We’ve blogged about the BCS’s intent to register the words “COLLEGE FOOTBALL PLAYOFF” for the BCS college football playoff HERE and HERE.

It doesn’t take a trademark attorney to figure out that the words COLLEGE FOOTBALL PLAYOFF are descriptive of a “college football playoff,” which the BCS describes as the following services: “Entertainment services in the nature of television and radio sports programs featuring college football games, exhibitions and tournaments; entertainment services, namely, organizing and staging college football games, exhibitions and tournaments; and providing entertainment, information, news and programming, polls, scores, standings, statistics, and history and background, all in the field of the sport of football, via the internet.”

The USPTO agreed, and refused to register the trademark.  As explained in the previous posts, trademarks that are “merely descriptive” of the goods or services are not registrable without a showing of acquired distinctiveness (or, secondary meaning).  It’s pretty hard to show that your trademark as acquired distinctiveness when it’s not even in use yet.  Nonetheless, the BCS threw out the red flag to challenge the refusal, but, on February 6, 2014, the USPTO said that the play on the field stands.

Well, that’s not entirely accurate, the USPTO is now saying that the mark is just flat out generic.  Generic terms can never be registered. Wilson cannot obtain a registration for FOOTBALL for footballs…  And, now, the BCS cannot receive a registration for COLLEGE FOOTBALL PLAYOFF no matter how much acquired distinctiveness it claims to have.  So, the BCS actually lost yards on the play.

From the USPTO’s most- recent Office Action:

Registration was initially refused under Trademark Act Section 2(e)(1) because the applied-for mark is merely descriptive of applicant’s services.  15 U.S.C. §1052(e)(1).  Applicant was also advised that the mark appears to be generic as well.  In response, applicant amended the application to add a claim of acquired distinctiveness under Section 2(f).  15 U.S.C. §1052(f).

Initially applicant was advised that the mark might be generic for only one of applicant’s services.  However upon further review, registration is now refused because the applied-for mark is generic for all of applicant’s services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(c) et seq., 1209.02(a)(ii).  Thus, applicant’s claim of acquired distinctiveness under Section 2(f) is insufficient to overcome the refusal because no amount of purported proof that a generic term has acquired secondary meaning can transform that term into a registrable trademark or service mark.  See 15 U.S.C. §1052(f); In re Bongrain Int’l (Am.) Corp., 894 F.2d 1316, 1317 n.4, 13 USPQ2d 1727, 1728 n.4 (Fed. Cir. 1990); H. Marvin Ginn Corp. v. Int’l Ass’nof Fire ChiefsInc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986); TMEP §1212.02(i).

Ouch.  I’d say the BCS needs to sit out for a “concussion assessment” over that one.

The BCS isn’t giving up so easily.  The strategy now appears to be based on registering the exciting logo below:

BCS CFP logo

Yeah, that “exciting” bit was sarcasm.

Actually, there has been an application pending for a different form of that logo since last year.  Not surprisingly, the USPTO is requiring the BCS to “disclaim” the generic wording, so the BCS will essentially be left with the beautiful black and gold logo as a registration, although I anticipate lots of over-reaching lawsuits when retailers begin using the term “College Football Playoff” in advertisements for TV’s, French onion dip, and recliners.

On a side-note, logos must be described in order to assist with searching for conflicting logos, so the USPTO will assign various tags to describe the logo.  Hilariously, the design code for the above logo is: “21.03.18 – Australian footballs; Rugby balls; Footballs; Elliptical shaped balls.”

Come on, Man!  This is America.  Wouldn’t “American football” have been enough?  Why bring rugby into this?

Finally, interested in what  the BCS wants to sell you with that logo on it?

