Combination surname trademarks

The analysis of a combination surname trademark requires two inquires. First, is the term added to the surname “merely descriptive” of the applicant’s goods and services? In re Hutchinson Technology, Inc., 852 F.2d 552 (Fed. Cir. 1988). Specifically, is “collection” merely descriptive of KEI’s goods and services? Second, did adding the additional term to the surname alter the primary significance of the mark, as a whole, to the purchasing public? In re Hutchinson at 554. A key element is determining the relative distinctiveness of the second term in the mark, in this case, “collection.” Id. at 554-55. The Board failed to answer this question. Indeed, the Board’s opinion was contradictory and left the Court “uncertain as to [the Board’s] findings” on whether “collection” is merely descriptive. This uncertainty undermined the inquiry about the primary significance of the mark to the purchasing public.

Combination surname trademark cases:

Earnhardt v. Kerry Earnhardt, Inc., (Fed. Cir. July 27, 2017) (Before Wallach, Chen, and Hughes, J.) (Opinion for the court, Chen, J.)
Teresa Earnhardt appealed from the dismissal of its opposition to the trademark registration of EARNHARDT COLLECTION by Kerry Earnhardt, Inc (“KEI”).
Teresa Earnhardt is the widow of Dale Earnhardt and the owner of common law rights and trademark registrations for the mark DALE EARNHARDT in typed and stylized form, in connection with various goods and services. Kelly Earnhardt is the co-founder and CEO of KEI, the son of Dale Earnhardt, and the stepson of Teresa Earnhardt. Kelly Earnhardt has developed business ventures and licensing through KEI, including the EARNHARDT COLLECTION lifestyle brand, in connection with custom home design and construction services.

The Court vacated and remanded the Board’s finding that EARNHARDT COLLECTION for furniture and custom home construction is not primarily merely a surname. The Board was instructed to complete the two required inquiries and explicitly determine: (1) whether the term “collection” was merely descriptive of KEI’s furniture and custom home construction services, and (2) whether “collection” altered the primary significance of the mark as a whole to the purchasing public.
The analysis of a combination surname mark requires determining: (1) whether the additional term was merely descriptive of applicant’s goods and services, and (2) the primary significance of the mark as a whole to the purchasing public.

Federal Circuit returns dispute over Dale Earnhardt trademark rights back to USPTO

MAD MEN Barbershop Trademark Opposition

Lions Gate Entertainment filed an opposition to the MAD MEN Barbershop trademark in the USPTO’s TTAB.
Opposition No. 91234230
Trademark Serial No. 87/110,436
For: MADMEN BARBERSHOP & Design
Publication Date: December 27, 2016
MAD MEN Barbershop Trademark

NOTICE OF OPPOSITION

Commissioner for Trademarks
ATTN: Trademark Trial and Appeal Board
P.O. Box 1451 Alexandria, Virginia 22313-1451
 
Dear Commissioner:
Opposer, Lions Gate Entertainment Inc., a Delaware corporation, having its principal place of business at 2700 Colorado Avenue, Santa Monica, California 90404 (“Opposer”), believes that it will be harmed by the registration of the mark MADMEN BARBERSHOP & Design as shown in U.S. Application Serial No. 87/110,436 in Class 44 (the “Application”), and hereby opposes its registration on the following grounds: FACTUAL BACKGROUND REGARDING OPPOSER’S MADMEN MARKS 1. Opposer is the entity responsible for producing the highly successful and critically acclaimed, award-winning television series Mad Men (the “Mad Men Television Series”). Debuting July 19,
FACTUAL BACKGROUND REGARDING OPPOSER’S MADMEN MARKS 1. Opposer is the entity responsible for producing the highly successful and critically acclaimed, award-winning television series Mad Men (the “Mad Men Television Series”). Debuting July 19,

