Trademark Registration

March 25, 2014, by Mandour & Associates, APC

Los Angeles – According to documents filed with the United States Patent and Trademark Office (USPTO), Proctor & Gamble has applied for trademark protection for the Old Spice whistle.  The application was filed on January 17, 2014 and describes the trademark as “a whistled tune comprising of the following notes: A3 sixteenth note, A3 sixteenth note, B3 eighth note, D4 eighth note, C#4 dotted eighth note, E4 sixteenth note, F#4 eighth note, D4 eighth note.” The USPTO has cleared the application for publication, making the famous jingle one of the relatively select few sound marks allowed federal trademark protection.

In comparison to the millions of word and design trademarks on file with the USPTO, sound marks comprise a very small portion of the total trademarks protected in the United States.  In 1971, the iconic “NBC chimes”, comprised of three notes became the first sound mark to be accepted and registered by the USPTO.   Other famous sound marks include Southwest Airline’s “You are now free to move about the county”, MGM’s roaring lion and the Sportscenter jingle.

Part of the reason so few sound marks exist has to do with the difficulty of the test for whether a sound qualifies as a protectable sound mark.  In the landmark Trademark Trial and Appeal Board (TTAB) case of In re General Electric Broadcasting Co., Inc., 199 USPQ 560 (TTAB 1978), the Board found that the test “depends on the aural perception of the listener which may be as fleeting as the sound itself unless, of course, the sound is so inherently different or distinctive that it attaches to the subliminal mind of the listener to be awakened when heard and to be associated with the source or event with which it struck.”

For Proctor & Gamble, which seeks to register the trademark as part of its Old Spice brand in connection with “Antiperspirants and deodorants for personal use; Bar soap; Body sprays; Body wash; Cologne; Hair conditioners; Hair shampoo; Shaving preparations,” the whistle will be the company’s first federally protected sound mark, assuming it clears the month-long publication period, which will begin on April 22.  One of America’s most longstanding companies, Proctor & Gamble has been around since 1837 when it was founded by a British soapmaker and British candlemaker in Ohio.  Proctor & Gamble acquired the Old Spice brand in 1990 from Shulton, Inc., which  began making products under the Old Spice name in the 1930s.

October 28, 2013, by Mandour & Associates, APC

Los Angeles –  The United States Patent and Trademark Office (USPTO) recently rejected a Trademark Application for the band name “The Slants.”   The Application was filed in 2011 in Class 041 for “Entertainment in the nature of live performances by a musical band” by a Portland area band.  After receiving two initial refusals, the named Applicant, Simon Tam, filed a Request for Reconsideration after Final Office Action.  That Request for Reconsideration was denied earlier this year, with the Examining Attorney providing a brief to back up his reasons for finding the Trademark unregistrable.

In denying the request, the Examiner cited Section 2a of the Lanham Act, which states that registration can be refused for any Trademark that “consists of or includes matter which may disparage or bring into contempt or disrepute persons, institutions, beliefs or national symbols.”  He went on to reference various impressions of the term “The Slants” and pointed out its use as “Offensive slang used as a disparaging term for a person of East Asian birth or descent.”  Concluding that the Trademark is disparaging to people of Asian heritage, he once again confirmed his refusal to register the mark.   As a last effort, Mr. Tam has filed an Appeal with the Trademark Trial and Appeals Board (TTAB) and is currently awaiting the results of that pending matter.

For his part, Mr. Tam has said that he finds the term “The Slants”  to be “neutral.”  As an Asian American himself with all of his bandmates also being of Asian descent, he stated that he would only be offended by the term “The Slants” if someone shouted it at him in a demeaning way.   He asserts that there are many words that could be used this way and points out that in his support behind the refusal, the Examining Attorney referenced no examples of actual Asian Americans who were offended by the term.  Rather, he notes that the term has not been used as a racial slur since the 1940′s and cites the oddity that the USPTO would label the term as offensive when members of the Asian American community themselves are seeking to trademark its use.