IC 006. US 002 012 013 014 023 025 050. G & S: Metal key chains

IC 009. US 021 023 026 036 038. G & S: Video game software; digital media, namely, pre-recorded DVDs, downloadable audio and video recordings, and CDs featuring college football games, exhibitions and tournaments, and promoting the sport of football; downloadable software in the nature of a mobile application for providing entertainment, information, news and programming, polls, scores, standings, statistics, and history and background, all in the field of the sport of football

IC 014. US 002 027 028 050. G & S: Jewelry, watches, pendants, rings, medallions, collectible coins

IC 016. US 002 005 022 023 029 037 038 050. G & S: Printed publications in the form of game programs, media guides and commemorative books in the field of sports and entertainment; bumper stickers, decals and paper pennants

IC 018. US 001 002 003 022 041. G & S: Wallets, billfolds

IC 020. US 002 013 022 025 032 050. G & S: Plastic novelty license plates; vinyl flags

IC 021. US 002 013 023 029 030 033 040 050. G & S: Mugs and beverage glassware

IC 025. US 022 039. G & S: Men’s, women’s, and children’s clothing, namely, t-shirts, sweat shirts, sweat pants, caps, hats, pullovers, jerseys, and jackets, visors, shorts, socks, sweatbands, scarves, and sweaters

IC 027. US 019 020 037 042 050. G & S: Rugs

IC 028. US 022 023 038 050. G & S: Toy novelty items, namely, foam fingers and hands; sports equipment, namely, footballs and kicking tees; collectible toys, namely, full-sized replica football helmets and mini collector football helmets, collectible full-sized replica footballs

IC 041. US 100 101 107. G & S: Entertainment services in the nature of television and radio sports programs featuring college football games, exhibitions and tournaments; entertainment services, namely, organizing and staging college football games, exhibitions and tournaments; and providing entertainment, information, news and programming, polls, scores, standings, statistics, and history and background, all in the field of the sport of football, via the internet

I’m posting this year’s Super Bull post early because it seems that companies who are not official sponsors of “the Big Game”  (that’s the Super Bowl if you didn’t know) are getting an early start on publishing cute references to the Super Bowl.

I won’t re-hash the legal issues and ridiculousness of it all, you can find that on many other blogs, including this one:

http://floridaiptrends.com/2013/01/25/super-bull/

So, I’ll just present this year’s example, brought to you by my Dad, who received this e-mail from PayPal:

You really could name it if you wanted to...

You really could name it if you wanted to…

Ok, ha-ha.  But I wonder if companies are just having fun with the absurdity of it at this point.  Does PayPal honestly believe that it cannot use the Super Bowl mark descriptively?  When people run contests to win an Apple iPad, they don’t feel compelled to advertise it with, “Win a device made by a company that’s named after a fruit and makes a rectangular thing with a screen and buttons.”

Just make a conspicuous disclaimer that the contest isn’t endorsed, sponsored, approved, blessed, baptized, or otherwise supported by the NFL.  Then, let the catharsis begin – just call it the damn Super Bowl.  [CONSPICUOUS DISCLAIMER - that's not legal advice.  If you do that, the NFL may sue you.]

Even the fine-print rules of the contest don’t call the prize for what it is – a trip to the Super Bowl:

Pssssst....  you win a trip to the Super Bowl.  That's what is happening on that day, time, and location.

Pssssst…. you win a trip to the Super Bowl. That’s what is happening on that day, time, and location.

And don’t even get me started on the NFL’s attempt to register “THE BIG GAME” as a trademark a few years ago.  It later abandoned the application, but in doing so it admitted that it was trying to prevent “ambush marketing” of the Super Bowl by using “The Big Game” instead.  With that logic, expect a trademark application for “The game we cannot name” to be in the works…  Intellectual property attorneys are usually safe from lawyer jokes, but not in this case.

National FirstAmendment Losers.

Looks like I won’t have to eat my last Office Action.  The USPTO has issued a refusal to register “COLLEGE FOOTBALL PLAYOFF” as a trademark for “Entertainment services in the nature of television and radio sports programs featuring college football games, exhibitions and tournaments; entertainment services, namely, organizing and staging college football games, exhibitions and tournaments; and providing entertainment, information, news and programming, polls, scores, standings, statistics, and history and background, all in the field of the sport of football, via the internet.”  The Office Action was issued in July, but I only recently re-checked the docket.