  1. Opposer is the entity responsible for producing the highly successful and critically acclaimed, award-winning television series Mad Men (the “Mad Men Television Series”). Debuting July 19, 2007 on the AMC cable network, the Mad Men Television Series ran for seven 2 seasons and 92 episodes, airing its final episode on May 17, 2015. The Mad Men Television Series won many awards, including 16 Emmys and 5 Golden Globes, and was also the first basic cable series to receive the Emmy Award for Outstanding Drama Series, winning in each of its first four seasons. It is widely regarded as one of the greatest television dramas of all time. Opposer’s Mad Men Television Series has received considerable media attention. Attached hereto as Exhibit A are true and correct printouts from Opposer’s website at about Opposer and the Mad Men Television Series.
  2. Opposer owns 9 federal trademark registrations relating to the Mad Men Television Series (“the MADMEN Marks”), two of which are incontestable (Reg. Nos. 3,341,791 and 3,879,176). Opposer has used the MADMEN Marks for a range of goods and services. Attached as Exhibit B are true and correct printouts from the Office’s TESS and TSDR pages for Opposer’s MADMEN, MADMEN (Stylized), and MADMEN & Smoking Man Design trademark registrations, showing status and title, and copies of such registrations. Opposer’s MADMEN Marks are shown below:
  3. Opposer first used: (a) its MADMEN Marks for entertainment services, namely, an on-going television series dealing with a fictional advertising agency during the 1950’s in Class 41, at least as early as July 19, 2007; (b) MADMEN for computer game programs, cartridges, and cassettes; DVDs featuring fictional drama; motion picture films about fictional drama; pre-recorded electronic media featuring fictional drama in Class 9, at least as early as July 1, 2008; (c) MADMEN (Stylized) for computer game programs, cartridges, and cassettes; DVDs featuring fictional drama; motion picture films about fictional drama; pre-recorded electronic media featuring fictional drama in Class 9, at least as early as July 1, 2008; (d) 3 MADMEN & Smoking Man Design for computer game programs, cartridges, and cassettes; DVDs featuring fictional drama; motion picture films about fictional drama; pre-recorded electronic media featuring fictional drama in Class 9, at least as early as July 1, 2008; (e) MADMEN for clocks and watches; cuff links and tie clips; jewelry and imitation jewelry in Class 14, at least as early as February 28, 2012; (f) MADMEN (Stylized) for clocks and watches; cuff links and tie clips; jewelry and imitation jewelry in Class 14, at least as early as February 28, 2012; (g) MADMEN & Smoking Man Design for watches in Class 14, at least as early as February 28, 2012; (h) MADMEN for address books and diaries; books in the field of fictional drama; comic books; computer game instruction manuals; notebooks; posters; stickers in Class 16, at least as early as July 29, 2008; (i) MADMEN (Stylized) for address books and diaries; books in the field of fictional drama; comic books; computer game instruction manuals; notebooks; posters; stickers in Class 16, at least as early as July 29, 2008; (j) MADMEN & Smoking Man Design for address books and diaries; books in the field of fictional drama; comic books; computer game instruction manuals; notebooks; posters; stickers in Class 16, at least as early as March 4, 2011; (k) MADMEN for beer mugs; beverageware; coffee cups, tea cups and mugs; glass beverageware; plates; shot glasses in Class 21, at least as early as July 29, 2008; (l) MADMEN (Stylized) for beer mugs; beverageware; coffee cups, tea cups and mugs; glass beverageware; plates; shot glasses in Class 21, at least as early as July 29, 2008; (m) MADMEN & Smoking Man Design for beer mugs; beverageware; coffee cups; tea cups and mugs; glass beverageware; plates; shot glasses in Class 21, at least as early as July 29, 2008; (n) MADMEN for men’s suits, women’s suits; sweatshirts; t-shirts; ties in Class 25, at least as early as July 29, 2008; (o) MADMEN (Stylized) for men’s suits, women’s suits; sweatshirts; t-shirts; ties in Class 25, at least as early as July 29, 2008; (p) MADMEN & Smoking Man Design for men’s suits, women’s suits; sweatshirts; t-shirts; ties in Class 25, at least as early as July 29, 2008; (q) MADMEN for action figures; board games; jigsaw and manipulative puzzles; playing cards in Class 28, at least as early as July 1, 2010; (r) MADMEN (Stylized) for action figures; board games; jigsaw and manipulative puzzles; playing cards in Class 28, at least as early as July 1, 4 2010; (s) MADMEN & Smoking Man Design for action figures; board games; jigsaw and manipulative puzzles; playing cards in Class 28, at least as early as July 1, 2010; (t) MADMEN for cigarette lighter holder not of precious metal in Class 34, at least as early as July 1, 2008; (u) MADMEN (Stylized) for cigarette lighter holder not of precious metal in Class 34, at least as early as July 1, 2008; (v) MADMEN & Smoking Man Design for cigarette lighter holder not of precious metal in Class 34, at least as early as July 29, 2008; (w) MADMEN for entertainment in the nature of on-going television programs in the field of fictional drama in Class 41, at least as early as July 19, 2007; (x) MADMEN (Stylized) for entertainment in the nature of on-going television programs in the field of fictional drama in Class 41, at least as early as July 19, 2007; and (y) MADMEN & Smoking Man Design for entertainment in the nature of on-going television programs in the field of fictional drama in Class 41, at least as early as July 19, 2007. Opposer has developed common law rights in its MADMEN Marks, which also predate the Application.
    FACTUAL BACKGROUND REGARDING THE APPLICATION
  4. On July 20, 2016, Applicant Madmen Barbershop, Inc., an Illinois corporation, having an address of 1457 Schaumburg Road, Schaumburg, Illinois 60193 (hereinafter “Applicant”), filed the Application in the Office seeking registration, on an actual use basis, of MADMEN BARBERSHOP & Design for “barber shop services” in Class 44. Applicant’s proposed trademark is shown below:
  5. Applicant claims a date of first use anywhere and date of first use in commerce of July 2015 in the Application. Both the date of first use claimed and the filing date of the 5 Application is after Opposer’s first use of its MADMEN Marks and after the applications to register the MADMEN Marks were filed. Opposer has priority over Applicant for its MADMEN Marks.
  6. The Application was published for opposition in the Official Gazette on December 27, 2016. Opposer was granted an extension of time to oppose the Application.

