Kawhi Leonard Trademark Case Study: Can An Ordinary Phrase Serve As A Trademark?

Can I Register A Trademark For An Ordinary Phrase? Yes, absolutely! 

As I’ve said before, anything can serve as a trademark so long as it distinguishes your goods and services from another company’s goods and services. 

Here we have Kawhi Leonard applying to register a trademark for the phrase WHAT IT DO BABY for various items of athletic clothing. We know he hasn’t begun use of the trademark in commerce, because it is filed using the “intent to use” trademark application filing basis. 

It’s very common to file a trademark application before use of the trademark in commerce has started. Trademark applicants often do this because they have a great idea for a brand, and they don’t want another trademark applicant to register something “confusingly similar” before their use has begun. So to prevent someone else from thwarting their trademark aspirations, the wise applicant locks down the trademark by filing an application based on his “intent to use” the trademark in commerce. Actual use of the trademark will begin as soon as the details of the business are ironed out, and the business is up and running. 

This means that at some point in the future, he will have to prove use of his trademark on actual goods and services  before he can have his trademark application mature into a trademark registration. He’ll have to show the trademark examiner how he’s using the trademark on his athletic clothing, and when the proof of use — also called a trademark specimen — is submitted, the trademark examiner will look at it to make sure that the trademark specimen shows actual, proper use of the trademark on the goods or services listed in the trademark application. If the trademark applicant can’t show proper use, then the trademark application is rejected, and the Applicant has to respond to the rejection before the trademark registration will issue. 

If the trademark applicant does get a trademark rejection — also called an “Office Action” — then there is an opportunity to respond to the trademark rejection by making an argument and submitting evidence to support the issuance of the trademark. After a final rejection is issued, a trademark applicant can also appeal a rejection, and make more arguments in favor of the issuance of the trademark. 

Remember that trademarks don’t exist in the abstract — they are ALWAYS used in conjunction with goods and services. If you are not using the trademark on goods or services, then you don’t have a reason to even have a trademark in the first place. Remember the whole reason for trademarks is to distinguish various goods and services in the marketplace. So if you don’t have goods and services that you are offering to the public, then you don’t have a need for a trademark.

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Can I Apply to Register a Trademark For a Brand That I’m Not Using Yet?

People often ask me if they can register a trademark for a product that will come out in the future, and the answer is yes, absolutely. 

In fact, in the age of aggressive online copycats, it’s a great idea to register a trademark for a future product. You might do this for a number of reasons:

You haven’t finished developing the brand yet, and you want to protect it while your creative team finishes the marketing or launch collateral and creatives

You’re still in the development and testing phase for a product, and you aren’t ready to use it yet on your product, but you want to make sure that when you are ready to market and sell your product, that someone else hasn’t snatched the brand out from under you.

You plan on a whole series of products using the same name in the future, and you want to ensure that the name remains available for those future versions of the product. 

You can do this by filing a trademark application based on your “intent to use” the mark in commerce at a future date. If you have a “bona fide” intent to use the mark in the future, then you can file a trademark application and prove your use later, when you actually begin using the mark. 

The trademark process looks virtually the same, except that you don’t show your use at the time the trademark application is filed, you show it later. The application is submitted, and the mark is published for opposition. If no Opposition proceeding is filed by a third party, then the trademark Examiner issues a “Notice of Allowance.” This Notice of Allowance triggers a 6 month deadline, by which the applicant must either 1) prove that they are using the trademark “in commerce”, or 2) extend the time to file a Statement of Use by another 6 months. 

This time for extending the time to file the statement of use may be extended for up to 3 years after the Notice of Allowance is issued. So you have up to 3 years to prove use of the mark, just by paying a fee and filing an Extension to File a Statement of Use. 

This “intent to use” trademark application is as close as you get to “squatter’s rights” in the trademark world. Note that you DO eventually have to prove use, and you can’t hold the mark in reserve for perpetuity, only for 3 years. And you do have to have a bona-fide intention to use the mark in commerce, so you can’t do this for a mark which you have no intention of actually using. 

I’m on Facebook! “Like” my facebook page,  to be notified every time I go LIVE. Do you have trademark questions? Message me on the Trademark Doctor Facebook page, and I’ll answer your questions on a future Live video.

