Showing posts with label Principal Register. Show all posts
Showing posts with label Principal Register. Show all posts

Thursday, November 14, 2013

The Selfie Trademark: Struggling to Own the New Slang

In the modern world of interactive social media, new words are invented, used and discarded at lightning speed.

Indeed, the lexicon of online social media is replete with an entirely new vocabulary composed of Internet "slang."  There are thousands of examples percolating on the Internet, with dictionaries and even online translators devoted to these emerging linguistic trends.

Some examples of words that started as Internet slang and which are now mainstream are: "cookies" (a small piece of data embedded in an Internet browser), "photoshopped" (referring to the popular software graphics program that allows for visual 'touching up' of digital photographs) and "spam," (those annoying bulk e-mail messages that clog up our inboxes).

But some entrepreneurs are hoping that such slang terms are capable of functioning as trademarks. For example, the word "selfie" means a photograph taken of oneself (usually with a smartphone) that is planned to be uploaded to Facebook, Instagram, Imgur or another social media networking website.

But several brand owners are trying to monopolize this term, even before it fully enters the mainstream lexicon.  

Thinkboks LLC, an Illinois based software development company, has filed a formal trademark application for "SELFIE" in connection with "computer application software for allowing hands free photographs on portable electronic devices."  Thinkboks claims that it first used the term in commerce in 2012.

Screenshot of Thinkboks.com
The Trademark Office was not persuaded and recently denied the application on the basis that “SELFIE” is defined as “a slang term used to describe a photo that is taken of oneself for the purpose of uploading it to social networking sites  and image sharing websites, such as Facebook, Instagram or Imgur”.

To illustrate his point, the Examiner attached screenshots of websites (italicized emphasis added) in which the term was used by third parties descriptively:  “With our face detection and timer modes, you will love taking selfies at home or on the go!” and "It’s simple and easy and it helps with taking selfies! . . .”


The Examiner found that as shown by the Internet evidence, the wording “SELFIE” and/or its inflected forms is used to describe a feature, subject matter, use, and/or the nature of selfie software, i.e., software for taking pictures of oneself.   

Material obtained from the Internet is generally accepted as competent evidence to determine if a mark is being used widely as a descriptive term.  Accordingly, Thinkboks' trademark application was rejected on grounds of descriptiveness under Trademark Act Section 2(e)(1).

In addition to or in the alternative to submitting evidence and arguments in support of registration, Thinkboks can amend the application to seek registration on the Supplemental Register.

However, that approach means that Thinkboks would need to wait as long as five years to renew its attempt to receive a trademark registration, and would need to swear under oath that, during the interim five years, it alone made "substantially exclusive use" of that mark in commerce.

Therefore, if Thinkboks cannot successfully monopolize usage using legal means, it can only succeed by convincing the marketplace generally that "SELFIE" is associated exclusively with it.  And that's likely an uphill endeavor.

In the meantime, others are trying a similar strategy.

Selfie Social, a New Jersey-based company, is seeking to register the trademark for "Selfie Social" in connection with computer applications used for the collection of photographs.  The Examiner rejected this application on the same "descriptiveness" grounds.

Further, an unidentified person or company currently cloaked with privacy protection services has apparently registered the domain name "SELFIE.COM" and is accepting requests for new screen names.

If this isn't Thinkboks' domain name, they may face an even steeper uphill climb than they bargained for.

Monday, October 7, 2013

Can "ObamaCare" Be Legally Trademarked?

President Obama Signs "ObamaCare" Into Law in 2010
In the last several months, numerous formal trademark applications have been filed with the U.S. Patent and Trademark to attempt to own the term "ObamaCare."

Some were applications filed by insurers or HR professionals, whereas others were filed by opponents of the Patient Protection and Affordable Care Act, which has been dubbed "ObamaCare" ever since its passage in 2010.

