I’m not much of a country music fan, but I listen to a tune every now and then. I’m not a moonshine fan either, so I won’t ruminate too much on moonshine or country music. Perhaps the two go together just as well as heavy metal and tattoos? But I do know a thing or two about trademark conflicts.

I just happened to be doing a search for “florida” and “oranges” on the U.S. Patent Office’s online trademark database (its a pretty nice tool and a wealth of information, and definitely a great place to start if you want to make sure a choice phrase is available for a trademark, hint hint). I pulled up a recently-filed application for the mark “FLORIDA GEORGIA LINE ORANGE AND PEACH MOONSHINE”. As soon as I saw this search record I was like “Huh, isn’t there a band named Florida Georgia Line? What would they think about this?”

There is a band; they are called Florida Georgia Line; and, oh yeah, they recently filed a trademark for the same name (and the characters “FGL”). The goods and services (as you might guess) cover sound recordings and entertainment services, namely live performances by a musical band. For all those concert goers that demand keepsakes, the band also filed for protection for select merchandise items like T-Shirts and Hats. They filed the trademark on February 13 of this year, but I know that the band has been using the name FLORIDA GEORGIA LINE far before that date (the band claims October 2009). The owner of FLORIDA GEORGIA LINE ORANGE AND PEACH MOONSHINE filed on June 11.

I'm a t-shirt maker at my other job.
We live in America (a wonderful enterprising nation filled with witty comedists and weekend-stand-ups), so it only seems natural that someone would come up with the idea of putting a choice phrase on a t-shirt in the hopes of striking it big and becoming the top seller on CafePress or at those shops in popular tourist shops where the merchandise all looks the same. I’m talking about phrases like “More Cowbell”, “Free Hugs”, and “Kind of a Big Deal”, all of which have become immortal as a result of their connection to some sort of event or pop-culture phenomenon.

That next big phrase could be connected with Anthony Weiner. In case you hadn’t heard, Anthony Weiner has done it again. Check out this trademark application filed two years ago for the mark RE-ERECT WEINER for t-shirts.

How clever is that! The trademark application has since been abandoned by the applicant because they failed to respond to an office action. The office action cited the fact that the trademark included the name of a person as an invalidating characteristic of the trademark (I wonder who that person could be…..) According to the USPTO, the mark identified Anthony Weiner, although no direct reference to Weiner was made in the trademark application. I guess the reasoning of the USPTO was that no one could possibly NOT get the obvious reference to Weiner based on the “erect” portion of the mark (whoever wrote this office action must have had a heck of a laugh) and Anthony Weiner’s flap (don’t read any innuendos into that last phrase, I beg you!). According to the well-supported argument of the USPTO, to use the “WEINER” name as a trademark would require the written consent of Mr. Weiner. Yeah right, like that was going to happen.

But, but…… what of my chances of making it big with this awesome phrase printed on every cheap $2 item known to man!? This gets us to the next portion of the office action, the portion dealing with the ornamental appearance issue. You see, for a phrase to be considered as a trademark, it has to, you know, actually indicate some source. It cannot be used as some sort of decorative phrase on merchandise. It has to say something about where the goods came from. This is why Anthony Weiner would have had to have given his consent to use of a phrase containing his name: people may have thought that the shirts came from him. So when you see a million other people on Café Press using phrases on all kinds of tchotchke items, the phrases on the shirts don’t have any trademark significance because nobody knows SalamanderShirts’ coffee mugs with “I Love N.Y.” from AlibabaTheGreat’s iPod cases bearing the same phrase. 

This shirt seems quite generic, doesn't it?
So how can a phrase like VOTE FOR PEDRO be trademarked? After all isn’t that phrase too merely ornamental and don’t you see it used on T-shirts and license plate frames and the like? Well, not quite. You see, when somebody encounters another person wearing one of those shirts, they probably put the shirt to a particular source. In this case, the source is the movie studio that produced Napoleon Dynamite. Nobody knows who the heck Joe Smith from Anywhere in the U.S. is who makes shirts on Cafe Press that say “Gun’s Don’t Kill People, I Do”. But even the "VOTE FOR PEDRO" mark faced opposition from the USPTO initially, on the basis that the phrase was not a trademark. The lawyers for 20th Century Fox wisely pointed out that even if the phrase was considered ornamental, it can still be registered as a trademark if it operates to identify a source. The phrase "VOTE FOR PEDRO" did bring to mind a source, the character in the movie Napoleon Dynamite. Indeed, this kind of source designation has found favor with the TTAB in the past,name in the decision of In Re Paramount Pictures Corporation where the TTAB reversed the USPTO examining attorney's refusal of the mark MORK & MINDY for decals for t-shirts. This choice phrase is worth highlighting:

"it is a common merchandising technique in [the U.S.] to license the use of character names and images as trademarks for a variety of products collateral to the product or services in respect of which the name or images are primarily known. Thus, while purchasers may be accustomed to seeing characters' names and images as part of the ornamentation of decals, T-shirts, and the like, they are also accustomed to seeing characters' names and images used as trademarks to indicate source of origin"

Besides, VOTE FOR PEDRO was tied to a very successful film that was critically acclaimed, mentioned numerous times in news reports, and grossed over $100 million between box office ticket sales and DVD sales. So there was likely significant secondary meaning between the phrase and the underlying film.

