and vineyard in a way that would underscore the similarities between it and Aquitaine’s mark. The TTAB noted that both parties seemed to be arguing over the correct interpretation of a reasonable manners test. But this test was rejected by earlier precedent, which did not identify a replacement.

The TTAB took this opportunity to articulate such a test. The TTAB held that when comparing a standard character mark to a word + design mark, it would consider variations of the depicted standard character mark “only with regard to ‘font, style, size, or color’ of the ‘words, letters, numbers, or any combination thereof.’” At the same time, when the word + design mark includes a graphic representation of a word in the standard character mark, that fact will be considered in the analysis to determine the overall connotation and impression of the marks.

The TTAB found that the similarity of the marks in this case weighed in favor of a finding of likelihood of confusion. After considering the other likelihood of confusion factors at issue, the TTAB ultimately affirmed the examining attorney’s refusal to register the mark on likelihood of confusion grounds. The concurring opinion criticized the holding to the extent it seemed to limit the possibility or depiction of designs from its analysis of standard character marks.

So is a picture really worth a thousand words? Perhaps before the TTAB, a standard character mark is worth a thousand font, color, and style variations.

March — What a Month! (Part 2)

Posted in Brands, Registrations, Trademarks

No, even though we are down to the Final Four, I’m still not going to write about MARCH MADNESS®.

Rather, I’m going to continue to write about Quinn, Riley, Skylar, and Toby – the four Nor’Easter storms which dumped record snowfall this March. Now being born and raised in Montana, I know a thing or two about snow. However, four Nor’Easter storms in a single month dumping more than four feet of snow in some areas is something to write about!

For those of you who have not been watching the news recently, according to the Weather Channel, a Nor’Easter is a storm that:

(a) typically features winds from the Northeast (thus its name) off the Atlantic ocean;

(b) the storms dump lots of snow in the winter months, but snow is not a requirement for a Nor’Easter; and

(c) the storms are most frequent from September to April, but can happen anytime of the year.

And guess what? According to the good folks over at The Weather Channel, there was almost a fifth Nor’Easter this month. Fortunately for our friends on the East Coast, this low pressure system was too far out into the ocean to qualify as a Nor’Easter and caused only minor coastal flooding and beach erosion.

If Nor’Easters can be so destructive, cause so much damage, and be so widely reviled on the East Coast, then why do so many companies use NOR’EASTER as all or part of their trademarks?

My research revealed the first company to seek registration of NOR’EASTER as a mark was the Gillette Company in 1968 for use in connection with hand lotion. That application matured into U.S. Reg. No. 0871912 – but later went abandoned when it was not renewed.

One can understand the attraction of the word for the University of New England – the UNE Nor’Easters. There, the word Nor’Easters may strike fear in the hearts of their fellow Division III opponents.

Although its mascot, Stormin’ Norman, (voted #1 college mascot in all of Maine) does little to make one shake in their snow boots.

One can also see the connection with Nor’Easter Enterprises, U.S. Reg. No. 2,208,604, for NOR’EASTER for hand tools, namely, shovels (and presumably snow shovels). And, perhaps, one can see a connection with Charles River Apparel’s registration of NOR’EASTER for use in connection with jackets and pants as everyone needs such clothing to survive the elements.

But what about the other companies that use Nor’Easter as all or part of their marks?

In those instances, it is much more difficult to see the attraction of being associated with the dreaded storms. NOR’EASTER is currently registered as all or part of marks for use in connection with the following goods and services (in alphabetical order): beer, boats, coffee, hunting game calls, retail and wholesale distributorship services featuring seafood, vaping products, and windows (non-metal).

In conclusion, even a word associated the loathed snow storms can serve as a mark and be registered with the United States Patent & Trademark Office.

March! What a month! (Part 1)

Posted in Brands, Copyright, Registrations, Trademarks

No, I’m not going to write about MARCH MADNESS® – that annual ritual of college basketball and the NCAA® basketball tournament.

Rather, I’m writing about the crazy winter weather which battered the East Coast with four Nor’Easter storms dumping record snowfall this March. After last week’s Storm Skylar and this week’s Storm Toby, some parts of the East Coast received over four feet of snow. It’s a regular blizzard.

Speaking of blizzards, have you seen the complaint that Dairy Queen filed in federal district court in Minnesota alleging infringement of its BLIZZARD® mark? According to Dairy Queen’s complaint, “One of the most popular and well-known menu items at DAIRY QUEEN® restaurants is the BLIZZARD® treat, consisting of soft-serve ice cream blended with fruit, nuts, candy pieces, and other flavorings. The BLIZZARD® treat is a required core menu item at all DAIRY QUEEN® locations. For those of you not in the know, it looks like this:

Dairy Queen Blizzard

Dairy Queen has five incontestable registrations for BLIZZARD claiming a first use date back to 1946:

Blizzard Registration chart

It is fair to say Dairy Queen is very protective of its BLIZZARD mark. Which is why it did not take too kindly to W.B. Mason selling bottled spring water under its own BLIZZARD mark:

Blizzard Water

In the fall of 2016, W.B. Mason filed trademark applications with the USPTO containing “blizzard” as part of its mark for use in connection with spring water. Check out application serial nos. 87/210,712 and 876/210,633 both filed October 20, 2016 and claiming a first use date of September 15, 2015.