For example, the "ObamaCare Calculator" trademark application was filed in August 2013 by Trendsetter, a Texas-based human resources firm.  Meanwhile, "ObamaCare.  Run for your Life," a proposed trademark for sports clothing was also filed, but quickly abandoned.

As reported today by the Wall Street Journal, one of the more controversial applications was filed in July of this year for "Destroy ObamaCare" t-shirts, being sold by a New Orleans-based attorney.  In an interview, the lawyer said that he doesn't "really have a particular desire to see ObamaCare destroyed or saved."  In fact, he has been busy applying for a trademark for "Save ObamaCare" for t-shirts.

The legal problem with all of these trademarks is that they use a living person's name (namely, the sitting President's) without his express written consent.  In recent years, the Trademark Trial and Appeal Board has blocked a number of registrations featuring the President's name, including "Obama Pajama", on this basis.

Therefore, it appears highly unlikely that anyone will be able to legally trademark "ObamaCare," at least in the United States.

Tuesday, September 10, 2013

Despite Legal Threat, Rights to MUMBO Sauce Trademark Stay in Chicago


Argia B. Collins' Chicago Area Restaurant

"Mumbo sauce" is sometimes used as the colloquial name for a tangy sauce served in Washington, D.C. restaurants and local eateries. However, a legal challenge to the validity of the name as a unique trademark appears to have been resolved in favor of the Windy City as the owner's locale.

The Washington Post describes the D.C. sauce's flavor as somewhere between barbecue and sweet-and-sour sauce.  The sauce is also sometimes called "Mambo sauce."  It is a versatile condiment that can be used for anything from fried rice to ribs or wings.

The Chicago Tribune reported in 2007 that Argia B. Collins, who died in 2005, and who had been one of Chicago's premier African American restauranteurs, first coined the term in the 1950's.  Collins' heirs ultimately transferred the rights to the name to Select Brands, LLC.

According to the Select Brands' website:  "A perfectionist when it came to his restaurants, Argia B. was not satisfied with the bland, watered-downed sauces served in other establishments or the tart, over-powering national brands sold by restaurant supply houses....Drawing on his southern roots, he wanted to create a sauce with the savory flavors reminiscent of the homemade Sunday dinners that he had enjoyed on his family's farm."

An image displayed on the Select Brands' website documents Collins' use of "Mumbo Bar-B-Q Sauce" in 3 flavors.

Capital City's Mumbo Sauce
In the 1990's, Select Brands LLC filed for a federal trademark on "MUMBO" for barbecue sauce in International Class 36, and it was granted.

Subsequently, a petition to cancel this trademark on the basis that it had become the "generic" name for a type of sauce was filed by Capital City, LLC, the makers of Capital City Mumbo Sauce, a D.C.-based company.

The petition cited printed materials taken from several different websites that showed a variety of sauces described as unauthorized "Mumbo sauces."

The Trademark Trial and Appeal Board was not persuaded, however, finding that while this evidence showed "some generic use of the term 'Mumbo' in connection with sauces," that evidence consisted of printouts from only a few websites, and was not an overwhelming evidence of widespread generic usage.

Further, the Board seemed persuaded that Collins' heirs had undertaken serious efforts to police what they deemed as improper use of the trademark, and did not find the level of widespread and unrestricted usage necessary to deem a registered mark totally unworthy of protection.  The Board refused to cancel Select Brands' trademark.

The federally registered Mumbo trademark will therefore remain owned by Select Brands LLC.

However, in the event that Select sues Capital or the other unauthorized Mumbo sauce users for trademark infringement, the jury and judge would get the final say in the matter, as genericness as well as lack of likely confusion can be used as complete defenses in an infringement case in court.

Wednesday, August 28, 2013

"Cronut" Craze Inspires Trademark Filing Frenzy

Specimen of Use Submitted By Ansel to the Trademark Office

Greenwich Village New York pastry Chef Dominique Ansel, of the Dominique Ansel Bakery, claims to have launched the "CRONUT" -- a delectable pastry that is half-croissant, half-donut, in May 2013.  The line that forms outside the bakery each morning for the Cronut is reportedly 2 1/2 hours long.  Fans claim that the Cronut will "change your life."