The main basis for refusal was that the mark merely describes the services:

The applicant applied to register the mark ‘COLLEGE FOOTBALL PLAYOFF’ for “entertainment services in the nature of television and radio sports programs featuring college football games, exhibitions and tournaments; entertainment services, namely, organizing and staging college football games, exhibitions and tournaments; and providing entertainment, information, news and programming, polls, scores, standings, statistics, and history and background, all in the field of the sport of football, via the internet.”

Applicant’s mark is merely the combination of the three descriptive words ‘COLLEGE’, FOOTBALL’ and ‘PLAYOFF.’  A mark that merely combines descriptive words is not registrable if the individual components retain their descriptive meaning in relation to the goods and/or services and the combination results in a composite mark that is itself descriptive.  TMEP §1209.03(d); see, e.g., In re King Koil Licensing Co. Inc., 79 USPQ2d 1048 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of “beds, mattresses, box springs and pillows”); In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988) (holding GROUP SALES BOX OFFICE merely descriptive of theater ticket sales services).  Such a mark is registrable only if the composite creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services.  See, e.g., In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968).

In this case, both the individual components and the composite result are descriptive of applicant’s goods and/or services and do not create a unique, incongruous or nondescriptive meaning in relation to the goods and/or services.  Specifically, the wording ‘COLLEGE’ is defined as “an undergraduate division or school of a university offering courses and granting degrees in a particular field”, ‘FOOTBALL’ means “a game played by two teams of 11 players each on a rectangular, 100-yard-long field with goal lines and goal posts at either end, the object being to gain possession of the ball and advance it in running or passing plays across the opponent’s goal line or kick it through the air between the opponent’s goal posts” and ‘PLAYOFF’ means “a  series of games played to determine a championship.”  The combination of these three descriptive terms merely describe a series of college football games to determine a championship.  Applicant is providing entertainment services that will feature college football games that are played to determine a national championship.  The examining attorney has enclosed multiple news articles showing the term ‘COLLEGE FOOTBALL PLAYOFF’ used to describe games that will be played to determine the national champion of college football.  These articles use the term descriptively for a series of games to determine the national championship in college football.  Hence applicant’s mark is refused registration under Trademark Act Section 2(e)(1).

Not only was the mark deemed merely descriptive for the services, but the Examining Attorney also found that portions of the services were generic as to the mark:

In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the following services “entertainment services, namely, organizing and staging college football games, exhibitions and tournaments” and, therefore, incapable of functioning as a source-identifier for applicant’s services.

Read the full Office Action HERE.  The applicant (BCS Properties) has until January 16, 2014 to respond and try to argue against the refusal.  No doubt it will be a Hail Mary…

If the BCS’s application for “College Football Playoff” is approved by the USPTO for registration on the Principal Register, I’ll eat the last Office Action I received.

http://tsdr.uspto.gov/#caseNumber=85888738&caseType=SERIAL_NO&searchType=statusSearch

This isn’t even merely descriptive.  It’s generic.

 

See also:  http://floridaiptrends.com/2013/04/23/will-we-be-able-to-say-college-football-playoff-or-will-it-become-the-big-playoff/

One of my favorite topics is how sports leagues try to censor descriptive uses of trademarks.  You’re all very familiar with the annual “Big Game” nonsense that is prompted by the NFL’s squad of IP linebackers.  If not, see THIS post.

Today, ESPN.com is reporting that the new college football playoff series will be branded as, drumroll……. the College Football Playoff.

I appreciate that the BCS executive director is quoted as saying that “It will not be cutesy. And it will be descriptive. I’ve seen too many people make mistakes by trying to be cutesy.”  Ok, as a trademark attorney, I tend to prefer “cutesy” (or arbitrary/fanciful) over “descriptive,” but I get it – the BCS wants something bold and descriptive.

But, any predictions on how long it will take the attorneys to start sending trademark cease and desist letters over people talking about the, uh, “College Football Playoff?”  I just can’t see how the IP maximalists that tend to infest the legal departments of sports leagues would green light this name unless they’re totally resigned to: a) just letting people use the “mark” descriptively without harassment, or b) sending threatening letters and trying to “educate” the public that “College Football Playoff” may not be used without the express written consent of….. blah blah blah.  My money is on the latter.