    FIRST GROUND – LIKELIHOOD OF CONFUSION

  7. Opposer incorporates the allegations contained in Paragraphs 1 to 6 herein.
  8. Applicant’s proposed mark is confusingly similar to the MADMEN Marks. 9. Applicant’s mark is likely to cause confusion, mistake, or deception as to the source, origin, affiliation, association, connection, or sponsorship of Applicant’s services offered under the MADMEN BARBERSHOP & Design mark with the MADMEN Marks, the Mad Men Television Series, and/or with Opposer or Opposer’s activities. SECOND GROUND – LIKELIHOOD OF DILUTION 10. Opposer incorporates the allegations contained in Paragraphs 1 to 9 herein. 11. The MADMEN Marks are inherently distinctive and have acquired secondary meaning and are associated with Opposer and the goods and services offered under the MADMEN Marks. The MADMEN Marks are famous within the meaning of the Federal Trademark Dilution Act. Applicant filed the Application after the MADMEN Marks had become famous, and Applicant seeks to, or does commercially, use the mark MADMEN BARBERSHOP & Design. 12. Applicant’s mark is likely to cause dilution of Opposer’s MADMEN Marks and blur the distinctiveness of Opposer’s MADMEN Marks. DAMAGE TO OPPOSER 13. As a result of all of the foregoing, the maturation of the Application into a registration would cause a likelihood of confusion, mistake, or deception with Opposer and the 6 MADMEN Marks, a likelihood of association, connection or affiliation with Opposer, the goods and services offered by Opposer under the MADMEN Marks, or as to the origin, sponsorship or approval by Opposer of Applicant’s services or commercial activities, and a likelihood of dilution of the MADMEN Marks. 14. Opposer would be damaged by the registration of the mark shown in the Application, in that such registration would give Applicant a prima facie exclusive right to the use of MADMEN BARBERSHOP & Design, and despite the likelihood of confusion and likelihood of dilution described above. PRAYER WHEREFORE, Opposer prays that this Opposition be sustained in favor of Opposer, that the Application be rejected, and that registration of the Application be refused. Opposer requests that the Board charge the requisite $400 opposition filing fee, under 37 C.F.R. § 2.6(a)(17), and any additional fees as necessary to Deposit Account No. 50-5691. Respectfully submitted, Dated: April 26, 2017 /Jill M. Pietrini/ Jill M. Pietrini SHEPPARD MULLIN RICHTER & HAMPTON LLP 1901 Avenue of the Stars, Suite 1600 Los Angeles, California 90067-6017 (310) 228-3700 Attorneys for Opposer Lions Gate Entertainment Inc. CERTIFICATE OF E-FILING I hereby certify that NOTICE OF OPPOSITION is being transmitted electronically to Commissioner of Trademarks, Attn: Trademark Trial and Appeal Board through ESTTA pursuant to 37 C.F.R. §2.195(a), on this 26th day of April, 2017. /LaTrina A. Martin/__________________________ LaTrina A. Martin

 