July 2, 2013, by Mandour & Associates, APC

Los Angeles – Superstar Washington Redskins quarterback Robert Lee Griffin III’s bid to trademark his nickname RG3 hit a roadblock when Research Group Three, Inc. filed an opposition to his trademark application, claiming it has been using the trademark RG3 since 1998.

Griffin formed Thr3escompany, LLC in 2012 to develop a label and start producing merchandise bearing his nickname RG3.  The Delaware-based company filed its trademark application for RG3 in January 2012 on an intent to use basis for use in relation to apparel.  Research Group Three filed its Opposition to this trademark on June 24, 2013, initiating proceedings in the Trademark Trial and Appeal Board.

Research Group Three, an Irvine-based corporation, primarily sells motorcycle suspension products but has also developed a line of apparel under the RG3 brand.  The company claims that it has been known by the acronym RG3 since its inception in 1998.  In its Notice of Opposition, the company argued that Griffin’s use of RG3 would confuse consumers into believing that his apparel was associated with the motorcycle company’s own gear.  It argued further that allowing Griffin’s trademark application for RG3 to register would significantly damage the reputation of Research Group Three.

Though the motorcycle products company claims that it has continuously used the mark RG3 on apparel since July 1999, it did not file a trademark application for use on apparel until January 2013.  As a result, that application has been stalled on the basis of Griffin’s previously filed RG3 application.  The examining attorney for the application wrote that Robert Griffin III and his nickname RG3 are so famous that a consumer would believe any use of RG3 is connected to the football star.

Research Group Three disagrees with this assessment, claiming it began using RG3 in 1999, well before Griffin began use of his nickname.  The company argues that it has prior use of RG3 and should therefore be granted the exclusive right to its use.

Thr3escompany has filed a number of other intent to use trademark applications in relation to its apparel brand, which are still pending.  These applications include GO CATCH YOUR DREAMS, WORK HARD STAY HUMBLE, and NO PRESSURE NO DIAMONDS.

April 5, 2013, by Mandour & Associates, APC

Los Angeles – Late last year Apple, Inc. filed a trademark application for IPAD MINI for the new smaller and sleeker version of its famous iPad.  Apple has already owned a registered trademark for IPAD since 2010.

On January 24, 2013, the United States Patent & Trademark Office issued a first Office Action rejecting the IPAD MINI Application, claiming that the trademark was merely descriptive.  The Examining Attorney found the word “mini” descriptive as “something that is distinctively smaller than other members of its type or class.”  The Examiner also rejected the IPAD portion of the trademark as descriptive, stating “…‘IPAD’ is descriptive when applied to applicant’s goods because the prefix ‘I’ denotes ‘internet, and the term “PAD” is descriptive of the goods because it “refers to a ‘pad computer’ or ‘internet pad device’”.

The refusal was somewhat surprising in that the U.S. Patent and Trademark Office previously allowed registration of the IPAD trademark.  Beyond the descriptiveness refusal, the specimen of use submitted with the application, a web page from Applicant’s catalog, was also rejected.  The Examining Attorney stated that the specimen “fails to include a picture or a sufficient textual description of the goods in sufficiently close proximity to the necessary ordering information, a web link for ordering the goods, and thus, appears to be mere advertising material.”

However, in a near complete reversal, on April 3, 2013, the Examining Attorney “superseded” the original Office Action and issued a Supplemental Office Action.  In the new Office Action, the Examiner withdraws both the descriptiveness refusal and the refusal of the specimen of use.  Now, with her apologies, she only requires a disclaimer of the term MINI apart from the trademark as shown.

It is unknown whether the Examiner made a second review of her first Office Action, if a supervisor reviewed the Office Action she initially sent to Apple, or if Apple’s counsel spoke to the Examiner requesting clarification of the Office Action.  Regardless, Apple will undoubtedly agree to disclaim the word MINI.