Consequently, Ansel has filed for a federal trademark registration on the term as used in connection with baked goods. Wikipedia acknowledges Ansel as the creator of the pastry, and attributes the term to him, despite acknowledging the proliferation of imitators.  

Indeed, only weeks later, a Massachusetts individual named Stephen Foung filed an Intent-to-Use application with the Trademark Office for "THE CRONUT HOLE" as it would be used in connection with retail bakery shops.  Not long after that, a Texas establishment emerged, claiming that it intends to use the term "CRONUTS" in connection with baked goods and downloadable recipes. Bakery publications have dubbed the situation a "Cronut trademark scramble."

But Rosario Auddino of Auddino Bakeries, writes on that Ohio pastry shop's website:

The cronut !!!! WHAT ???? The DOUGHSSANT has been in Columbus/Hilliard Ohio for going on 20 years now.. 
Roy created this one night when he was covering a shift for an employee...New York can eat there hearts out ....The cronut has nothing on the...The DOUGHSSANT... 

Auddino similarly filed for a federal trademark on DOUGHSSANT in May, claiming a first use in commerce in 1994.

No word yet from the USPTO on who owns the trademark CRONUT, nor from critics on who makes the best pastry, but we will accept free samples and render a verdict on the latter.

Thursday, August 15, 2013

Can a Valid Trademark Exist in Connection with the Illegal Drug Trade?


Washington State-based Diego Pellicer claims to be the first retail brand in the United States focused exclusively on "legal, premium marijuana for pleasure and creative pursuits."


On its website, Pellicer states:  "It is important for us to emphasize that everything we do, is and always will be, completely legal. While the federal government has not yet weighed in officially on how it will respond to Washington State’s Initiative 502, we are committed to building our business under the assumption that the federal government will permit us to operate in the states of Washington and Colorado, and eventually other states, as they adopt their own specific initiatives.  We believe the writing is on the wall that marijuana will become legal in the entirety of the US in the next decade or so."


However, Pellicer's trademark attorneys may have gone too far, at least if the U.S. Patent and Trademark Office has anything to say about it.

In a recent "Intent-to-Use" trademark application filed with the U.S. Patent and Trademark Office, Peter M. Lukevich, Esq. of Apex Juris PLLC, filed a sworn statement that Diego Pellicer has the bona fide intent to use the trademark "DOT BONG" in the next six months in interstate commerce, in connection with, among other things, "medicinal herb extracts" in International Class 5 and "retail store services featuring medicinal herb extracts, dried herbs, herbs for smoking, cigarette rolling papers, smoking pipes, lighters for smokers" in International Class 35.

The Trademark Examiner who was assigned to Pellicer's application has initially refused registration.  The Examiner cited various cases and laws providing that, to legally qualify for federal trademark/service mark registration, the use of the proposed mark in commerce must be lawful, and that any goods or services to which the mark is applied must comply with all applicable federal laws.

The Examiner noted that the federal Controlled Substances Act ("CSA") expressly prohibits, among other things, manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana and marijuana-based preparations.

In addition, the CSA makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia, i.e., “any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under [the CSA].”  21 U.S.C. § 863.

Therefore, the Trademark Office initially concluded that, because Pellicer's goods and/or services appear to be expressly prohibited by federal narcotics laws, the applied-for mark, as it is apparently intended to be used, would not be a lawful use in interstate commerce.

When we spoke with Pellicer's lawyer by telephone today, he noted that there are medicinal herb extracts other than illegal narcotics that could conceivably fall within Class 5. The Examiner had cited Pellicer's rather extensive website discussing the company's affinity for, and advocacy of, marijuana.  It is yet to be seen if the Examiner becomes convinced otherwise.