Contact Dallas, Texas trademark attorney Angela Langlotz today to get started on a trademark application for your valuable brand.

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Shapes As A Trademark: Little Trees Air Fresheners

A distinctive shape can serve as a trademark! I got a call yesterday that made me think of the little tree air fresheners — my aunt always had one of those things hanging in her car, so those bring back childhood memories for me — but more importantly, they make a great case study for shape as a trademark. 

Remember that anything distinctive can serve as a trademark — a color, a word, a phrase, a shape, a sound — so long as it serves to distinguish your goods and services from other people’s goods and services. Today, let’s talk about shape as a trademark. 

I’ve covered this subject before, and discussed Toblerone, and Coke and their uses of distinctive shapes in their packaging. In the case of Toblerone, the product itself is the distinctive shape, and we have the same situation here in the case of the LIttle Trees air fresheners. 

Shape can serve as a trademark when the shape as to the goods is distinctive and non-functional. The Little Trees brand air freshener distinctive shape is capable of serving as a trademark, because the shape itself is non-functional. In other words, the fact that the air freshener is in the shape of a tree is not part of its function; it could be in the shape of anything, really. So they arbitrarily chose the shape of a conifer to be their trademark. They could have chosen any shape, be it realistic or a representation of a real object, to be their trademark. Their brand name is LITTLE TREES, so they chose to use a tree. 

Could another company make a tree in a different shape, such as the shape of an oak tree, and call it something other than LITTLE TREES and have that trademark be allowed? Well, perhaps. I think that such a move would be very likely to result in an Opposition proceeding by Little Tree, and perhaps a lawsuit. 

Little Tree has been using this trademark since 1952, and I think it’s safe to say that the LITTLE TREE word trademark and design trademark are so famous that a consumer would likely be confused when they find a tree-shaped air freshener in the store, even if the word mark associated with the air freshener were different than the LITTLE TREE word mark. The fact that the air freshener is shaped like a tree might cause a reasonable consumer to wonder if the Little Tree people had added a “deciduous” line to their air freshener mix. 

As with all famous trademarks, I recommend that everyone stay far, far away from this mark, for any automobile-related fragrance or home fragrance products. Large companies with well-known brands are very aggressive about protecting their brands from knock-offs, and won’t hesitate to sue to enforce their exclusive rights to their brands. So if your brand idea is to make a parody of a famous mark, or “play off of” a famous mark, you’re flirting with disaster in the form of a trademark infringement lawsuit for getting a little too close to someone else’s trademark.

I’m on Facebook! “Like” my facebook page,  to be notified every time I go LIVE. Do you have trademark questions? Message me on the Trademark Doctor Facebook page, and I’ll answer your questions on a future Live video.

Contact Dallas, Texas trademark attorney Angela Langlotz today to get started on a trademark application for your valuable brand.

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What Is A Trademark Specimen?

A specimen is the proof of use that you submit along with your trademark application to show the Examiner how you are using the mark. It’s important to submit a proper specimen, because if you do it wrong, your trademark application will be rejected. 

The most common problem that I see with specimens is that the use that is shown on the specimen doesn’t match the goods and services that are listed in the trademark application. This could be because the applicant is using the trademark wrongly, or because the applicant filed the application and didn’t properly describe the goods. 

Mis-describing the goods themselves on a trademark application (a preventable but very common mistake by people who don’t know what they are doing) almost always results in the specimen being wrong. Why? Well, because the trademark applicant didn’t describe the goods properly in the trademark application, it means that the description of the goods will not “match” the actual, real-life trademark usage. The usage will be different than the description, because the wrong description was used for the goods. 

This misdescription can be fatal to the trademark application, because once the trademark application is submitted, the description of the goods can’t be materially altered. We can subtract goods and services, but we can’t add or alter the description of goods and services to be something completely different. 

What is the specimen supposed to look like? Well, that depends on the goods listed in the trademark application. But in general, the trademark examiner will be looking at the use submitted by the applicant to ensure that the use shown matches the goods or services claimed in the application. So depending on the goods or services on the application, the specimen will look different. 

For example, if you’re submitting a trademark application for clothing in International Class 025, then you would submit a specimen showing a hangtag for the clothing that has the trademark on it, or perhaps a box or other packaging for the clothing with the trademark applied to the box or packaging. 

