Showing posts with label trademark applications. Show all posts
Showing posts with label trademark applications. Show all posts

Monday, August 19, 2013

Chinese Car Company Seeks to Trademark "SNOWDEN"

HYLX, a small Chinese electric car technology company has reportedly submitted formal applications to register the name “SNOWDEN” as a commercial trademark in both Chinese and English language characters last week.
Zhu Hefeng, the company’s manager and the trademark applicant, reportedly said that he thought that "Snowden" would be the perfect name for the company’s new top secret technology that is currently in development and will, says the company, change the market for environmentally-friendly cars.  
No word from Edward Snowden on whether he will object to the trademark applications, but Snowden may have his hands full fighting America's intelligence establishment’s attempts to have him extradited to face trial for treason.
The article doesn't report on HYLX's efforts to register the trademark in the United States.  Snowden is already a federally registered trademark in the U.S. for wine.

Thursday, August 15, 2013

Can a Valid Trademark Exist in Connection with the Illegal Drug Trade?

Washington State-based Diego Pellicer claims to be the first retail brand in the United States focused exclusively on "legal, premium marijuana for pleasure and creative pursuits."

On its website, Pellicer states:  "It is important for us to emphasize that everything we do, is and always will be, completely legal. While the federal government has not yet weighed in officially on how it will respond to Washington State’s Initiative 502, we are committed to building our business under the assumption that the federal government will permit us to operate in the states of Washington and Colorado, and eventually other states, as they adopt their own specific initiatives.  We believe the writing is on the wall that marijuana will become legal in the entirety of the US in the next decade or so."

However, Pellicer's trademark attorneys may have gone too far, at least if the U.S. Patent and Trademark Office has anything to say about it.

In a recent "Intent-to-Use" trademark application filed with the U.S. Patent and Trademark Office, Peter M. Lukevich, Esq. of Apex Juris PLLC, filed a sworn statement that Diego Pellicer has the bona fide intent to use the trademark "DOT BONG" in the next six months in interstate commerce, in connection with, among other things, "medicinal herb extracts" in International Class 5 and "retail store services featuring medicinal herb extracts, dried herbs, herbs for smoking, cigarette rolling papers, smoking pipes, lighters for smokers" in International Class 35.

The Trademark Examiner who was assigned to Pellicer's application has initially refused registration.  The Examiner cited various cases and laws providing that, to legally qualify for federal trademark/service mark registration, the use of the proposed mark in commerce must be lawful, and that any goods or services to which the mark is applied must comply with all applicable federal laws.

The Examiner noted that the federal Controlled Substances Act ("CSA") expressly prohibits, among other things, manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana and marijuana-based preparations.

In addition, the CSA makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia, i.e., “any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under [the CSA].”  21 U.S.C. § 863.

Therefore, the Trademark Office initially concluded that, because Pellicer's goods and/or services appear to be expressly prohibited by federal narcotics laws, the applied-for mark, as it is apparently intended to be used, would not be a lawful use in interstate commerce.

When we spoke with Pellicer's lawyer by telephone today, he noted that there are medicinal herb extracts other than illegal narcotics that could conceivably fall within Class 5. The Examiner had cited Pellicer's rather extensive website discussing the company's affinity for, and advocacy of, marijuana.  It is yet to be seen if the Examiner becomes convinced otherwise.

Furthermore, Pellicer's lawyer notes that there are discussions underway between Attorney General Eric Holder and the States of Washington and Colorado regarding how the federal authorities plan on handling the states' respective initiatives to legalize marijuana.  

Notwithstanding these ongoing negotiations, it appears relatively unlikely that the entire United States would witness a complete reversal of the decades-old policies criminalizing marijuana in the next six (6) months.

There is sketchy precedent for the issuance of trademark registrations on otherwise banned narcotics, and those precedents were short-lived. In 2005, the Trademark Office issued a registration for "MAUI WOWIE" in connection with a variety of "smoking articles" in Class 34.

However, in 2012, that trademark registration was apparently cancelled after the Registrant did not file an acceptable statement of use. 

It is worth noting that in 2005, the Trademark Office had apparently accepted a specimen of the applicant's use that looks like a medicinal herb prohibited by the CSA.

Saturday, May 11, 2013

Disney Offends Latinos With Bid to Trademark Traditional Holiday Name

On May 1, Disney filed an application with the U.S. Patent and Trademark Office to protect the phrase "Día de los Muertos," or "Day of the Dead," across multiple platforms. 

Disney subsidiary Pixar is apparently releasing a film -- with the working title "The Untitled Pixar Movie About Dia de los Muertos" -- this fall.

Here's the issue -- Día de los Muertos is a traditional holiday celebrated on November 1 and 2 in Mexico and across Latin America.

People honor the lives of lost family members or friends by building altars, holding processions, decorating gravesites and placing offerings for loved ones.

Based on its trademark application, Disney hoped to secure the rights to the title "Day of the Dead" and such themed merchandise as fruit preserves, fruit-based snacks, toys, games, clothing, footwear, backpacks, clocks and jewelry.

But the Latino community has raised serious questions about the application on social media.

On Tuesday, a petition was started on to stop the Disney effort, stating that the attempt to trademark Día de los Muertos was "cultural appropriation and exploitation at its worst." As of today, the petition has over 21,000 signatures.

In 2003, the Day of the Dead celebration was entered on the UNESCO list of the Masterpieces of the Oral and Intangible Heritage of Humanity.

"The Indigenous Festivity dedicated to the Dead are deeply rooted in the cultural life of the indigenous peoples of Mexico," UNESCO has said.

But after the backlash, Disney withdrew its application this week.

"The trademark [was] intended to protect any potential title of the movie or related activity," a spokeswoman for Disney said. "Since then, it has been determined that the title of the film will change, and therefore we are withdrawing our application for trademark registration."

