Trademark THIS

As a trademark attorney, you hear a lot of interesting stories.  Some are more interesting than others.   But one thing I constantly hear from people is the word "trademark" used as a verb.  Some examples might be:
"I want to trademark my business name" or "Yes, but my competitor hasn't trademarked it."
When people say this, they invariably are using the word "trademark" as a shorthand way of saying "register the mark."  That's OK.  The problem is that many people are under the misconception that unless the mark has been registered, no rights have been established.  I want to clear up that little misconception right now.
You can own trademark rights in a word, phrase or image -- or even a sound or smell -- that you use to market your goods or services.  If you stamp your skateboards with the made-up word PHRUNG, then you are establishing trademark rights to PHRUNG by selling the skateboards that are so marked.  If you file an application with the USPTO to register PHRUNG for skateboards, you can fortify the rights you have already established by obtaining federal trademark registration. 
Suppose you had been selling your PHRUNG skateboards for a couple of years, mostly though an on-line store, but you had never filed an application to register PHRUNG with the USPTO.  Now suppose your arch-nemesis, who has never sold a skateboard, decided he wanted to own the PHRUNG name for skateboards, and after searching the records of the USPTO he discovers that you have not registered the mark.  Can your arch-nemesis now apply to register PHRUNG for skateboards and pre-empt you from selling PHRUNG skateboards?  NO!
As long as you know about your arch-nemesis' trademark application, you can oppose it on grounds of likelihood of confusion and priority based on your use of the PHRUNG mark on skateboards prior to the date he filed his trademark application.  Assuming you can prove that, it should be enough for his trademark application to be refused. 
Even if your arch-nemesis was able to get PHRUNG registered because you were not paying attention to trademark application filings at the USPTO, his ownership of a federal trademark registration would still be subject to whatever rights you had already established to the PHRUNG mark prior to the time he filed his trademark application.  If, prior to the filing date of your arch-nemesis' trademark application, you were selling PHRUNG skateboards nationwide, except say in Arizona, then your arch-nemesis, despite his ownership of a federal registration, would not have grounds to force you to stop using the PHRUNG mark for skateboards anywhere other than Arizona. 
Are we clear on this now?  You get your trademark rights from use.  You enhance your trademark rights by registration.
What about intent-to-use applications, you say?  We will have to save that discussion for another day.

The Navy Responds (SEAL TEAM 6 Trademark Update 1)

In what may be a response to Disney's filing of three applications to register the phrase SEAL TEAM 6, the Navy, on May 23rd, filed its own application for SEAL TEAM as a collective membership mark for indicating membership in an organization of the Department of the Navy that develops and executes military missions involving special operations strategy, doctrine, and tactics. Although Disney filed its applications first, it would appear that in any trademark battle the Navy would have a strong argument that Disney's use of the SEAL TEAM 6 mark would cause consumers to mistakenly assume there is a connection between Disney and the Navy, or that the Navy has licensed use of the mark to Disney or otherwise is sponsoring Disney's use of the mark. Thus, I think if push comes to shove, the Navy will come out on top.

It is interesting to note that Disney is not the only one interested in claiming trademark rights to the SEAL TEAM 6 name. M. Z. Berger & Co., Inc. of New York filed an application on May 16th for the phrase SEAL TEAM 6 for "Clocks; Jewelry; Watches;" also on May 16th, RESCO Instruments of Coronado CA filed an application to register the term SEAL TEAM 6 for "Chronographs as watches, Dials for clock-and-watch-making, Straps for wristwatches, Watch bands, Watch cases, Watch straps, Watches, Wristwatches;" on May 20th Justice is Done, LLC of Carson City, NV filed an application to register SEAL TEAM 6 for "commemorative coins; key rings of precious metals; cufflinks; jewelry; wall plaques made of precious metal;" and John Brokaw of Richmond, CA filed an application to register SEAL TEAM RAIDER 6 for "Action figure toys" on May 17th.

People should understand that there may be trademark liability consequences stemming from using a trademark that uniquely identifies another person or institution. Does SEAL TEAM 6 uniquely identify an organization within the U.S. Navy? How would you decide?

Looming battle for SEAL TEAM 6 trademark ahead?

After a national tragedy, years of dogged intelligence gathering and a heroic mission by the Navy seals, some people apparently just want to make a buck out of the story of Osama’s Bin Laden’s demise. It should not come as a surprise that five new trademark applications for TEAM 6 or SEAL TEAM 6 have been filed since news broke of the President’s gutsy call and the successful and daring raid on Osama bin Laden’s compound in Abbottabad. I knew as soon as the news broke that some folks must already be planning the motion picture.

On May 3rd, three applications to register SEAL TEAM 6 were filed by Disney Enterprises, Inc. of Burbank, California. These applications cover clothing, footwear and headwear; toys, games and playthings; gymnastic and sporting articles (except clothing); hand-held units for playing electronic games other than those adapted for use with an external display screen or monitor; Christmas stockings; Christmas tree ornaments and decorations; snow globes; and entertainment and education services. I don’t know about you, but I sure would love a SEAL TEAM 6 Christmas stocking chock full of toys, games and playthings - and what could be nicer or more festive than SEAL TEAM 6 Christmas tree ornaments and decorations – to bring out the peaceful and joyous good-will-toward-man feeling of the holiday? A tree decorated with SEAL TEAM SIX ornaments would go very nicely while listening to Haydn’s Messiah or the Nutcracker. I think Disney is going to have a really big success with this.