Legal Writing Resources

Legal writing is very different than novel writing. In legal writing, the goal is to clearly and persuasively communicate points of fact and law in as few words as possible. Judges and clerks are busy, so they don’t have all day to figure out what are your arguments.
@BryanAGarner is an appellate lawyer that writes a lot about legal writing. Bryan Garner co-authored a book with Antonin Scalia titled: Making Your Case – The Art of Persuading Judges.
Watch Bryan Garner’s video titled:

Five ways to improve your writing:

When you’re fumbling for words and pressed for time it might be tempting to dismiss good business writing as a frivolous thing but it’s a skill you must cultivate to succeed. As an editor in chief and author, I believe that it takes only a few words to make a strong impression, good or bad. Here’s how to win people over with your writing.
  1. First use personal pronouns skillfully.
    • Don’t over use I.
    • Instead, lean heavily on we, our, you, and your.
    • Those are personal friendly pronouns that pool readers into a document.
  2. Second use contractions.
    • Won’t, for example, instead of will not, don’t instead of do not.
    • Many writers are afraid of contractions because they were taught in school to avoid them.
    • But you won’t break any real rules if you use them.
    • And they counteract stuffiness, a major cause of poor writing.
    • Relax if you’d say something as a contraction then write it that way, if you wouldn’t then don’t.
  3. Also try to avoid passive voice.
    • Don’t write the closing documents were prepared by Sue.
    • Instead, write, “Sue prepared the closing documents.”
    • This guideline isn’t absolute.
    • Sometimes passive voice is the most natural way to say what you’re saying, but defaulting to active voice is the best way to prevent convoluted backward sounding sentences.
  4. Next be sure to vary the length and structure of your sentences.
    • You want both short sentences and long main clauses and subordinate ones.
    • You want variety.
  5. Avoid jargon and acronyms.
    • Most readers will find them tiresome.
    • It may be convenient to refer to COGS instead of spelling out “cost of goods sold” but if you throw in too many of these terms you’ll lose everybody’s attention.
Clear concise writing isn’t some mysterious art. It’s a skill you can learn starting with these five principles.

 
 
In 2016 Bryan Garner published a book titled: Garner’s Modern English Usage. Here is an introduction to his book:

Writing Style Guides

https://law.resource.org/pub/us/code/blue/
https://law.resource.org/pub/us/code/blue/IndigoBook.html
Indigo Book, Hard Cover

Legal Writing Tips

 

Trademark the word Covfefe

Multiple persons applied to register the word COVFEFE as a trademark in the USA on May 31, 2017. It is rare that there are so many applications for the same trademark filed all on the same day. Some of the 9 applications filed on May 31st even cover the same or similar set of goods: various types of clothing.
Some of the applications were improperly filed. Two of the applications failed to state a basis for their trademark claim: actual use or proposed use. Some of the applicants paid a $225 TEAS Plus fee and others paid the $275 TEAS Reduced Fee.
The danger of using the TEAS Reduced Fee application is that applicants will improperly describe their goods and they will select an incorrect class for their goods. The reduced fee application is only for experts who want to claim goods and services that are not in the goods and services manual and want to argue with an examiner. If your lawyer does this, consider changing lawyers, unless you have a completely new product or service that is not in the manual.

What does Covfefe mean?

The one application filed by a lawyer, for Barley Forge Brewing Company, provided a translation for the word COVFEFE:

  • The wording COVFEFE has no meaning in a foreign language

COVFEFE Trademark Search

Current Search: (covfefe)[COMB] docs: 9 occ: 20

Serial Number Basis Word Mark Check Status Goods
1 87470872  Actual Use COVFEFE TSDR Men’s, women’s, children’s and babies’ clothing, namely, shirts, sweatshirts, T-shirts, long-sleeve shirts, short-sleeve shirts, tank tops, sleeveless shirts, blouses, shorts, polo shirts, collared shirts, swimwear, swim suits, skirts, dresses, slacks, jeans, pants, trousers, suits, sweaters, socks, scarfs, suspenders, bathrobes, gloves, belts, ties, cravats, hoodies, hooded sweatshirts, vests, jackets, sport jackets, outer jackets, wind resistant jackets, coats, overcoats, sport shirts, gym suits, gym shorts, sweat bands, sleepwear, pajamas, one-piece garments for children, leisure suits, loungewear, dress shirts; undergarments, namely, underwear, under shirts, boxer shorts, underwear tops, men’s underwear, thongs, bras, sport bras, panties, shapewear panties, girdles, lingerie, camisoles, hosiery, tights, leggings; footwear, namely, shoes, sandals, flip-flops, sneakers, boots, slippers, clogs, loafers, boat shoes; headwear, namely, hats, caps, in Class 25
2 87469898  Proposed use COVFEFE TSDR Clothing; Headwear
3 87469814  Proposed use COVFEFE TSDR Beer (Barley Forge Brewing Company, LLC)
4 87469576  Proposed use COVFEFE TSDR Advice relating to investments (Covfefe LLC)
5 87469331  Proposed use COVFEFE TSDR Clothing, namely, arm warmers; Clothing, namely, athletic sleeves; Clothing, namely, crops; Clothing, namely, folk costumes; Clothing, namely, khakis; Clothing, namely, knee warmers; Clothing, namely, thobes; Gloves; Pants; Scarves; Shirts; Shoes; Socks; Underwear; Belts; Belts for clothing; Bottoms as clothing; Combinations; Gloves as clothing; Head wraps; Headbands for clothing; Hoodies; Hoods; Jackets; Jerseys; Leather belts; Mantles; Short sets; Shoulder wraps for clothing; Tops as clothing; Wrist bands as clothing; Wristbands as clothing
6 87469298  Proposed use COVFEFE TSDR T-shirts
7 87469292  Proposed use COVFEFE COFFEE TSDR Coffee and coffee substitutes in class 30; Coffee-house and snack-bar services in class 43
8 87469117  None COVFEFE TSDR TEE SHIRTS; SWEATSIRTS; HATS (incorrectly claimed class 002)
9 87469115  None #COVFEFE TSDR Hats; T-shirts; Wristbands as clothing; Hoodies; Jackets; Jerseys; Ties as clothing; Tops as clothing

Was COVFEFE used in Interstate Commerce?

At least one of the applications is based on actual use since May 31, 2017.

  • Did a retailer sew on a COVFEFE branded tag sell and the golf shirt to a customer who walked in the door that day?
  • Or did he sell it online and sell it “in interstate commerce?”
  • Did he sell all of the listed goods to out of state purchasers?
  • Does use in commerce matter anymore since the ADD A ZERO case?

I think that the USPTO still cares whether an actual use application is based sales made in interstate commerce. It may all depend on to whom and where the items were sold. Here is a summary of a recent Federal Circuit court decision regarding sales made in interstate commerce Christian Faith Fellowship Church v. adidas AG, 120 USPQ2d 1640 (Fed. Cir. 2016):

  • Reversing the TTAB, the CAFC ruled that the sale of two hats at the Church’s bookstore to an out-of-state purchaser constituted use in commerce of applicant’s mark ADD A ZERO.
  • The Board had granted the petition of adidas AG for cancellation of two registrations owned by the Church for the mark ADD A ZERO, in standard character and design form, for “clothing, namely shirts and caps,” finding that these sales were de minimis and insufficient to show use that affects interstate commerce.
  • The CAFC observed, however, that “when a general regulatory statute bears a substantial relation to commerce, the de minimis character of individual instances arising under that statute is of no consequence,” and Congress has the power to regulate it under the Commerce Clause. Gonzalez v. Raich, 545 U.S. 1, 17 (2005), quoting United States v. Lopez, 514 U.S. 549, 558 (1995).
  • The CAFC pointed out that the Church was not required to present evidence of “an actual and specific effect that its sale of hats to an out-of-state resident had on interstate commerce.
  • Nor did it need to make a particularized showing that the hats themselves were destined to travel out of state.”
COVFEFE branded green golf shirt in USPTO SN 87470872 specimen

COVFEFE is properly branded on this golf shirt

Trademark Application Priority

The Big Question is: Who will get priority and get their applications approved?
Possible Answers:

  • The first to file?
  • All of them?
  • None of them?
  • The one based on actual use?
  • The one’s whose applications are properly filed and not confusing with the previously filed applications?
  • Will there be an interference proceeding? There hasn’t been an interference proceeding in decades.

The trademark application with the lowest serial number will usually have priority: Serial Number: 87469115
Internet Transmission Date: Wed May 31 02:34:46 EDT 2017. However, the applicant messed up the basis of his application. The applicant has not specified a filing basis and he may also have an issue with the description of one or more items in his list of goods: Hats; T-shirts; Wristbands as clothing; Hoodies; Jackets; Jerseys; Ties as clothing; Tops as clothing. So he will get an office action and have to correct his application. If he fails to respond, his application will go abandoned.

