Trademark Applications Worth Talking About

By Nick Guinn

About half a million trademark applications are filed at the United States Patent and Trademark Office (“USPTO”) each year. Those applications are reviewed by more than six hundred trademark examining attorneys, who issue certificates of registration for more than fifty percent of the applications. 1

This article cannot address each of those applications or registrations—nor should it. However, hidden among the troves of filings each year are a few trademark applications worth talking about. These examples show how exacting the application process can be, shed light on how familiar companies distinguish themselves from their competitors, offer a glimpse into the myriad legal considerations that accompany celebrity status, and reflect tensions between state and federal law in evolving markets.

TRADE DRESS

Most people are aware that names, logos, taglines, or a combination thereof can be trademarked. However, product design and packaging, sounds, scents, etc. may also be registered as “trade dress.” Applications to register such “trade dress” present unique issues that do not necessarily arise with names and logos.

Reg. No. 5,467,089 for the Play-Doh Scent.

Hasbro, Inc. owns a registration for a scent mark described as a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough. This scent is recognizable as Play-Doh, even if most consumers could not identify the individual scent components.

When Hasbro attempted to register the scent, the examining attorney argued that incorporating a scent into a toy modeling compound is a non-distinctive feature and fails to serve as a trademark. The examining attorney argued that the act of adding a scent to a toy modeling compound is simply an incidental feature and does not distinguish the product.

Hasbro submitted a container of Play- Doh modeling compound to the USPTO as its specimen for the application. The company noted that a competing product is available in six scents (watermelon, orange, banana, lime, pear, and pineapple), which is completely distinct from the combined vanilla cherry and salted wheat-based dough scent of Play-Doh.

Hasbro emphasized that there is no overlap between Play-Doh’s scent and the scents of its close competitors. In support of its position that the Play-Doh scent is distinctive, not merely incidental, Hasbro submitted the declaration of Greg Lombardo, its Vice President of the Global Branch Strategy and Marketing Division for Play-Doh and Play School. Lombardo’s declaration was devoted, in part, to establishing the widespread sales of Play-Doh and also to identifying a number of articles and other references describing and discussing the unique and distinctive scent of Play-Doh. The articles written by end users of Play-Doh attested to the undoubtedly distinctive and source-identifying nature of the applied-for scent mark that is the Play- Doh scent. In other words, Hasbro showed that end users could identify Play-Doh by its vanilla cherry and salted wheat-based dough smell. Hasbro also offered an unsolicited reader survey conducted in 2017 by the World Intellectual Property Review, which found that the majority of its readers (70%) believe that the Play-Doh scent mark application should be granted registration due to its acquired distinctiveness.

Using these independent sources had the intended effect. Hasbro’s response, relying heavily on the evidence of how consumers actually experience Play-Doh’s signature scent, overcame the initial rejection, and its scent mark registered on May 15, 2018.

Reg. No. 3,137,914 for the Crown Royal Bag.

Crown Royal Canadian Whisky has a distinctive, cut-glass bottle, but the most well-known aspect of its packaging is the deep purple bag with gold tassels that surrounds the bottle. When Crown Royal attempted to register its famous purple bag, the application was initially refused as merely functional and merely ornamental. The examining attorney argued that the mark was functional because the fact that the bag is made of soft, insulating, velvet fabric in a pouch shape with a drawstring handle, makes it functional for packaging bottled spirits, and it served simultaneously as an ornamental protector and carrier for such goods. The examining attorney argued that the mark could be registrable, but product packaging is not inherently distinctive and, therefore, cannot be registered on the Principal Register without a showing of acquired distinctiveness under Section 2(f) of the Lanham Act.

Crown Royal responded succinctly and with little evidence. That initial response was insufficient to overcome the refusal. In the second refusal, the examining attorney dismissed articles calling the purple bag “iconic.” Such description was “not a compliment to a little cloth purple bag” but rather “a tribute to a long-lived, successful advertising campaign.” The examining attorney noted that the bag was “one of many similar pouches with double drawstring closures” that been rendered “distinctive” only “because of the marketing minds who made it so.” Office Action dated Oct. 3, 2005.

Crown Royal responded again and, this time, submitted several exhibits demonstrating the expenditures and nature of Crown Royal’s advertising. For instance, Crown Royal spent more than $300 million in advertising over the course of five years. Many of those advertisements focused exclusively on the purple bag. Between 2000 and 2005, nearly 200 million purple bags were distributed by Crown Royal throughout the United States. The evidence that the purple bag represented the brand even when separated from the actual product made a difference: the examining attorney withdrew the refusals, and the mark registered.