RE-ERECT WEINER, by contrast, is not tied to any particular source (except Anthony Weiner himself, which is why the USPTO demanded some sort of approval by Weiner for his name to be used as a mark). Perhaps the applicant for "RE-ERECT WEINER" would have been in better shape if he/she had applied for a different mark that wasn’t so obviously connected with Weiner, say the word “WEINER” itself (with the tagline Re-Erect being applied during the production of various items). However the applicant would still likely get an ornamental objection, if they were just using the word as a tagline on a shirt and not in the same way that HOLLISTER or ABERCROMBIE puts their names on the front of shirts. So trademark probably doesn't work (absent a showing of secondary meaning, that people equate the phrase with ONE source).

Thus the applicant would probably have to settle for copyright protection in the designs. Copyright protection in the phrase "Re-erect Wiener" itself is most likely out since the phrase is so short (no puns intended, get your mind out of the gutter!). This works out better for all those t-shirt entrepreneurs who want to make a buck quickly off their political satire because they can make their own shirts too with the phrase.

Sidenote: In case you thought you were going to pick up the phrase that is the subject of this blog post and run with it (no hurt feelings on my part, I don’t even have a Café Press site), it looks like somebody has already beat you to the punch. Somebody on Café Press is selling T-shirts, hats, and other tchotchke items with the phrase “RE-ERECT WIENER”. Nevertheless, the owner of this particular store has taken note of the proper I.P. protection for this particular creation by indicating that all designs are ©. 

Isn’t the opportunity to respond to an office action simply wonderful? Sometimes a response to an office action can be a prelude to a cancellation proceeding if the trademark owner cannot convince the USPTO that a trademark does not create a likelihood of confusion. Let’s take a look at how this works by examining a wonderful (no pun intended, I promise) case study.

Just this past week Nintendo filed its response to an office action issued by the USPTO against the trademark THE WONDERFUL 101, citing a likelihood of confusion with the trademark THE 101, owned by DirecTV. The USPTO cited  a likelihood of confusion as the basis for the rejection, specifically that DirecTV’s THE 101 mark was registered for providing on-line computer games; and providing a computer game that may be accessed network-wide by network users” (There’s more goods specified, but the listed goods are the only ones that were wonderfully relevant to this post, oh yes I did just say “wonderful” again!). Nintendo’s application claimed, among other things, video games (simply for reference purposes and in no way for trying to sell video games or turn you into a game nerd, here is a link to the underlying video game, a game involving a super hero called “wonder-red” who leads a pack of other super hero figures who have the ability to transform into menacing objects).

Nintendo used all the standard arguments that one might expect in responding to the rejection:  difference in appearance between 101 and WONDERFUL 101 (that the word “WONDERFUL” means something spectacular and this meaning is so much more exciting than simply “101”) and the fact that the word “WONDERFUL” itself is an awesome word because it is big and has been used without incidence by other trademark owners. (Okay, maybe that last argument isn’t standard across all other words because there is something truly wonderful about the word “WONDERFUL”, perhaps because it isn’t descriptive like saying “big wheel” for a video game about a spinning wheel).

But did Nintendo miss a wonderful opportunity to cancel DirecTV’s trademark?

Maybe, maybe not. One of the arguments made by Nintendo is that DirecTV isn’t even using the mark THE 101 in connection with video games anymore because the service for which THE 101 mark was used (websites for providing information about radio shows and video games) had since been rebranded THE AUDIENCE NETWORK. This essentially amounts to an argument for cancellation (without the formalities of the actual cancellation filing, which can be kind of expensive). The most typical scenario leading to a cancellation proceeding arises when an application for registration is refused on the basis of a prior registration. So, technically, if Nintendo had some significant evidence that DirecTV was no longer using the trademark, it could have simply filed a petition to cancel part of (or all of) DirecTV’s THE 101 mark.

So why a no-go on the cancellation option? Perhaps Nintendo is biding their time and hoping to dodge spending the money on launching a cancellation proceeding (The Wonderful 101 may be a low-budget game that Nintendo doesn’t care too much about, not like it cares about other games that include a short man in a red jumpsuit, at least). Or maybe Nintendo is worried about getting entangled in a fight with a powerful media company who may someday collaborate to distribute Nintendo games? Who knows. One thing that is certain: a cancellation may have allowed the WONDERFUL 101 mark to proceed to registration a lot more quickly than haggling with the USPTO (which no one really enjoys doing)?

For now, this is a valuable lesson about USPTO procedure and the importance of coming to the table prepared with lots of evidence that may be helpful later. If you are DirecTV and use of your mark on video games was important, well you could be facing a loss of your mark if a company like Nintendo wants their mark more desperately then you do.

Sidenote: Any why didn’t the USPTO issue a descriptiveness rejection against THE WONDERFUL 101 (or THE 101 for that matter) based on the connection between the mark and an underlying feature of the product/service? For Nintendo, THE WONDERFUL 101 is used in connection with a video game featuring 100 + 1 superheroes while DirecTV’s mark is used in connection with a platform tied to its channel 101. Both of these uses of the mark seem descriptive.

And that ladies and gentleman is response to likelihood of confusion rejections and cancellation arguments 101.