Chipotle ad as found in MTV.com story.

It’s that time of year again.  News stations and retailers will start advertising and discussing (shhhh, don’t say it too loudly…) “the big game.”  Careful!!!!  I know what you’re thinking, but, don’t. say. “Super Bowl.”  That there is a genuine registered trademark of the National Football League, and may the stench of 1,000 jockstraps plague your nostrils should you dare to say “Super Bowl” in your advertisement for guacamole dip and pizza.

The NFL is a notorious trademark bully, and it has managed to fool the public into believing that there is no fair use of the trademark “Super Bowl.”  Ordinarily, it would be perfectly within a retailers rights to say something like:  “Need a great deal on pizzas for your Super Bowl party?  Well, place an advance order with us the day before the game, and we’ll deliver your pizzas before kickoff…”  While that may be a “commercial” use in that the trademark is being used in an advertisement, there is nothing in that ad to suggest that the pizza place is connected with the Super Bowl in any way.  Consumers will not be confused as to whether or not the pizza is officially sponsored by the NFL.  Yet, due to the NFL’s quest to sign up “official sponsors” for everything from pizza to TV sets, the League has bullied what would likely be fair uses of “Super Bowl” out of existence.

The NFL as a trademark bully is nothing new, and I wasn’t even going to blog about it this year.  However, I found out about another interesting trademark issue related to this year’s “big game.”  (H/T mom).

While it’s not enough for me to shed a tear for the NFL, last year an enterprising citizen named Roy Fox decided to seek registration for HARBOWL and HARBAUGH BOWL on the off chance that the two Harbaugh head coaches would face each other in this February’s Super Bowl, er, big game, uh Big Game….  And wouldn’t you know it, that happened.  The Ravens and 49′ers are both coached by Harbaughs.

There is one major problem with Mr. Fox’s foxy trademark speculation.  For trademarks that refer to a living individual, the applicant must include a statement that  the person or persons referred to in the mark have consented to their name(s) being registered.  (See my post regarding the TRAYVON MARTIN applications for more on personal names in trademarks.)  Amazingly, the Examining Attorney who was responsible for the HARBOWL and HARBAUGH BOWL applications did not inquire into whether or not the marks referred to living individuals, and the applicant, Mr. Fox, didn’t disclose that fact either.  The applications may have proceeded to registration if it wasn’t for the NFL stepping in and pressuring Mr. Fox to be a good sport and immediately cease and desist before being sued to within 4th-and-inches of bankruptcy.

So, shame on Mr. Fox for “trademark-squatting,” shame on the USPTO for not inquiring about the “living individual” consent issue, and shame on the NFL for continuing it’s bowlshit tactics.

ENJOY THIS YEAR’S SUPER BOWL®!!!

(Go Ravens!  Relishing the thought of Ray Lewis sprawled out at mid-field in tears while melodramatically and megalomaniacally proclaiming that God took a break from the rest of His general duties to help the Ravens become the Divine Winners of the Big Game.)

At the end of my post regarding the trademark registration applications that Trayvon’s mother filed, I stated that I had “not seen any statements regarding the intent behind these trademark applications.”

Today, I found a report from Radar Online that the intent behind the applications was in fact to prevent others from profiting.  The quote, attributed to the family’s attorney, states: “Trayvon’s parents will never seek to financially profit from these trademarks, period. I can’t emphasize that point enough.”  Source.

I also checked the status of the applications today, and a preliminary amendment was filed in both applications to correct the misspelling of Trayvon’s mother’s name.

Central Florida has been in the national news for more than Mickey Mouse and Dwight Howard recently.  The Casey Anthony trial riveted the nation and brought scores of news crews to Orlando.  From Nancy Grace to Geraldo Rivera, there was no escaping the “tot mom” and her “Bella Vita” tattoo.  Tragically, Central Florida was in the news for all the wrong reasons.