Reg. No. 4,618,936 for a Verizon Retail Store Scent.

Verizon applied to register a flowery-musk ambient scent. Initially, the application was refused for failing to function as a service mark. The examining attorney attached evidence from several sources showing that stores commonly use scents to create ambiance, such that the scent of any particular service provider would not distinguish it from any other.

Verizon identified several examples of scents, sounds, and colors that various retailers use to distinguish themselves in their stores. Verizon asserted that the flowerymusk scent was a proprietary blend that was created to, and does in fact, distinguish Verizon’s unique retail stores from other communication and consumer electronics retailers. Verizon supported this assertion with a declaration from the firm’s chief experience officer responsible for designing several of Verizon’s stores.

Similar to the scent of Play-Doh, Verizon adequately demonstrated that the scent of its stores was not accidental or incidental. Rather, that particular scent was designed to distinguish or identify Verizon stores from other service providers. Even though Verizon did not have the same level of proof that the scent was recognizable to consumers in the same way that the scent of Play-Doh was, the evidence of Verizon’s intent and efforts to create a unique and distinctive scent were sufficient to overcome the refusal. The application registered several months later, and the registration remains on the Supplemental Register.

Reg. No. 4,903,968 for the LEGO Minifigure.

LEGO applied to protect its LEGO Minifigure, which may seem like a no-brainer to anyone familiar with the (typically) yellow-faced, square-bodied figurines. Surprisingly, the application was initially rejected based on non-distinctive product design. The office action also required a substitute drawing. With respect to the drawing, the examining attorney objected that the description of the mark states that the mark is a three-dimensional configuration, yet the drawing was two-dimensional. For context, LEGO submitted the “Original Drawing” shown below.

ORIGINAL

REVISED

The second objection was easy to remedy. LEGO corrected the drawing issue by submitting an “Amended Drawing” as shown in the table above. As for the distinctiveness issue, LEGO responded concisely and offered substantial evidence in support of its application. LEGO submitted a declaration, with attached Exhibits A through P, showing “huge sales (over a billion dollars), over a long period, extensive advertising and extensive unsolicited media coverage, together with substantially exclusive use.” Response to Office Action dated Oct. 26, 2015. The evidence in support consisted of screenshots from LEGO movies; mail order catalogs; images of various characters built from the common LEGO Minifigure; LEGO kits showing the Minifigure; and written history/ articles discussing the Minifigure. This evidence was accepted, and the application ultimately registered.

CELEBRITIES AND TRADEMARKS IN THE NEWS

Some applications are interesting simply because the people filing them are interesting. In some instances, that is enough for a unique refusal. In recent decades, with the rise of the internet and social media, celebrities have capitalized on their influence by expanding their income streams into products and even brands. Those ventures can generate intellectual property issues that demonstrate the challenges of protecting a brand that has become a household name.

Serial Nos. 85/526,099 and 86/883,293 for BLUE IVY CARTER.

BGK Trademark Holdings, LLC (“BGK”) filed Application Serial No. 85/526,099 (the “‘099 Application”) for BLUE IVY CARTER. For reference, Blue Ivy Carter is the daughter of entertainers, Beyoncé Giselle Knowles and Shawn Carter (a/k/a Jay-Z). Blue Ivy Carter was born January 7, 2012. The ‘099 Application was filed on January 26, 2012, on an intent-to-use basis.

The application indicated the mark would be used in connection with numerous goods and services, including the following: fragrances, cosmetics, skin care products, key chains and key rings, DVDs, CDs, and audio and visual sound recordings featuring musical performances, musical sound recordings, baby carriages, baby strollers, fine and costume jewelry, clocks and watches, books, photographs, posters, baby books, stickers, bags (namely, tote bags, beach bags, handbags, diaper bags), small leather goods (namely, leather cases, leather bags and wallets, leather purses), baby bouncers, baby changing mats, baby changing tables, high chairs for babies, playpens for babies, drink ware (mugs, glasses, cups, bottles), hair combs, baby bathtubs, baby bedding, bundle bags, swaddling blankets, crib bumpers, fitted crib sheets, crib skirts, crib blankets, baby blankets, clothing for adults, infants, and toddlers, playing cards, balls (basketballs, baseballs, footballs, kick balls, rubber balls), baby toys, baby teething rings, baby swings, product merchandising, online retail store service, marketing, promotion and advertising for recording and performing artists, providing online video games, dance events by a recording artist, multimedia production services, live musical performances, production of motion picture films, fan clubs. 2