According to the complaint, upon learning of W.B. Mason’s applications, trademark counsel for Dairy Queen contacted the Applicant and requested the applications be withdrawn. W.B. Mason declined and the applications were passed for publication. Dairy Queen promptly opposed, alleging a likelihood of confusion between W.B. Mason’s use and Dairy Queen’s use of “blizzard.” See TTAB Opposition No. 91235851.

When W.B. Mason continued using its mark, Dairy Queen filed the trademark infringement action in its home court in Minnesota. Like I said, March! What a month.

We will continue to monitor this case and give you updates on how both the TTAB and the District of Minnesota address the likelihood of confusion issue presented by this dispute.

In the meantime, stayed tuned for next week where we will explore more of this crazy March weather and the four Nor’Easters.

Specimen Pilot Program

Posted in Brands, Copyright, Trademarks

The United States Patent and Trademark Office (the “PTO”) has launched a new pilot program designed to ensure that specimens of use submitted to the PTO reflect actual use of the mark in commerce.

A mark is “used in commerce” within the meaning of the federal trademark statute (the Lanham Act) when the mark is affixed to goods (or containers or displays) and the goods are sold or transported in commerce and/or the mark is used in advertising or promotional materials that describe the services and the services are rendered in commerce. In both cases, the use must occur in the ordinary course of trade. A U.S. applicant must prove use of the mark in commerce before the application may proceed to registration. All registrants must prove use of the mark (or excusable non-use) in order to maintain the registration. Thus, specimens may be submitted as part of initial applications and/or allegations, statements, and declarations of use.

Under the PTO’s pilot program, third parties are invited to notify the PTO through a designated email address of any improper specimens submitted by an applicant. An improper specimen is one that is not actually in use, but may have been created specifically for the purpose of appearing to satisfy the PTO’s filing requirements.

To notify the PTO of an improper specimen, one must send it objective evidence showing third party use of the same image without the mark or cite to the prior application or registration numbers in which the same images (bearing different marks) have been submitted to the PTO. The PTO must receive the correspondence no later than the deadline for opposing registration of the pertinent application, but the PTO expresses a desire to receive such correspondence prior to publication whenever possible.

If someone is interested in knowing the outcome of the PTO’s investigation into an allegedly improper specimen, they must monitor the TSDR status page of the reported application. The PTO will not respond to the person who notified it of the improper specimen other than by automated reply acknowledging receipt of the report. This PTO program is subject to change and may terminate at any time.

Like letters of protest, this program offers people a low-cost opportunity to identify problems with pending applications and ask the PTO to address them, thereby potentially avoiding the expense and burden associated with addressing them directly through a notice of opposition. Unlike notices of opposition, the person notifying the PTO of an improper specimen does not need to be someone who believes they would be damaged by registration of the mark that is the subject of the pending application. Because the PTO accepts notices of improper specimens only prior to the deadline for opposition, this pilot program will not address improper specimens submitted after the publication period expires.

Although not stated expressly in the PTO’s materials, this pilot program seems to have a purpose similar to some of the PTO’s other programs, like the proposed streamlined cancellation process described here and the audit program originally described here (and which went into effect in November, 2017). All seem generally designed to promote the accuracy and integrity of the federal trademark register.

This PTO program seems to be seeking assistance in identifying a particular type of improper specimen, namely, mock ups or fabricated specimens. Current technology makes it all too easy to create an image that could appear to be a genuine specimen even though the applicant has not made use of the mark in commerce. On the flip side, there are some specimens that are accepted as genuine even if it doesn’t look like much effort went into creating them.

In In re Kohr Brothers, Inc., 121 U.S.P.Q.2d 1793 (TTAB 2017), a precedential TTAB decision, the TTAB affirmed a refusal to register the mark CONEY ISLAND BOARDWALK CUSTARD for use with frozen desserts when the specimen consisted of the following:


The examining attorney had refused registration of the mark, observing in part “The specimen is a piece of paper taped to a wall with the mark and a stylized image of a cone dessert printed on it. The location on the wall appears to be above the top of a garbage can.”

On appeal in Kohr, the issue was whether the specimen satisfied the requirements for a point-of-purchase display for goods. The TTAB decided that it did not, but refrained from judging the nature of the specimen itself. When the applicant filed a new application seeking registration of the mark in connection with retail services featuring frozen desserts, the PTO accepted the same specimen displayed in a slightly different location:

The PTO’s mission to preserve the integrity of the federal trademark database is laudable. This program is one tool designed to help achieve that goal, but will necessarily be underinclusive. If you spot an improper specimen, consider taking the time to notify the PTO. If you are an applicant seeking to register a mark, be extra conscientious about working with your attorney to confirm that the mark is being used in commerce and that the specimen accurately reflects this.