That trend continues.  As with the homicide of Caylee Anthony, the death of a child has once again brought national attention to Central Florida.  Trayvon Martin was shot dead while walking to his house after buying some ice tea and Skittles candy at the nearby convenience store.  The killer, George Zimmerman has claimed self-defense.  Zimmerman is (or was) involved in the Neighborhood Watch program, and he is reported to have a history of calling 911 to report “suspicious” incidents. One reason that this case has brought so much attention is because the local police did not arrest Zimmerman after the shooting.  The police indicated that they had no probable cause to dispute Zimmerman’s statements that he shot Trayvon in self-defense.

But this post is not about the guilt or innocence of either of these accused murderers.  One had her day in court, and the other should get the same “opportunity.”

This post is about the families of the deceased filing trademark applications.  It’s a sad thought.  Rather than Caylee Anthony or Trayvon Martin becoming business owners themselves, needy for trademark protection, their families have filed trademark applications after their deaths.

For Caylee, the trademark applications were filed by her grandparents’ attorney.  In fact, the applications claim that the trademarks are owned by the attorney.  The applications are for “CAYLEE ANTHONY” and “JUSTICE FOR CAYLEE.”  The goods that are listed in the applications include t-shirts, underwear, and buttons.  The applications were filed as “intent-to-use” applications, which means that the applicant had to declare that he intended to use the trademarks in a bona fide offering of the goods.

When news of this got out, many people accused the Anthonys of “cashing in” on the death of Caylee.  While this was most likely a knee-jerk reaction – surely the Anthonys wouldn’t be trying to profit from the death of their granddaughter – there is some legal merit to the charge of cashing in.  This is because trademark law is a creature of the Commerce Clause in the United States Constitution.  The Commerce Clause enables Congress to regulate interstate commerce.  As such, federal trademark registration is only available to those who seek to use a trademark for interstate commercial purposes.

However, as explained in the previous link, the Anthonys filed these trademark applications in order to prevent others from cashing in.  In that respect, they were “defensive” trademark applications.  The fact that a federal trademark applicant must declare that they either are using or intend to use the mark in interstate commerce makes this practice of “defensive” trademark applications a very interesting topic, but it is beyond the scope of this post.

This post is focused on the fact that the Caylee Anthony trademark applications, and the ones described below, both involve personal names.  I have blogged about this issue before.  In order to register a personal name as a trademark, the applicant must disclose whether or not the trademark refers to a living individual.  If so, the applicant must state whether or not the individual has provided consent to use his or her name in the application.

The Trademark Manual of Examining Procedure (“TMEP”) explains:

If a mark comprises the name or likeness of a living individual and consent to register is of record, a statement to that effect must be printed in the Official Gazette and on the registration certificate.

http://tmep.uspto.gov/RDMS/detail/manual/TMEP/Oct2013/d1e2.xml#/manual/TMEP/Oct2013/TMEP-800d1e2550.xml

Similarly, if the trademark is a name but does not depict a living individual, a statement to that effect must be made:

If a name or likeness that could reasonably be perceived as that of a living individual is not that of a specific living individual, a statement to that effect must be printed in the Official Gazette and on the registration certificate. The statement should read as follows:

“__________ does not identify a living individual.”

The applicant should explain any additional relevant circumstances. For example, if the matter identifies a certain character in literature or a deceased historical person, then a statement of these facts in the record may be helpful, but this information will not be printed in the Official Gazette or on the registration certificate.

http://tmep.uspto.gov/RDMS/detail/manual/TMEP/Oct2013/d1e2.xml#/manual/TMEP/Oct2013/TMEP-800d1e2550.xml

Unfortunately, the attorney who filed the Caylee Anthony applications did not make the appropriate statements concerning the life or death of the person referenced in the applications, Caylee Anthony.  The Examining Attorney from the USPTO therefore issued an “Office Action” which required that the applicant fix the error:

 The applied-for mark includes a name that may identify a particular famous or historical individual who is deceased.  Specifically, the mark includes the name “CAYLEE.”  Where a name, portrait or signature in a mark identifies a particular living individual, the mark can be registered only with the written consent of that individual.  Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §813; see TMEP §§1206 et seq.  In this situation, where it is unclear whether the name, portrait or signature is that of a living individual, applicant must so clarify for the record.  See TMEP §§813.01(b), 1206.03, 1206.05.