Apart from the descriptiveness and specimen refusals, eight different prior pending applications were cited against the IPAD MINI application on the basis of a likelihood of confusion.  So, unfortunately for Apple, it does not appear that IPAD MINI will be registering any time soon.

March 14, 2013, by Mandour & Associates, APC

Los Angeles – The Washington Redskins asked the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board to dismiss six petitions to cancel filed by a group of Native Americans, arguing that there is no evidence to support the group’s claim that a considerable percentage of Native Americans find the team’s name offensive.

At the hearing held last Thursday, the group of Native Americans argued that the NFL team’s name, former fight song, cheerleader outfits and halftime shows illustrate the team’s disparaging and offensive treatment of Native Americans.

The Washington Redskins’ countered that its name is associated with the team, football and the entertainment it provides at games and claimed that it has never used the name in order to perpetuate an ethnic slur or disparage Native Americans in any way.

The Redskins and the TTAB both pointed out that Native Americans would have had to have found the term Redskins offensive at the time the trademarks were registered in order for the Redskins trademark protection to be cancelled.  The six trademarks in question were registered between 1967 and 1990.

The Redskins argued that a group of five Native Americans claiming that the name is offensive is not evidence that the term is offensive to a significant amount of the Native American population.  Nor does the opinion of the five petitioners offer any evidence that Native Americans were offended by the name during the 23-year period when the trademarks were registered.

The Native Americans told the three-judge panel that the Redskins’ six trademarks they are petitioning fall under provisions of the Lanham Act that prohibit any trademark that is disparaging from being registered.

“We are focused on the word ‘Redskin’ and no other matter,” the Native American group argued.  “‘Redskin’ is an ethnic slur.  It is an epithet.”

Though the TTAB cannot prevent the team from using the name, the Native Americans hope that if the team loses trademark protection, it will be persuaded to rebrand the team.

The petitions, filed in 2006, are the second attempt to cancel the Redskins’ trademarks.  In 1992, a group of seven Native Americans petitioned to cancel the trademarks.  The TTAB granted the petition in 1999, but the U.S. District Court for the District of Columbia overturned it in October 2003 ruling that the petitioners did not have standing to complain because they did not take legal action until 25 years after the first trademark registered.

It could take up to a year for the TTAB to make a decision on the current petitions.

February 25, 2013, by Mandour & Associates, APC

Los Angeles – A U.S. Patent and Trademark Office panel recently ruled that the New York Yankees have rights to its nickname Evil Empire and can prevent others from registering the name as a trademark, even though the team has never attempted to register the trademark.

On February 8, the Trademark Trial and Appeal Board held that the company Evil Enterprises Inc. could not trademark BASEBALL’S EVIL EMPIRE, which it planned to use on clothing with the Yankees logo and a depiction of a devil holding a pitchfork.  The TTAB said that consumers are likely to be confused by the clothing and believe that the goods are associated with the Yankees.

The team has never attempted to trademark the phrase, nor has it used the name in connection with any goods or services, yet the TTAB said the name has become linked with the Yankees in the minds of the average American to the point that the team has inherent rights to the name.

The panel cited a number of news articles about the 27-time World Series champions that referred to the team as the Evil Empire and concluded “there is only one Evil Empire in baseball and it is the New York Yankees.”

Evil Enterprises originally filed a trademark application for BASEBALL’S EVIL EMPIRE in 2008, which the Yankees filed a notice of opposition to in 2009.

Evil Enterprises argued that it should be able to trademark the name as it refers to any sports team that is willing to spend huge sums of money to get the best athletes.  The board rejected this argument, saying that articles that refer to other sports teams as Evil Empires merely indicate the teams want to be in the Yankees position and be able to afford a roster of players that can win more championships.

The board also rejected Evil Enterprises argument that the trademark is a “spoof and parody” of the team and therefore will not cause confusion.

Despite the ruling, Evil Enterprises said it will continue to produce its Evil Empire apparel, saying that just because it cannot register the trademark does not mean it cannot use the term as a brand identifier.  The team has never shown any indication that it plans sue for trademark infringement over the use of the name on apparel.