The USPTO initially denied registration on several bases, including “false connection.” More specifically, the USPTO concluded that because the infant Blue Ivy Carter was already famous by virtue of her parentage, goods and services bearing the BLUE IVY CARTER mark would create “a presumption, though incorrect,” that such goods or services were “connected with the child through the control of her parents” when, in actuality, the mark would be used or licensed by BGK. Eventually, the ‘099 Application was allowed in 2013 and several Intent to Use Extensions were requested. Each extension required the applications to state a bona fide intent to use the registered mark, but that additional time was required to actually put it into use. BGK Trademark Holdings, LLC apparently did not put the mark into use and the ‘099 Application was abandoned on February 22, 2016. Shortly before the abandonment, however, BGK filed a second, nearly identical application for the mark BLUE IVY CARTER (the “‘293 Application”). The ‘293 Application received a similar office action initially denying registration, which BGK overcame.

Allowance aside, the ‘293 Application was the subject of an opposition proceeding noticed by Veronica Morales d/b/a Blue Ivy. See Blue Ivy v. BGK Trademark Holdings, LLC, Cancellation No. 91234467 (TTAB 2017). Morales is an entertainment and event planning firm focused on designing weddings and other events. Morales founded Blue Ivy in 2009. Ms. Morales, a Harvard graduate, was featured in Condé Nast magazine as one of the Top 25 Wedding Planners in the world. Morales asserted several grounds for opposition: lack of bona fide intent to use; likelihood of confusion; and fraud on the USPTO. The proceeding was terminated in September 2020, when the Trademark Trial and Appeal Board ruled in favor of BGK.

The lack of bona fide intent argument might have had some teeth. The Notice of Opposition cited a Vanity Fair article, wherein Jay-Z explained that he and Beyonce were trying to protect their daughter from exploitation: “It wasn’t for us to do anything; as you see, we haven’t done anything.… [I]t’s a child, and it bothers me when there’s no [boundaries]. … For somebody to say, This person had a kid—I’m gonna make a f***in’ stroller with that kid’s name. It’s, like, where’s the humanity?” Notices of Opposition at ¶ 20 (emphasis added; expletives redacted). After the ‘293 Application was approved, Morales continued to operate her event planning business under the name Blue Ivy. To date, BGK has apparently not licensed BLUE IVY CARTER for any goods and services. Thus, it appears that the kerfuffle over the registration ended up being a tempest in a teapot.

Serial No. 88/579,771 for TACO TUESDAY.

LBJ Trademarks, LLC filed Application Serial No. 88/579,771 for the mark TACO TUESDAY on August 15, 2019. The application identified several goods and services, including social media; search engine marketing; inquiry marketing; internet marketing; mobile marketing; blogging and other forms of passive, sharable or viral communications channels; podcasting services, providing a website featuring nondownloadable videos and social media posts in the field of sports, entertainment, current events and popular culture; and downloadable audio/visual works.

The application was filed on an intentto-use basis and later refused for failing to function as a trademark. The examining attorney argued that “Taco Tuesday” is a commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, wellrecognized concept or sentiment. Namely, the wording “Taco Tuesday” is a “widely used message” used by various parties to express enthusiasm for tacos, by promoting and celebrating them on a dedicated weekday.

Interestingly, each of the articles and exhibits cited by the examining attorney concerned restaurants, bars, or events where tacos were being served on a Tuesday. By contrast, LeBron James—the owner of LBJ Trademarks, LLC—produced and uploaded several “Taco Tuesday” videos on YouTube during the summer of 2019. To the extent the subject trademarks identify videos, entertainment, and the like, those goods and services could be registrable. The examining attorney may have been correct that “Taco Tuesday” was a commonplace term for restaurants and bars, but that was not the use intended by LBJ Trademarks, LLC. The application was ultimately abandoned, however, because LBJ Trademarks, LLC did not respond to the office action.

Serial No. 88/571,984 for THE.

Can one of the most common words in the English language be trademarked? Surprisingly, more than one application has been filed attempting to register a humble artice: “The.”

The Ohio State University filed Application Serial No. 88/571,984 for the mark THE. The ‘984 Application identified the following goods in class 25: Clothing— namely, t-shirts, baseball caps and hats. The USPTO entered an office action, raising two issues: a prior-filed application advisory and a refusal under Sections 1, 2 and 45 for failing to function as a trademark.

The prior-filed application advisory is based on an application (i.e., the “‘806 Application”) for THE as filed by Marc Jacobs Trademarks, LLC. An office action issued, arguing that the mark on the drawing and the specimen differed and that the mark failed to function as a trademark. The office action argued that the ‘806 mark “as used on the specimen of record, does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others.” The office action continued: “The applied-for mark, as shown on the specimen, does not function as a trademark because it appears differently on the specimen and is thus not in use in the form shown in the application.” For reference, Marc Jacobs Trademarks submitted the specimen pictured above.