If, on the other hand, your claimed goods and services are business consulting services, then those sorts of services don’t have a hangtag. The trademark specimen will look completely different. For consulting services, a proper trademark specimen might be an invoice showing use of the trademark on the invoice. Or it might be a screenshot of a website offering the services. 

The important thing is to have the trademark specimen show use of the trademark in conjunction with the goods or services listed in the trademark application. So long as the trademark examiner can see the trademark properly used with the goods or services listed in the trademark application, this satisfies the requirement that the trademark applicant show “use” of the trademark in commerce. 

I’m on Facebook! “Like” my facebook page,  to be notified every time I go LIVE. Do you have trademark questions? Message me on the Trademark Doctor Facebook page, and I’ll answer your questions on a future Live video.

Contact Dallas, Texas trademark attorney Angela Langlotz today to get started on a trademark application for your valuable brand.

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Trademark Snooping: A Future Reality Television Series?

People often ask me if they can register a trademark for a product that will come out in the future, and the answer is yes, absolutely. 

In fact, in the age of aggressive online copycats, it’s a great idea to register a trademark for a future product. You might do this for a number of reasons:

You haven’t finished developing the brand yet, and you want to protect it while your creative team finishes the marketing or launch collateral and creatives

You’re still in the development and testing phase for a product, and you aren’t ready to use it yet on your product, but you want to make sure that when you are ready to market and sell your product, that someone else hasn’t snatched the brand out from under you.

You plan on a whole series of products using the same name in the future, and you want to ensure that the name remains available for those future versions of the product. 

You can do this by filing a trademark application based on your “intent to use” the mark in commerce at a future date. If you have a “bona fide” intent to use the mark in the future, then you can file a trademark application and prove your use later, when you actually begin using the mark. 

The trademark process looks virtually the same, except that you don’t show your use at the time the trademark application is filed, you show it later. The application is submitted, and the mark is published for opposition. If no Opposition proceeding is filed by a third party, then the trademark Examiner issues a “Notice of Allowance.” This Notice of Allowance triggers a 6 month deadline, by which the applicant must either 1) prove that they are using the trademark “in commerce”, or 2) extend the time to file a Statement of Use by another 6 months. 

This time for extending the time to file the statement of use may be extended for up to 3 years after the Notice of Allowance is issued. So you have up to 3 years to prove use of the mark, just by paying a fee and filing an Extension to File a Statement of Use. 

This “intent to use” trademark application is as close as you get to “squatter’s rights” in the trademark world. Note that you DO eventually have to prove use, and you can’t hold the mark in reserve for perpetuity, only for 3 years. And you do have to have a bona-fide intention to use the mark in commerce, so you can’t do this for a mark which you have no intention of actually using. 

Find me online at https://trademarkdoctor.net. Leave questions or comments on my Facebook page at http://link.trademarkdoctor.net/FB and I’ll answer them in a future LIVE video. “LIKE” my Facebook page to be notified every time I go LIVE.

I’m on Facebook! “Like” my facebook page,  to be notified every time I go LIVE. Do you have trademark questions? Message me on the Trademark Doctor Facebook page, and I’ll answer your questions on a future Live video.

Contact Dallas, Texas trademark attorney Angela Langlotz today to get started on a trademark application for your valuable brand.

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Is Parody in Advertisements Trademark Infringement?

A viewer asked me about a video that he had seen online, wherein Subway sandwich chain poked fun at rival McDonald’s burgers, using a video that seemed to use the McDonald’s “Golden Arches” logo. I discussed parody on an earlier video, which is why this question came up again. Let’s have a look at the video first, and then analyze the video.

By the way, my use of the video here for teaching purposes falls under the “Fair Use” exception to copyright law, so it doesn’t violate the copyright of Subway Sandwiches.

So recall the definition of parody that the courts have given us:

[P]arody’ is defined as a simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner … A parody must convey two simultaneous — and contradictory — messages: that it is the original, but also that it is not the original and is instead a parody.” People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359, 366 (4th Cir. 2001)

In the video, we see the ‘Golden Arches’ trademark (arguably) being used as if it were a heart monitor, beating like a heartbeat and accompanied by the word “burger.” The “heartbeat” eventually flatlines, as if the subject being monitored suddenly died. Then the video asks, “Is your burger routine feeling a little flat?” and then goes into an enticing array of images intended to make the choice of a Subway sandwich infinitely more interesting. During the time the “burger EKG is going on, Subway is careful to note, in small script at the bottom of the screen “Not Affiliated With McDonald’s,” presumably to ward off any temptation by MickeyD’s to accuse them of trademark infringement.