Evil Empire was initially coined by Larry Lucchino, president of the Boston Red Sox, after Jose Contreras signed with the Yankees instead of his team.  Red Sox fans quickly adopted the nickname as a way of disparaging the Yankees.  The Yankees, however, saw the name as a reflection of the team’s success and embraced the name in several ways, including playing Darth Vader’s theme song from “Star Wars” at home games.

January 7, 2013, by Mandour & Associates, APC

Los Angeles – Apple is expected to make an offer on the IPHONE trademark in Brazil which is currently owned by IGB Eletrônica SA.  IGB Eletrônica SA released an Android-powered smartphone called the IPHONE Neo One under the company’s Gradiente brand this month.

Gradiente said that it will take all measures available to it to protect its intellectual property rights, as it does not believe the two brands can coexist in the same market.

Gradiente applied for the trademark in 2000, two years after Apple launched the iMac, but six years before Apple announced the launch of the iPhone at Macworld San Francisco.

Gradiente was granted the right to use the trademark on its smartphones in Brazil in 2008.  Brazil’s trademark office said that Gradiente requested the right to the trademark before Apple and therefore it has exclusive rights to the brand until 2018.

Despite being granted the right to use the trademark in 2008, Gradiente did not start using the trademark on smartphones until last week.  The company claims its focus had been on a corporate restructuring process, which it wrapped up earlier this year.

Gradiente said it registered the trademark because it expected “there would be a technological revolution in the world of smartphones with the convergence of voice and data transmission and reception via mobile Internet.”

The company, however, has not kept up with the technological revolution.  The phone’s appearance is similar to Apple’s iPhone, but it runs on the outdated 2.3 version of Android’s operating system.  The phone features a 3.7-inch touch screen, Bluetooth, Wi-Fi, 3G and a camera.

Gradiente said it currently does not plan to sell or license the rights to the brand, but it is likely that Gradiente and Apple will come to some agreement that will allow Apple to use the trademark, as Apple will not want to stop selling the iPhone in Brazil.

This is not the first time Apple has had international competition for its trademarks.  Due to a loophole in its contract, Apple was unable to procure rights to the iPad brand in China from Proview Technology before it launched the iPad.  Apple ended up paying Proview $60 million for the trademark.

The trademark in Brazil is not expected to bring that much money in, as the market is significantly smaller in Brazil than it is in China.  However, the company will likely still pay a substantial amount of money for the trademark, thanks to the popularity of the iPhone name.

October 24, 2012, by Mandour & Associates, APC

Los Angeles – The U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board recently shut the door on an attempt to cancel the federal registration for the trademark Grupo Pegasso, the name of a defunct Mexican band, rejecting the petitioner music company’s claims of fraud on the PTO.

OTH Enterprises Inc., which does business as Frontera Music, filed a petition to cancel Federico Estevan Vasquez’s federal registration for the trademark Grupo Pegasso and a related logo design. The Grupo Pegasso registration encompasses musical sound recordings and entertainment services, specifically live performances by a musical group.

Frontera Music alleged that it has priority of use for the trademark, as well as claims of likelihood of confusion, abandonment of the registered trademark, non-use and fraud in the procurement of the registration.

Vasquez, a member of the Grupo Pegasso band, left the group in 1985 and started a different band under the name Pegasso del Pollo Estevan, to make records sold only in Mexico.

According to Frontera, Vasquez’s alleged fraudulent conduct includes asserting that the registered trademark was in use in the U.S., and his submission of proof of his use of the trademark in commerce containing images of albums that were digitally altered.

Vasquez denied Frontera’s allegations, and said he has continuously used the trademark in interstate commerce in the U.S. He never granted permission to Frontera to use the trademark, and Frontera’s assignor is a former employee of Vasquez who is barred from using the trademark in Mexico, he said.