§2.83    Conflicting marks

  • (a) Whenever an application is made for registration of a mark which so resembles another mark or marks pending registration as to be likely to cause confusion or mistake or to deceive, the mark with the earliest effective filing date will be published in the Official Gazette for opposition if eligible for the Principal Register, or issued a certificate of registration if eligible for the Supplemental Register.
  • (b) In situations in which conflicting applications have the same effective filing date, the application with the earliest date of execution will be published in the Official Gazette for opposition or issued on the Supplemental Register.
  • (c) Action on the conflicting application which is not published in the Official Gazette for opposition or not issued on the Supplemental Register will be suspended by the Examiner of Trademarks until the published or issued application is registered or abandoned.

[37 FR 2880, Feb. 9, 1972, as amended at 54 FR 37594, Sept. 11, 1989]

The applications for beer and Advice relating to investments will likely both be approved without conflict because their goods and services are not confusing with the rest of the applicants.

  • If conflicting applications have the same effective filing date, the application with the earliest date of execution will be approved for publication for opposition or for the issuance of a registration on the Supplemental Register. 37 C.F.R. §2.83(b). An application that is unexecuted will be treated as having a later date of execution.
  • Occasionally, conflicting applications will have the same date of filing and execution. If this situation occurs, the application with the lowest serial number will have priority for publication or issuance. When determining which serial number is the lowest, the examining attorney should disregard the series code (e.g., “76,” “77,” “78,” “79,” or “85”) and look only to the last three digits of the six-digit serial number that follows.

Which COVFEFE Trademark Applications will Probably Be Opposed?

One of the applications claimed to have used the COVFEFE trademark on all of the following goods since May 31, 2017:

Men’s, women’s, children’s and babies’ clothing, namely, shirts, sweatshirts, T-shirts, long-sleeve shirts, short-sleeve shirts, tank tops, sleeveless shirts, blouses, shorts, polo shirts, collared shirts, swimwear, swim suits, skirts, dresses, slacks, jeans, pants, trousers, suits, sweaters, socks, scarfs, suspenders, bathrobes, gloves, belts, ties, cravats, hoodies, hooded sweatshirts, vests, jackets, sport jackets, outer jackets, wind resistant jackets, coats, overcoats, sport shirts, gym suits, gym shorts, sweat bands, sleepwear, pajamas, one-piece garments for children, leisure suits, loungewear, dress shirts; undergarments, namely, underwear, under shirts, boxer shorts, underwear tops, men’s underwear, thongs, bras, sport bras, panties, shapewear panties, girdles, lingerie, camisoles, hosiery, tights, leggings; footwear, namely, shoes, sandals, flip-flops, sneakers, boots, slippers, clogs, loafers, boat shoes; headwear, namely, hats, caps, in Class 25

This application will probably be opposed if it doesn’t get a spot audit for specimens on all of the goods claimed. The applicant submitted only one specimen, as shown above.
In some recent spot audits, the half of all applicants could not provide specimens for each and every good claimed. They were given the option of cutting back their list of goods to the ones that they had specimens for. Applications are sometimes opposed on the basis of fraud on the PTO for claiming use on goods that the applicant had not sold at all.

What Happens with Fraudulent Trademark Applications?

It depends on whether an opponent can prove an intent to deceive.

  • If so, then entire registration is kaput based on fraud.
  • If not, then only the “unused” product is knocked out.

Keep in mind that only one fraud claim has been upheld by the TTAB since the 2009 Bose decision. It was a TTAB case involving the mark NATIONSTAR.
It would be nice if everyone was honest when they checked the boxes in their application, under penalty of perjury. Alas, a large segment of applicants are not so honest when filing applications based on actual use.

Google Trends for the word Covfefe

Google trends for the word COVFEFE shot up globally on May 31st and have since almost died out.
However, COVFEFE trademark applications keep coming in. As of June 2, 2017, there was a total of 19 trademark applications for the word COVFEFE.

COVFEFE Google trends graph and global trends 2017 June 5

COVFEFE Google trends spiked on May 31st, 2017, and after a few days have died out.


 
We will keep you updated.

