​When you try to capitalize on a high-profile event by filing a trademark application that makes a clear reference to the event, you might be surprised to learn that the application stands a likelihood of being refused registration. This was the fate of an application filed by an individual for the mark KAVANAUGH BEER filed for spirits in class 33.
 
In trademark law, there are certain marks that cannot be registered. These include “immoral, deceptive, or scandalous matter” as well as marks which “falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols”. The reasons for restrictions against these types of marks seems simple enough: it all goes back to the main aim of the trademark statute to prevent instances of consumer confusion. In some cases, determining whether a mark falsely suggests a connection with a person might be fairly obvious (for example, Beyonce Citrus for candles). Other marks may not clearly make a reference to a person if the mark is a common name and there is no indication that the name as, used in the particular mark, is not clearly intended to refer to that person. The USPTO recently demonstrated how it might make a decision on whether a mark is connected to a particular person, evaluating the application for KAVANAUGH BEER in connection with, what else, alcoholic spirits.
 
In an office action refusing registration for KAVANAUGH BEER, the examining attorney concluded that the mark was likely to suggest a connection with one Brett Kavanaugh. That would be Brett Kavanaugh, the most recent U.S. Supreme Court Justice appointed by President Trump (in case you weren’t in the loop on that one). Citing the principal that a mark cannot consist of or comprise matter falsely suggesting a connection with a person, the examining attorney concluded that the mark KAVANAUGH BEER would “unmistakably” point to Justice Kavanaugh. In making such a conclusion, the examining attorney relied on the following four factors:

1. KAVANAUGH BEER is the same as, or a close approximation of, the name or identity used by another person (this factor seems to apply broadly to many different marks involving names of people, especially because names like KAVANAUGH are incredibly common).
2. KAVANAUGH BEER points uniquely and unmistakably to Brett Kavanaugh (apparently the examining attorney relied on a series of news articles discussing Justice Kavanaugh’s Senate confirmation hearing where his consumption of alcohol during high school and college took on special interest; this would probably be a closer call had there not been such a media buzz regarding the topic of Justice Kavanaugh and consumption of alcohol).
3. Brett Kavanaugh is not connected with the alcoholic spirits proposed to be sold under the mark.
4. Brett Kavanaugh’s fame or reputation is of such a nature that a connection with him would be presumed when used with spirits (again, this is a factor that was likely precipitated by the buzz created by media attention to the topic of Justice Kavanaugh’s consumption of alcohol or, as Justice Kavanaugh put it himself at the time, “I like beer”).

 
The refusal of the KAVANAUGH BEER application highlights the extent to which the USPTO can rely on press articles to demonstrate that a particular surname, which might otherwise not be rejected. Taking a different example involving another Supreme Court Justice (and also involving a type of spiritous drink), Antonin Scalia, an application for the mark SCALIA for wine was also refused. This time, however, the mark was refused because “Scalia” was such a common surname. Although the trademark office cited the fact that Antonin Scalia was a U.S. Supreme Court Justice, and the American public would likely recognize his name as such, there was no evidence cited that Justice Scalia had any relation to wines or spiritous liquors (likely because there wasn’t any given that the topic did not arise during Justice Scalia’s confirmation hearing).
 
One interesting scenario would be if the applicant who filed an application for KAVANUGH BEER was also named Kavanaugh. Although such an application could also be rejected on the basis that Kavanaugh is merely a surname (and a common one at that), the applicant could possibly overcome the objection by showing that it has used the name for a period of time that consumers associate the name with the applicant. Such showings are sometimes difficult to make because the evidence provided may not be substantial enough or it might show that consumers associate some other identifier with the company and not the mark at issue in the application. Even if the applicant was able to show acquired distinctiveness in their particular mark, the application could still be refused for its tendency to draw a false connection to Brett Kavanaugh.
 
Bottom line: filing an application to take advantage of a popular story is likely to fail for the very reason that it seeks to take advantage of the fame created by the false story. 