But there is competition. On May 6th, The Outdoor Recreation Group, of Los Angeles, California, filed an application to register the mark TEAM 6 for backpacks, duffle bags, gun cases, shooting accessories, cases; and clothing, namely, jackets, pants and shirts. Do you think Disney might oppose the Outdoor Recreation Group’s application on the basis of priority and likelihood of confusion? It seems that Disney might win in an opposition against Outdoor’s application so far as the clothing goes, but Outdoor might prevail when it comes to the gun cases and shooting accessories – I don’t know that there is a strong related goods argument here – although maybe Disney wins because its application covers “sporting articles.” But anyway, some holiday season soon, you might – if you’re very lucky, find yourself seated near your tree decorated tastefully with Disney Enterprises SEAL TEAM 6 ornaments, opening a Disney SEAL TEAM 6 stocking stuffed with Outdoor Recreation Group’s TEAM 6 brand shooting accessories! This is perhaps too much to hope for, but still one can dream.

But wait – there’s more! On May 10th , MetroGames US, Inc. (A Delaware corporation with an address in Mountain View, California) filed an application to register TEAM 6 for Entertainment services, namely, providing on-line computer games. Disney has applied to register SEAL TEAM 6 for, among other things, games. It is possible that Disney may oppose MetroGames’ application, arguing that TEAM 6 for on line computer games is likely to cause consumer confusion with Disney’s use of SEAL TEAM 6 for games. But personally, I hope not. The more, the merrier. After all, what could be better after finding the TEAM 6 shooting accessories in the SEAL TEAM 6 stocking than going online to play some TEAM 6 computer games. I wonder what’s next – will a fast food chain introduce the SEAL TEAM 6 BURGER? Or better yet – a national sandwich chain might jump on the bandwagon and introduce the SEAL TEAM 6 Hero. I have to wonder how the actual SEALs – or for that matter the Navy - will feel about Disney owning the SEAL TEAM 6 trademark. Could be some interesting trademark battles ahead.

Proceed with Caution

Read my article "Proceed with Caution" about trademark enforcement strategy, published in the May issue of Intellectual Property Magazine. A copy of the article is accessible on my web site at www.tmwlaw.com.

Winds of Change in U.S. Patent Law

Read my article about changes in U.S. patent law in the March 2011 issue of Intellectual Property Magazine - you can find it on my my website at www.tmwlaw.com.

Fried Chicken Trademark Fight

With everything else there is to worry about in this world, you would think people could avoid fighting over who owns the right to use the name of a famous president as a trademark for fried chicken restaurants. But you would be wrong. As reported in the New York Times, there is a battle going on for the KENNEDY mark in connection with fried chicken restaurants -- http://www.nytimes.com/2011/02/14/nyregion/14chicken.html?_r=1&scp=1&sq=kennedy%20fried%20chicken&st=cse
Mr. Abdul Haye owns the registered mark KENNEDY FRIED CHICKEN, Reg. No. 2994240, for restaurant services. The registration issued September 13, 2005, which means it is now in the filing period for the declaration of continued use. According to the New York Times article, the KENNEDY fried chicken brand "has spawned hundreds of imitators." The article states that Mr. Haye is sending out hundreds of letters to other parties who are using the KENNEDY name demanding they pay him a monthly franchise fee. There are a few problems that Mr. Haye should be aware of here.
First, supposing some of the recipients of the letters are willing to comply, there will need to be some mechanism put into place to ensure that the owner of the trademark exercises adequate supervision over the nature and quality of the services - otherwise there could be a naked licensing issue.
Second, it seems that some of the letter recipients may assert the defense of laches - one has to wonder if Mr. Haye may have waited to long to assert his rights.
Third, as the NYT article indicates he is sending the letters "to Kennedy outlets across the country," it would seem that some of the other users of the name may claim they have common law priority in their market area, while others may claim that there is no likelihood of confusion because Mr. Haye does not operate in their locality and has no present plans to begin operations there.
Long story short, although Mr. Haye enjoys the benefits of a federal registration and the legal presumptions that go with it, he may have a hard time if he has to go to court against some of the other KENNEDY outlets. If he really is sending out hundreds letters he may be biting off more than he can chew (sorry). Let's hope that Mr. Haye is aware of the necessity to file maintenance documents with the USPTO between the 5th and 6th anniversary of his registration date - otherwise he may miss the deadline to file his section 8 declaration and lose his registration.

The Gift that Keeps on Giving

It has come to my attention that Sarah Palin has filed an application with the USPTO to register SARAH PALIN as a service mark for "Information about political elections; Providing a website featuring information about political issues" in class 35 and "Educational and entertainment services, namely, providing motivational speaking services in the field of politics, culture, business and values" in class 41. As of this writing there is an office action outstanding in which the trademark examining attorney has noted that the class 35 specimens are unacceptable because they do not show use of the applied-for mark in connection with any of the services specified in the application. According to the office action "the specimen submitted for 'Information about political elections' is a news story on the Fox® Network about Ms. Palin" and the specimens submitted for "Providing a website featuring information about political issues" are postings on Facebook®. Thus, "the specimen does not show use of the mark as 'providing a website featuring…'. Rather the proposed mark merely appears as a posting name." Judging by these specimens, it seems that Palin or her attorney may not completely understand what constitutes use of a word or symbol as a trademark.
An application to register BRISTOL PALIN has also been filed, for "Educational and entertainment services, namely, providing motivational speaking services in the field of life choices" in class 41. The "field of life choices?" An interesting field - the USPTO may require some clarification on that. There is also an office action outstanding against this application because the specimen does not show the applied-for mark in actual use in commerce. People generally just do not understand the specimen submission component of the trademark application. Palin and her daughter have a lot of company in stumbling over this requirement. Although both these applications have been initially refused for failure to provide an acceptable specimen, the Palins' attorney should be able to overcome the refusals.
A small thank you is due to John McCain for bequeathing to the American people this gift that keeps on giving. I have my doubts that Palin provides any "educational services." But she does provide "entertainment services."