The Slants Supreme Court Case

The Slants Supreme Court 2017 Docket Summary

The Supreme Court of the USA will decide the case of Lee v. Tam in 2017: Can you register a disparaging trademark, namely, THE SLANTS for Entertainment in the nature of live performances by a musical band.
The Supreme Court will decide whether the constitutional right to freedom of speech overrides the disparaging trademarks provision in US trademark law.

Disparaging Trademarks

A provision of the Lanham Act, 15 U.S.C. 1052(a), says that no trademark shall be denied registration on account of its nature unless it:

“consists of … matter which may disparage… persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”

But is this provision invalid under the Free Speech Clause of the First Amendment?
The United States Patent and Trademark Office (“USPTO”) refused to approve the mark on the grounds that “The Slants” is disparaging toward persons of Asian descent. The applicant, Mr. Simon Shiao Tam, is Asian.
On appeal, the Trademark Trial and Appeal Board (“TTAB”) affirmed the denial to register the trademark. Tam appealed the TTAB’s decision to the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) on the grounds that 15 U.S.C. 1052(a), which was the basis for the rejection by both the USPTO and the TTAB, is unconstitutional. A panel of the Federal Circuit reaffirmed the TTAB’s decision again finding that the mark was disparaging.
Additionally, the Federal Circuit panel found 15 U.S.C. 1052(a) constitutional based on precedent from In re McGinley. The Federal Circuit quoted the United States Court of Customs & Patent Appeals from In re McGinley saying: “With respect to appellant’s First Amendment rights, it is clear that the PTO’s refusal to register appellant’s mark does not affect his right to use it. No conduct is proscribed, and no tangible form of expression is suppressed. Consequently, appellant’s First Amendment rights would not be abridged by the refusal to register his mark.”
The Federal Circuit judges sua sponte (Latin for on their own motion) vacated its panel decision and organized a rehearing of the case. The en banc rehearing of the case held that the disparagement section of the Lanham Act was unconstitutional. The en banc Federal Circuit reasoned that the provision would fail under both intermediate and strict scrutiny saying, “every rejection under the disparagement provision is a message-based denial of otherwise available legal rights,” and thus “§ 2(a) is invalid on its face.”
What will the US Supreme Court do? Affirm?
Ronald Coleman, of GOETZ FITZPATRICK LLP, is representing Mr. Tam before the US Supreme Court.

The Slants USPTO Trademark Applications

Mr. Tam first applied to register his band’s name The Slants in USPTO trademark Serial Number 77952263 for Entertainment, namely, live performances by a musical band in March 2010. The USPTO trademark examiner refused the application. Mr. Tam asked the examiner to reconsider the refusal instead of appealing the final refusal to the TTAB. So Mr. Tam application went abandoned. The examiner wrote:

The filing of a request for reconsideration does not extend the time for filing a proper response to a final Office action or an appeal with the Trademark Trial and Appeal Board (Board), which runs from the date the final Office action was issued/mailed. See 37 C.F.R. §2.64(b); TMEP §§715.03, 715.03(a), (c).

The TMEP states:

An applicant must respond to a final action within six months of the issuance date.  15 U.S.C. §1062(b); 37 C.F.R. §2.62(a).

An applicant may respond to a final action by timely filing (1) a notice of appeal to the Trademark Trial and Appeal Board (see TMEP §§1501–1501.07); (2) a request for reconsideration that seeks to overcome any substantive refusals to register and comply with any outstanding requirements; or (3) a petition to the Director under Trademark Rule 2.146 to review a requirement, if the subject matter of the requirement is procedural and thus appropriate for petition. 37 C.F.R. §2.63(b)(1)-(2). Filing a request for reconsideration does not stay or extend the deadline for filing a notice of appeal or petition to the Director under 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.63(b)(3); TMEP §715.03.

So Mr. Tam reapplied to register his band’s name The Slants in USPTO trademark Serial Number 85472044 for Entertainment, namely, live performances by a musical band in November 2011. The USPTO trademark examiner refused the application.
Interestingly enough, the USPTO recently allowed an application for “THE SLANT” for Vehicle suspension parts, namely shock absorbers, coil springs, and suspension springs in USPTO Trademark Serial Number 86804165 , without any objections regarding whether the trademark is disparaging.
I wonder what would have happened if Mr. Tam first applied to register THE SLANTS for t-shirts and hats under a corporate name, instead of his own Asian name.
These points of authority do not necessarily reflect the views of the writer. This blog is not legal advice. These posts are just notes.