\ In this day and age of fast-paced innovation, the question of “what’s the next big thing” often hounds even the least-interested of onlookers. While only the most rabid of technologists strive to have the deepest understanding of the latest and greatest (so much so that they stop at nothing to try and read the next new feature), the technologically unconnected still like to look ahead and figure out whether they will need to spend $600 on technology that may, in the next few months, be completely outmoded. Fortunately, for those that live and breathe on up-to-the-minute information on their biggest tech crush’s new innovation, there is a tool that you can navigate to find just such valuable tidbits: the USTPO database of registered and pending trademarks. 

And one of the biggest darlings when its comes to USPTO tea leaf reading habits seems to be Apple. One of the greatest sources for this information is Patently Apple, but the usual news sources typically cover this information too when there is some pending release. 

It seems like it has always been an uphill battle for businesses in the marijuana business. Skating on the precipice of state laws, on one side, that may allow for widespread distribution of marijuana in the state, and federal laws, on the other, which criminalize such sale across state lines, owners of these businesses must tread carefully in finding the right way to expand their businesses. One obstacle facing so-called “potrepreneurs” is how to rely on certain legal protections that businesses in non-illicit fields use to stop potentially unfair business practices. Trademark registrations are one important protection, and one that businesses in the retail sector particularly lean on, especially in a product market where the products are fungible. A recent decision by the Trademark Trial and Appeal Board (TTAB) demonstrates that people in the marijuana business will need to be more strategic in how they protect trademarks.

In the case, the TTAB affirmed the United States Patent and Trademark Office’s decision to refuse registration for the mark HERBAL ACCESS for “retail store services featuring herbs” on the grounds that the mark is used in connection with a substance that is illegal under federal law. The TTAB arrived at this conclusion even after the applicant (a Washington state company) argued that the trademark application should be allowed because marijuana is legal to sell in state of Washington.

The pro-activeness of certain pop-culture icons (or, as will be apparent a little later on in this post, “imminent” pop-culture icons) never ceases to amaze me. The trademark aspirations of many of these starlets takes the whole go-getter ethos to a whole new level. Just in the past few years, we’ve seen such tendencies on full display through Taylor Swift’s campaign to register “This Sick Beat” for, well, everything under the sun, to Beyoncé’ and Jay-Z’s attempt to register  their baby’s name (“Blue Ivy Carter”) for a line of baby accessories. The latest in a line of ambitious pop star trademark registrations appears to be Angela Renee Kardashian’s (a.k.a “Blac Chyna”) filing of a trademark application to register her full married name for various advertising and entertainment services. The motivation appears to be a reality TV show that she plans to produce with her fiancé, Rob Kardashian.

The sequence of events usually goes like this: A celebrity writes a song, does a media interview, or marries another celebrity (who may or may not be famous solely because of their name). The celebrity makes some unique, whatever (or not so unique, in the case of “This Sick Beat”) that the media quickly seizes upon, spreading it far and wide. Because the celebrity is well-known, their name is associated with the unique word/comment/symbol without much effort by the celebrity him/herself. The phrase may even be incorporated into a viral YouTube video, or acquire its own hash tag, like Charlie Sheen’s #winning rant (in reality, this wasn’t really a winning trademark strategy as Sheen hasn’t yet obtained his registration). Either way, the celebrity will have no problem acquiring the goodwill that other trademark owners may have to pay hundreds of thousands (or millions) of dollars to acquire.

Being a blog whose namesake is “antigeneric”, I reserve the right to rail against the generic. Generic trademarks are the bane of a trademark attorney’s existence. A generic mark leaves lawyers with nothing to do: nothing to register, nothing to enforce, nothing for clients to use to create good will and compound on it to create value in their brands. For the client, a generic trademark represents a huge missed opportunity to reach customers and create an aura around a product or service; it may even be a detriment to a client if a re-branding campaign is required. Moreover, rebranding can be expensive and provide pause even to the most gung-ho marketing team. After all, who wants the stress and financial headache of starting from square one?