Similarly, as for Ohio State’s merely ornamental refusal, the office action argued that the applied-for mark, as used on the specimen of record, is merely a decorative or ornamental feature of Ohio State’s clothing and, thus, does not function as a trademark to indicate the source of Ohio State’s clothing and to identify and distinguish Ohio State’s clothing from others. Ohio State submitted the following specimen (and the like):

These types of specimens rarely suffice for apparel. Ohio State could have avoided the merely ornamental ground for refusal by using “THE” on a label or tag or distinguishing these products as part of the “THE” product line in the product description.

On March 11, 2020, Ohio State responded to the office action with a lengthy history of Ohio State and its athletic programs and brief legal argument as to why “THE” functions as a trademark. In short, the official name of the school is The Ohio State University and athletes, students, and alumni often emphasize “The” to demonstrate school spirit. Ohio State’s response requested a suspension during the pendency of the application filed by Marc Jacobs Trademarks.

FEDERALISM AND EVOLVING MARKETS: TRADEMARKING CANNABIS

As of this writing, there are significant changes occurring across the United States with respect to state laws and the treatment of marijuana. Trademark law and policy are not immune from such changes. For an application to register, the mark must be used in commerce on, or in connection with, all the goods and services listed in the application. Trademark Manual of Examining Procedure (“TMEP”) § 901.

The power of the federal government to register marks comes from the commerce clause of the Constitution. TMEP § 901.01. Section 1 of the Trademark Act, 15 U.S.C. § 1051, permits applications for registration of “a trademark used in commerce” (15 U.S.C. § 1051(a)) or of a trademark that a person has a bona fide intention to use in commerce (15 U.S.C. § 1051(b)). Id. Section 45 of the Trademark Act, 15 U.S.C. § 1127, defines “commerce” as “all commerce which may lawfully be regulated by Congress.”

The “use in commerce” requirement has become relevant for applicants identifying cannabis—or similar goods/services—in their application. For example, the Controlled Substances Act (CSA), 21 U.S.C. §§ 801– 971, states that marijuana is a controlled substance under federal law, regardless of state law. The USPTO will refuse registration of marks for drug paraphernalia under the CSA. Nevertheless, the 2018 Farm Bill and corresponding amendments to the CSA acknowledge that hemp (no more than 0.3% THC) is no longer a controlled substance under the CSA. With that in mind, Examination Guide 1-19 (issued May 2, 2019) indicates:

• CSA will not bar applications for hemp products filed on or after December 20, 2018;

• Applications filed prior to December 20, 2018, may request that the examining attorney amend the filing date;

• Use of hemp in foods or supplements may violate Federal Food Drug and Cosmetics Act (FDCA); and

• For services involving cultivation or production of hemp, the examining attorney will inquire as to the applicant’s authorization.

Hundreds of thousands of trademark applications are filed at the USPTO every year.

For an example of a successfully registered mark in this industry space, consult Reg. No. 5,928,259 for HI BIO. The application was filed on October 17, 2018—although the official date was amended to December 20, 2018. The application’s goods contain the appropriate qualification: “Cosmetic preparations, namely, oils, lotions, masks, and rollerball bottles sold filled with essential oils for temples and comprised of hemp containing less than 0.3 percent delta-9 tetrahydrocannabinol (THC) on a dry weight basis.” (emphasis added.)

As more states legalize marijuana and as federal law and policy continue to evolve, intellectual property rights in the cannabis industry will bear watching.

CONCLUSION

Hundreds of thousands of trademark applications are filed at the USPTO every year. Although many of the applications are scrutinized and refused due to issues a practitioner or interested observer should familiarize themselves with (e.g., likelihood of confusion; descriptiveness), few of the applications individually warrant discussion. However, the noteworthy applications and rejections offer an interesting glimpse into the American marketplace and the goods and services that are a part of our everyday lives.

Nick Guinn is a Registered Patent Attorney at Gunn Lee & Cave, PC. He earned his JD from St. Mary’s University School of Law and his Bachelor of Science in Chemical Engineering from the University of Texas.

ENDNOTES

Hope Shimabuku, Overview of the USPTO[PowerPoint Slides] (received Dec. 4, 2019).

BGK Trademark Holdings, LLC identified significantly more goods and services, which collectively spanned more than a dozen international classes of goods and services and incurred sizable filing fees at the USPTO.