Furthermore, Pellicer's lawyer notes that there are discussions underway between Attorney General Eric Holder and the States of Washington and Colorado regarding how the federal authorities plan on handling the states' respective initiatives to legalize marijuana.  

Notwithstanding these ongoing negotiations, it appears relatively unlikely that the entire United States would witness a complete reversal of the decades-old policies criminalizing marijuana in the next six (6) months.

There is sketchy precedent for the issuance of trademark registrations on otherwise banned narcotics, and those precedents were short-lived. In 2005, the Trademark Office issued a registration for "MAUI WOWIE" in connection with a variety of "smoking articles" in Class 34.

However, in 2012, that trademark registration was apparently cancelled after the Registrant did not file an acceptable statement of use. 

It is worth noting that in 2005, the Trademark Office had apparently accepted a specimen of the applicant's use that looks like a medicinal herb prohibited by the CSA.

Friday, July 6, 2012

Is "CHIPOTLE" a Valid Trademark?

Chipotle chilis - meco variety
The word "chipotle" comes from the Nahuatl word chilpoctli meaning "smoked chili pepper," and is a smoke-dried jalape├▒o pepper.  It is a flavorful chili pepper used primarily in Mexican and Mexican-inspired cuisines, such as Mexican-American and Tex-Mex.  The word has widely been used generically to describe this type of flavor.


Enter Chipotle Mexican Grill, Inc., a chain of restaurants located in the United States, UK and Canada, specializing in delicious burritos and tacos, and known for its fresh, natural ingredients and “assembly-line” production method. 


Despite its enormous success and popularity (as long lines of customers can attest), the company continues to face an uphill battle in legally capturing the word “CHIPOTLE” as a trademark. When the restaurant chain applied for the word trademark in 2003, the US Trademark Examiner initially refused to register it, finding that it was "highly descriptive of the goods and/or services."  


However, the Examiner went on to invite the company to offer specific evidence of distinctiveness, including dollar sales under the mark, advertising figures, samples of advertising, consumer or dealer statements of recognition of the mark, and any other evidence that establishes the distinctiveness of the mark as an indicator of source.  The Examiner reminded the company that "the [Trademark] Office will decide each case on its own merits."


Subsequently in June 2008, the CHIPOTLE trademark application became a registration on the Supplemental Trademark Register.  The Supplemental Register is a purgatory for descriptive or otherwise problematic marks which may (or may not) mature to the Principal Register.A quick search on Google demonstrates that CHIPOTLE has clearly become associated with the Plaintiff's restaurants.  


But can the CHIPOTLE word ever qualify to become a legally protectable trademark in its own right?  It may depend on whether CHIPOTLE is deemed "generic" or "descriptive" by a court.  The distinction is subtle, but meaningful.  A generic mark can NEVER become a trademark.  Examples of generic words are CHICKEN, RESTAURANT and GRILL. However, a mark that is descriptive CAN become a trademark, if sufficient "distinctiveness is acquired" by a single company.  Here, generic/descriptive use by unauthorized third parties create a chicken-and-egg problem for the restaurant chain, which is stuck with creating "distinctiveness in the making."  


Can such a brand owner who is still trying to establish trademark rights meaningfully assert a viable legal claim?  For example, Subway sandwich shops offer a product called CHIPOTLE CHICKEN. This usage does not appear to be licensed, and has apparently not drawn a lawsuit (yet). However, when the Kroger Company launched a product called CHIPOTLE CHICKEN in supermarkets, it was summarily sued and chose to settle.  Such outcomes can help a Plaintiff demonstrate good faith efforts to police the marketplace, but they do not in and of themselves resolve the ultimate linguistic -- and legal -- matter.  If larger and more visible third parties (such as Subway) continue to use the word in a generic or descriptive (i.e., non-trademark) manner, CHIPOTLE may be confined to those marks that never escape their perpetual sentence in trademark purgatory.  Only time will tell.