Accordingly, if the individual identified in the mark is in fact deceased, applicant should provide the following statement: 

The name, portrait, or signature shown in the mark does not identify a living individual.

See TMEP §§813.01(b), 1206.03, 1206.05.

If the name or signature in the mark does identify a particular living individual, then applicant must submit the following:

(1)  A statement that the name “CAYLEE” identifies a living individual whose consent is of record.  If the name represents that of a pseudonym, stage name, or nickname, applicant must include a statement that {specify fictitious or assumed name} identifies the {indicate pseudonym/stage name/nickname} of {specify actual name}, a living individual whose consent is of record; and

(2)  A written consent, personally signed by the individual whose name or signature appears in the mark, authorizing applicant to register the name, pseudonym, stage name, nickname, or signature as a trademark and/or service mark with the USPTO (e.g., “I consent to the use and registration by Lippman Law Offices, P.A. of my name “CAYLEE” as a trademark and/or service mark with the USPTO”).

TMEP §§813, 813.01(a), 1206.04(a); see 37 C.F.R. §2.61(b).

See Office Action, HERE.  That was no doubt a sad piece of mail for the Anthonys’ attorney to open.  These applications were filed well after Caylee’s remains were found, and it’s unfortunate that the appropriate statements concerning the life or death of the person depicted in the trademarks weren’t made in the application.  Interestingly, the 6-month period in which to file a reply to the Office Action has passed, so the Examining Attorney should be marking the applications as “abandoned” in the near future.  It is not a stretch to think that these applications were simply filed to give the Anthonys’ attorney a federal application number to use in cease and desist letters which were no doubt sent to the people who truly were seeking to cash in on the Casey Anthony trial.  With the heated emotions dying down, and opportunists turning to a fresher news cycle, there may simply be no need for the CAYLEE ANTHONY and JUSTICE FOR CAYLEE trademarks anymore.

Image originally found on MSNBC.com. Used for educational and commentary purposes.

This brings us to today’s news about Trayvon Martin.  His mother, Sybrina Fulton, has filed two trademark applications using her son’s name.  The applications are for JUSTICE FOR TRAYVON and I AM TRAYVON.  As with the Caylee Anthony applications, these applications are intent-to-use applications, and the goods include DVDs, CDs, and other media. (This is also beyond the scope of this article, but as shown in the above picture and on the local news story I just saw, which included interviewing a man selling “Justice for Trayvon” t-shirts, there may actually be people that have already made a commercial use of the JUSTICE FOR TRAYVON and I AM TRAYVON trademarks.  If so, those people might have a superior common law claim to the trademark rights than Trayvon’s mother.)

Sadly, the attorney that filed the Trayvon Martin applications also failed to indicate whether or not “Trayvon” is a living or deceased individual.  (It also appears that Sybrina’s name was misspelled in the applications.)  The fact that such “living or dead” statement was not made means that 3 or 4 months from now, Trayvon’s mother’s attorney will be getting that same piece of mail requesting further information about the status of Trayvon Martin’s life.

As with the Caylee Anthony trademark applications, there has been a public backlash against this alleged attempt to “cash in.”  Comments in stories such as THIS one (“Nothing like cashing in. I bet Al Sharpton helped her fill out the paperwork”) and THIS one (“grieving all the way to the bank”), made by the oft-ignorant people hiding behind Internet screen-names, show a) a lack of class, and b) a lack of understanding that these applications may be “defensive” and designed to prevent others from doing the very thing that Trayvon’s mom is being accused of – cashing in on the death of her son.

While I have not seen any statements regarding the intent behind these trademark applications, it would not be the first time that the family member of a murder victim has filed trademark applications to stop others from profiting from the tragedy.  And, frankly, even Trayvon’s mother does want to offer DVDs and CDs under the JUSTICE FOR TRAYVON and I AM TRAYVON trademarks, why does that erase any sympathy and support for a mother grieving the murder of her son?

I’ll keep an eye on these applications and post a follow up when there’s something to report.

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