These are the rules that apply to many for-profit, and even non-profit organizations. The name of the game is name recognition, with an underlying economic motivation of economic gain. Consumers recognize the symbol, attribute it to a single source, draw upon prior experiences with products/services bearing that symbol, purchase the product, and enjoy. Rinse and repeat a thousand times (or hopefully many more) and you get goodwill. The owner hopes that it will have exclusive ownership over the symbol so that consumers won’t choose a competitive product thinking it to be from the owner. Economics therefore plays a role at two levels. On the purchasing side, it embodies the intangible associations between the name and the source. On the sale side, it represents the desire to prevent others from creating the same association using a similar symbol. 

Okay, so I changed the words from the penultimate bluegrass song to make a pun on a situation down in North Carolina involving, what else, music and beer. And a little dispute over the name WOODSTOCK.

Apparently, six years ago two people started a small music festival at a restaurant featuring local musicians performing on the back of a flatbed truck, a type of makeshift stage. At the time, the festival was deemed the Popcorn Sutton Jam, the namesake of a local moonshiner.  Then this year, following a spate with the widow of Sutton, the event’s name was changed to “Hillbilly Woodstock”. That’s Woodstock as in the music and cultural festival from upstate New York during the rebellious years of the 1960s. This, as you might imagine, created quite a stir amongst Woodstock Ventures, LC, the owner of the WOODSTOCK mark. Actually, it’s more like a portfolio of marks that includes everything from loungewear to cultural entertainment services for kids. Living up to their name as zealous protectors of WOODSTOCK trademark supremacy, Woodstock Ventures made sure to get a C&D letter out quick.

Not believing that a little music festival serving a niche listening group could raise the ire of a cultural icon with name recognition from here to Vietnam, the bluegrass people “thought it was a joke”.  But as we all know from war stories involving owners of storied trademarks, infringement is no laughing matter.

Perhaps the organizers of the North Carolina festival felt they were making a clever reference to the fabled music fest in a bid to inspire thoughts of nostalgia among concert-goers, but in the bluegrass style of music. Or perhaps the plan was to create a weekend of critique of the debauchery which was largely a byproduct of the counter-culture from the real Woodstock. My spiny senses (and a visit to the website) tell me the latter is probably not very likely, and that the point of the music festival is the very orthodox provision of good music and entertainment, no overt intent to comment on anything.

One of the things about being a brand owner is that you have to play hard ball sometimes, or at least that’s what most prudent trademark lawyers would advise. But you can cross the line, especially when the enforcement action you are taking is aimed at the wrong target.

Straight out of the book of Tales of Trademark Bullies is another case of a brand owner throwing its weight around and quashing all potential threats like Styrofoam cups (yes, Styrofoam is indeed a registered trademark). FlipKart, an e-commerce company from India that operates an online megastore selling everything from baby bibs to barbeque grills, has made quite a name for itself since launching in 2007. It is peddling itself as an alternative to Amazon, at least outside the U.S. But Amazon is still king in India, apparently. 

Regardless, a company with a name like FlipKart is probably going to defend it pretty vigorously, and have a lot of success to boot. Not many everyday Joe’s are going to challenge a company’s claims when their attorneys come knocking. Much like SnapChat, FlipKart is one of those stronger marks, you know, the ones that are distinctive because they do not describe the goods or designate a category of products. From the beginning, the idea was to have a catchy name suggestive of the features of the service with staying power in the minds of consumers. Of course, being able to register the name under the .com TLD was key, too!

Earlier this week, Google announced that the company would be operating under a different banner: Alphabet. Some linguists have speculated that the driving force behind the name change is to prevent GOOGLE from becoming generic for search engine services. Becoming generic is the death knell for a trademark because it means that the mark is no longer a source identifier and does not point to the original owner, a critical function of trademarks. Practically, this means that the owner cannot stop others from using the brand on their own products. So how could a brand that is estimated to be worth $66 billion be in jeopardy?

Whenever there is some major media event or news story (“Deflategate” or “Ice Bucket Challenge”, just to name a few), it always seems like there are enterprising people that are waiting in the wings to turn a quick profit off of the phrase. And what better way to get a nice tidy profit than to get a trademark on a phrase and secure that highly coveted monopoly giving you the power to emblaze the phrase “I Like Turtles” on every street corner in America?