In view of the fact that Frontera’s predecessors in interest did not own any rights in the Grupo Pegasso trademark, Frontera could not acquire rights from any such predecessors prior to Vasquez’s first use, so Frontera’s priority and likelihood of confusion claims fail, the TTAB said.

Because Vasquez has continuously used the registered trademark in commerce since as least as early as the filing date of the application for registration, Frontera has not met its burden of proving prior use of the Grupo Pegasso trademark or abandonment of the mark, according to the board.

Frontera also failed to prove its allegations of fraud, since it did not provide conclusive evidence that Vasquez made false statements or submitted false specimens of evidence in support of its application, the board ruled. Even assuming that Vasquez’s statements were false, Frontera has not established that registrant submitted material statements with intent to defraud the PTO, it said.

September 19, 2012, by Mandour & Associates, APC

Los Angeles – Microsoft Inc. sent waves through the video game world on Monday when it issued a cryptic announcement saying it is renewing the trademark for the classic 1990s fighter game series Killer Instinct.

“With all due respect to our friends in the media who like to frequent trademark sites, we thought we’d break this one ourselves,” a post on Microsoft’s playxbla.com, the official site for its Xbox Live Arcade, said. “Our legal eagles have authorized us to say: ‘We have either renewed or refiled a trademark application in various jurisdictions.’” The post was accompanied by the classic Killer Instinct logo.

Sure enough, the U.S. Patent and Trademark Office shows a listing for the word trademark Killer Instinct filed on Microsoft’s part on Sept. 12. The trademark is registered for video game software and entertainment services providing video games online.

The trademark registration instantly sparked hopes in the gaming community that Microsoft will reboot the iconic fighting series for its Xbox 720 next-generation gaming system with a third installment of the game. Gaming websites also predicted Microsoft will reissue the original two entries in the series on XBLA.

Killer Instinct was developed by the game studio Rare and was originally put out in an arcade format, in addition to versions for Nintendo’s Super Nintendo and Game Boy gaming systems. It became highly popular quickly after its 1994 release, and inspired the arcade sequel, Killer Instinct 2, which Nintendo released in 1996. KI2 was released in a modified form for the Nintendo 64 gaming system later that year, under the name Killer Instinct Gold. Microsoft acquired Rare in 2002.

Numerous Rare executives have publicly said in recent years that while everyone at the studio would like to make Killer Instinct 3, no such game was in development. The classic fighting game model that thrived in the 1990s has ceded significant ground in popularity to the first-person shooter in the last decade. Microsoft, however, may now be hoping to cash in on a surging cultural wave of 1990s nostalgia.

July 23, 2012, by Mandour & Associates, APC

Los Angeles – Imagine a world where legions of humans are inflicted with a terrible virus that turns them into flash-eating monsters. Zombie fans were given reason to rejoice when Paramount Pictures filed trademark applications with the United States Patent and Trademark Office to register the enormously popular World War Z concept for use with video games. Evidently, gamers will be treated to games based on the wildly popular Zombie books by Max Brooks. Brooks’ original novel, The Zombie Survival Guide, was released in 2003 and quickly became a cult classic. The apocalyptic author’s second zombie novel, World War Z: An Oral History of the Zombie War, was released to critical acclaim in 2006 with movie rights quickly purchased in 2007.

The World War Z trademarks were originally filed back in May, 2011 for use on mugs, beverage glassware, waste baskets, figurines, key chains, statutes, various types of apparel, masks, Halloween costumes, action figures, board games and toy model hobby craft kits. The most recent applications, quite possibly in anticipation of the movie being released in June 2013, were filed July 10th. The trademark applications were filed in order to secure the trademarks for use with various video game platforms. The USPTO website further reveals that the World War Z trademarks were intended for use with “entertainment services, namely, providing online electronic games, downloadable electronic game programs, electronic game software for handheld electronic devices, video game cartridges and discs”.

Undoubtedly, a deluge of World War Z products will hit the market in the summer of 2013 when the movie is released. The movie will star Brad Pitt.

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