Disney did not comment on whether social media reactions directly led to the decision to withdraw the application.  This isn't the first time Disney has sought to trademark a controversial phrase.

In 2011, it tried to secure "SEAL Team Six," the Navy SEAL team that captured and killed Osama bin Laden, seeking exclusive rights for use on items from video games to backpacks. However, after receiving an overwhelming response from critics, Disney withdrew the application "out of deference to the Navy."

Tuesday, July 31, 2012

The "Caviar Manicure": Capturing a Trend as a Trademark

Buzzfeed reports that UK-based company Ciaté is laying a somewhat controversial stake to the terms "CAVIAR MANICURE" and "CAVIAR NAILS," as used in connection with a unique (if not slightly bizarre) form of nail polish and lip gloss adornment.

According to the company's website, "the inspiration behind the Caviar Manicure™ came about when Charlotte, Ciaté’s Creative Director, was looking to create 3-dimensional nails for a front cover magazine shoot and wanted to develop something feminine, indulgent yet delicately extravagant."

Ciate's products are currently offered for sale at Sephora and on Amazon.

According to BuzzFeed, Ciaté has apparently been sending out cease and desist letters to bloggers who were reporting how to create a "do-it-yourself" form of the nail look and calling it the "caviar manicure" without authorization from Ciaté.

The correspondence reportedly demands that bloggers cease using the term in connection with do-it-yourself forms of nail adornment, unless they are specifically using Ciaté products:  

"Brand Agency Limited (Ciaté) owns the trade marks caviar manicure and caviar nails and we are in the process of applying to register these marks around the world. Therefore you should not use the trade marks caviar manicure and/or caviar nails unless they are used in relation to products or to a method of using products that are produced by Ciaté."

However, the legal correspondence has not gone over so well with nail polish aficionados, who have begun calling the trend "fish egg manicure" in a form of mockery.

However, the twist here is that the bloggers and do-it-yourselfers are using a term ("caviar manicure") to which Ciaté is now staking an exclusive legal claim.

In the U.S. Trademark Office, Ciaté applied for a federally registered trademark in April 2012 based on priority of use claimed from its UK-application, which is dated March 13, 2012.

If a blogger or any other third party had previously used this term in commerce, that person could possess a superior right to Ciaté under the doctrine of priority.  In the United States, the first person or company to use a distinctive mark in commerce typically possesses the seniormost claim to right as against later comers.

There are reports in the blogosphere that third parties may possess evidence of prior use. However, do-it-yourselfers and bloggers may not possess any trademark rights vis-a-vis Ciaté, unless their use was made in commerce.

Ciaté may therefore now attempt to lay stake to the brand to the extent it can stop a significant level of unauthorized usage in the marketplace and become uniquely associated with the trend.

Tuesday, July 10, 2012

10 Strange, But Real Federally Registered Trademarks

Section 2(a) of the Lanham Act, 15 U.S.C. Section 1052(a), bars the registration of trademarks that are deemed “immoral” or “scandalous." However, no aspect of U.S. law addresses the registration or use of trademarks that are just plain...strange.  Here are ten favorites:

10.  JUNK IN THE TRUNK® for trash collection.  To be distinguished from FOR THE JUNK IN YOUR TRUNK® brand of pickup truck cargo liners.
9.  CORNHOLIO®  for t-shirts and baseball caps. One of the stranger facts about this trademark registration owned by South Carolina-based Cornholio, Inc., is that it claims a first use in commerce in 2008, but characters Beavis and Butthead who made the mark famous, went off the air in 1997.
8.  OBESITY IS SUICIDE BY OVERDOES [sic] OF FOOD®  Owned by the Michigan-based Fat Loss E-School Corporation.  Typographical error included on original registration certificate.
7. BACK OFF BABY®  For bustiers.
6.  SLIMY GRIMY®  Registered since 1981 and now incontestable.  For cleaning preparations, namely, boat hull cleaning preparations.
5.  ZOMBIES VS. CHEERLEADERS®  For comic books but recently abandoned.  Not sure who I was rooting for here.
4.  DISGUSTING ANATOMY BRAIN® and DISGUSTING ANATOMY HEART® are both registered for toys "and playthings."  What such playthings that aren't toys are they talking about here??
3.  THE GREASY WIENER®  for restaurant services.  Not health food-specific, I suspect.
2.  FULL CONTACT BINGO®  Electronic Arts recently applied for this title in connection with online computer gaming.  Not yet a trademark, just an application, but I've already ordered my advance copy of the game.
1.  DEAD LAWYER®  For a variety of items, including mouse pads.

Thursday, July 5, 2012

Can Anheuser-Busch Trademark 3-Letter Airport Codes Such as LGA?

Last year, beer conglomerate Anheuser-Busch/InBev filed multiple "intent to use" trademark applications for 14 U.S. telephone area codes. Now Anheuser-Busch has applied for trademark registrations for 42 U.S. airports, including New York's LaGuardia and JFK airports; Los Angeles International Airport; and San Francisco International Airport. Not surprisingly, the class of goods listed in each filing is "beer."  

The International Air Association Transport Association already owns trademarks on all the airport codes, but trademark law permits the use and filing for trademark registrations for codes if used in connection with a bona fide offering of goods or services that are not likely to cause confusion with those preexisting registrations/uses.  Anheuser-Busch's area code trademark applications had previously led to speculation that the company was trying to mimic the success of 312 Urban Wheat Ale, the popular beer by Chicago's Goose Island Beer Company—which Anheuser-Busch bought last year—in cities including New York and Los Angeles.  One can only wonder what type of local beer would be associated with LaGuardia airport, "Overpriced LGA Yellow Cab Ale"?