The latest phrase stems from Cecil, the lion that was killed by a hunter. Just within the past week, three different applicants have applied for registration of the phrase “Cecil the Lion”. 

If a trademark can be registered for any phrase, and the means for doing it are available (ahem, Legal Zoom), most people figure, “What the heck”. They are only out $500, and a monopoly on a phrase is certainly worth that much. Much like domain name opportunists in the late 1990s, where a person could snatch up names like “sofas.com” and “travel.com” for $10 or less and sell for millions, some people figure they can get the trademark and either leverage it themselves or license it to someone else.

Here’s the thing. The economics of such a strategy may not play out because there are real costs to getting and maintaining a trademark. Not only do you have to pay to file a trademark, you have to use the mark meaningfully in connection with a business in order to get the registration and maintain it. I venture to guess that many people who file a trademark application on the spur of the moment aren’t willing to put in the time to develop a bona fide business. Running a merchandising business (which is what most businesses surrounding an opportune phrase will be based on) requires a mastery of supply chain management, logistics, and marketing. This is definitely not a case of “if you build it [the trademark], they will come.”

It also costs real money to monitor the mark, which will be necessary to keep exclusive rights in the phrase. Many people often underestimate these costs or, alternatively, the energy and man hours required if you choose to forego the traditional option of having an attorney find the infringement, review it, and send out the proper letter (never mind the costs of elevating enforcement action to the lawsuit stage, which happens more often than you might think).

So you see trademark opportunism is only loosely related to domain name opportunism. At least with domain names the maintenance costs are low and you don’t need a business backing the domain name in order to keep it. Moreover, opportune phrases are often registered at the cresting of the wave of public awareness, which is a time when people are generally aware of the trademarked phrase. When the media frenzy involving the phrase dies down (which it usually always does), the trademark owner will be left with the responsibility of holding up the phrase and making sure it is still relevant or attractive to consumers.

As for the “Cecil the Lion” trademark applications (each of which may pose conflicts to the other applied-for marks based on a likelihood of confusion), one may emerge victorious and may even go on to be a viable mark if the owners can figure out a way to monetize it. If they don’t make goods under the mark themselves, one could see such a mark being licensed to a zoo or non-profit organization that raises awareness about poaching through the sale of novelty items made in Cecil’s likeness (fortunately, you don’t need the permission of animals to make products in their likeness, like you would for people).

So next time you get the itch to file an application with the trademark office, make sure to carefully consider all of the possible costs involved in both filing the trademark, and using it. This is not a definitely not a way to get-rich-quick. 

Having a fiancé that is in love with handbags (what woman isn’t?), I often find myself in-tow through the leather goods section of fancy department stores or stand-alone stores where Coach and Michael Kors bags are put on display like, well, Tiffany diamonds. Besides looking at the price tags and shuddering feeling the American Express card in my back pocket becoming a hot coal, I often think about the lengths that these companies go to in protecting their brand. Often times in the luxury goods market where there are many competing firms, all of which offer pretty much the same basic type of goods at the same price point, there isn’t much to compete on other than the name. Yes, product design is often a point of competition as well, but I’m trying to keep this post simple by only focusing on brand names. If you are a business that is competing primarily based on brand name, you are going to be more than a little concerned about how your brand name is used in the marketplace. One of the greatest examples of how companies obsess over their brand is the franchisor/franchisee relationship in the hospitality business (whether food or hotels). The main flagship brand is often the subject of dozens of pages of restrictions on trademark usage, including everything from product/logo display to partnerships with local community groups to promote the brand.

The rationale for protecting a brand is no secret. If a brand name is the foundation of your business, losing it could mean losing millions of dollars in valuation and being forced to start over. Okay, those might be some extreme results (Thermos lost its brand to genericide but is still recognized as the market leader in insulated food/beverage containers, without which the world would be a much colder place), but the result is looming out there like a hawker of goods in a flea market and no brand owner wants to be positioned for failure in a hyper-competitive marketplace.

And that brings us to the problem that many luxury brands are finding themselves in: tracking down and combating online counterfeiters.