I think that this definitely is parody, and not trademark infringement. Using the definition supplied by the courts, it does juxtapose an irreverent representation of the trademark — the “Golden Arches” as an EKG output — with the idea that McDonald’s is an everyday routine, as quotidian as your heartbeat. It uses the “Golden Arch” trademark as the EKG to poke fun at the “heartbeat of McDonald’s,” suggesting Subway’s product as an alternative to the stale idea of a hamburger for lunch, inviting the viewer to “Take a Break From The Burger.” Rather than attempting to mislead the consumer into believing that what is being offered is sourced from McDonald’s, Subway is distinguishing themselves from McDonald’s as a fresh alternative. This contrast and clear poking fun at McDonald’s is what makes this a parody rather than trademark infringement.

I’m on Facebook! “Like” my facebook page,  to be notified every time I go LIVE. Do you have trademark questions? Message me on the Trademark Doctor Facebook page, and I’ll answer your questions on a future Live video.

Contact Dallas, Texas trademark attorney Angela Langlotz today to get started on a trademark application for your valuable brand.

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Taco Casa vs. Taco House: The Doctrine of Foreign Equivalents

One of the most common things that trips up trademark applicants and inexperienced attorneys alike is the rule that says that all foreign words contained in a trademark must be translated into English language so that they can be compared with any existing trademarks in the trademark registry. This rule is called the “Doctrine of Foreign Equivalents.” Once translated, the words are then evaluated in light of the trademark record, to see if they are “confusingly similar” to any existing trademarks, and are therefore unregisterable.

If you go with one of those cheapie filing services, it’s very likely that any foreign equivalents to your proposed trademark will not be discovered, because the “budget” filing services only do what is called an “exact match” search. This means that they will do a search on your exact mark by typing it into the search box in the Trademark Electronic Search System (also known as TESS) and if your exact mark does not bring up any results, they will file your trademark application.

This sloppy searching usually results in a rejection being handed down to the trademark applicant about 4 months later, along with the loss of the filing fee, since the “confusingly similar” objection cannot be overcome; the trademark application had zero chance of issuance, because it never should have been filed in the first place. And the poor applicant has spent the last 4 months investing and promoting in a brand that now must be abandoned due to the conflict with the existing registered trademark.

For example, let’s suppose that there is a registered mark for TACO CASA for “restaurant services” in International Class 043. A new restaurant is proposed, named “Taco House,” and the owner works out the branding and applies to register the trademark. He is short on funds, so he uses a cheap filing service. “After all,” he thinks, “how hard can filing this paperwork be?” The filing service performs an “exact match” search, and, finding nothing, files the trademark application.

Four months later, an Office Action is received, denying the mark on the basis of a previous registration for TACO CASA, which was registered 13 years prior to the date that the current application was filed. TACO CASA, while not well-known, does business in Kansas City, Missouri, and pulls in business from across the border in Kansas as well, hence they are eligible for a trademark based on their interstate use of the mark in commerce.

The Applicant, now worried because he has a lot invested in his brand, goes to see a trademark attorney, Office Action in hand. She gives him the bad news: The Doctrine of Foreign Equivalents means that his mark is considered EXACTLY the same as the current registration, so there is no way to argue against the Examiner’s rejection. He’ll have to abandon his use, because the owners of the TACO CASA brand have nationwide rights due their prior registration.

Frustrated but not defeated, he vows to “do it right” next time, and hire one of those expensive attorneys; for now, though, he has to come up with about $10,000 for a rebrand of his business: New signage, new business cards, new uniforms, new graphic design, new printed napkins, and new social media accounts. He wishes he had known better, but live and learn.

I’m on Facebook! “Like” my facebook page,  to be notified every time I go LIVE. Do you have trademark questions? Message me on the Trademark Doctor Facebook page, and I’ll answer your questions on a future Live video.

Contact Dallas, Texas trademark attorney Angela Langlotz today to get started on a trademark application for your valuable brand.

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