Forty-eight years ago today, one of the most celebrated and venerable marques in automotive history was first registered as a trademark in the United States. On December 31, 1968, history was made when U.S. Registration No. 862632 was granted to Italian automaker Ferrari S.p.A. for the FERRARI prancing horse logo for “automobiles.” A second FERRARI logo was registered in 1969 as U.S. Registration No. 874164. Both registrations are still in force today, and both logos are still in use nearly five decades later. Interestingly (to trademark nerds, anyway), while the FERRARI logo trademarks were first registered in the U.S. in the late 1960s, the name FERRARI was apparently not registered as a standard character mark for automobiles in the U.S. until 2004, thirty-six years later.
Forty-nine years ago today, the DALLAS COWBOYS was first registered as a trademark in the United States. On December 19, 1967, U.S. Registration No. 841044 was granted to the Dallas Cowboys Football Club, Inc. for “entertainment services-namely, football exhibitions rendered live in stadia and through the media of radio and television broadcasts.” The Cowboys have continuously rendered their entertainment services, live in stadia and through the media of radio and television broadcasts, since 1960, and the 841044 registration remains in force today.
One hundred fourteen years ago today, a marque made its mark in the annals of trademark history. On December 2, 1902, Olds Motor Works was granted its first registration for the OLDSMOBILE mark for “vehicles.” Purchased by General Motors in 1908, the OLDSMOBILE name endured for more than a century as one of the country’s most recognizable brands. At the time that the OLDSMOBILE division was shuttered by General Motors in 2004, it was the oldest surviving American automobile marque, and the original trademark registration for the OLDSMOBILE mark was still in force. However, because U.S. trademarks require continuous use in order to remain valid, Registration No. 39405 was ineligible for renewal and was cancelled in 2015.
Seventy-five years ago to the day, this country bore witness to an event that would forever change the face of breakfast cereal…into three faces. On November 18, 1941, the Kellogg Company was granted its first registration for the SNAP CRACKLE POP logo featured on the boxes for its enduringly popular RICE KRISPIES® brand cereal. “Snap,” “Crackle,” and “Pop” were a trio of gnomic elves whose carefree manner and whimsical smiles brought a measure of mirth and merriment to the traditionally saturnine exercise of eating crisped rice. However, as all good things must come to an end, the original Snap, Crackle, and Pop characters were eventually phased out in favor of the newer, hipper, street-savvier versions on the current packaging, and U.S. Registration No. 391602 was allowed to expire with dignity in 2002.
October 6 has been a good day for Ben & Jerry’s trademark attorneys. On this date in 1987, the CHERRY GARCIA mark was first registered as a U.S. trademark for “ice cream.” Eleven years later, on October 6, 1998, the COFFEE COFFEE BUZZ BUZZ BUZZ mark was first registered as a U.S. trademark. Both marks are unsurprisingly registered for “ice cream.” The two registrations are both still in force, and the two flavors are both still delicious.
The Washington Post reports that the photograph in Donald Trump Jr.’s now-infamous “Skittles tweet” has been removed over copyright infringement concerns. On September 19, 2016, in what appears to be a sacchariferous twist on former Vice President Dick Cheney’s “One Percent Doctrine,” the junior Donald tweeted (heedless of both political correctness and grammatical standards), “If I had a bowl of Skittles and I told you just three would kill you. Would you take a handful? That’s our Syrian refugee problem.” To both illustrate the point and make the choice more difficult for Skittle-loving Americans, the tweet included an enticing, full-color photograph of a delicious-looking bowl of SKITTLES® brand fruit-flavored candies. The original tweet can be seen here.
Trump Jr.’s tweet was ostensibly intended to advance his father’s anti-Syrian refugee argument, and as everyone knows, a picture is worth a thousand words (or at least more than twenty-six). Unfortunately for Trump Jr. (and, by extension, anyone with an equivalently expansive sense of entitlement), he neglected to secure, or even request, a license from the photograph’s copyright holder, British photographer David Kittos. Upon discovering the misappropriation of his intellectual property by Trump Jr., Kittos, himself a refugee who left Cyprus at the age of six, promptly filed a DMCA Takedown Notice under the Digital Millennium Copyright Act, which allows copyright holders to compel service providers like Twitter to remove infringing content hosted on their services. As of this writing, the remainder of Trump Jr.’s tweet still stands, though it is but a candy-coated shell of its former self.
In addition to raising the question of why the son of an alleged billionaire would not simply purchase a stock photograph (and the services of a proofreader) for such occasions (instead of disregarding the need for a license as if it were an obligation to pay federal income tax), this incident also illustrates the perils of assuming that content found on the Internet is free for the taking. The safer assumption is that you need a written license, and perhaps a copyright attorney, in order to use any content that you see on the web. Caveat Trumptor! From The Washington Post.
On August 18, 1987, Italian automaker De Tomaso Modena S.P.A. was granted its first registration for the PANTERA mark. Aficionados of 1970s-era supercars may remember the De Tomaso PANTERA (Italian for “panther”), which was a low slung, mid-engined, two-seat affair that made its debut in 1971. Although production of the PANTERA model ceased in 1991, the mark is still in use for “structural parts for automobiles,” and the PANTERA registration remains in force.
On August 8, 1972, one of the most successful advertising slogans of the 1970s, IF YOU’VE GOT THE TIME, WE’VE GOT THE BEER, was registered as a U.S. trademark by the Miller Brewing Company. Forty-four years later, the registration is still in force, the slogan is still being used in advertising, and when it’s time to relax, one beer apparently still stands clear.
In 1971, a fast food legend, the QUARTER POUNDER, was born. Millions and millions of burgers later, on August 5, 1975, the QUARTER POUNDER was registered as a U.S. trademark. McDonald’s Corporation actually secured two QUARTER POUNDER registrations that day, No. 1017498 for a “hamburger sandwich,” and No. 1017623 for “restaurant services featuring a hamburger sandwich.” Both registrations are still in force, which is unsurprising since they are owned by a company that sells seventy-five burgers every second, serves one percent of the world’s population every day, and has at some point been the employer of one in every eight American workers.
Cue the creepy animatronics! On August 3, 1982, a date which will live in infamy, Pizza Time Theatre, Inc. was granted its first U.S. registration for the innocuous-sounding mark CHUCK E. CHEESE, for “providing restaurant services” and “providing video and coin operated game services, featuring costumed live and animated characters in entertainment services.” Today, almost two generations of traumatized youths later, the mark is still in use and the original registration is still in force. And the friendly, terrifying mechanical band plays on and is totally not going to kill you.
Sixteen years ago, on August 1, 2000, the first U.S. registration for the PIKACHU mark from the now ubiquitous Pokémon video game franchise was granted to Nintendo of America Inc. for “clothing, namely, hats, headwear, nightwear, shirts, shorts, sleepwear, and T-shirts.” Registration No. 2374006 was renewed in 2010 and remains in force.
And yes, in case you were wondering, Nintendo currently has at least three pending U.S. trademark applications for POKÉMON GO, so don’t worry.
Sixty years ago, on July 31, 1956, the Volkswagen “VW” logo was first registered as a U.S. trademark for “vehicles-namely, automobiles and trucks, air craft, boats; and parts of and accessories for automobiles-namely, radiators, direction indicators, windshield defrosters, anti-dazzle appliances, windshield wipers, shock adsorbers [sic], brakes, and baggage racks.” The registration, No. 631,649, was renewed in 1976 but is now expired, having been replaced by the slightly revised version of the “VW” logo in U.S. Registration No. 790,959, which was first registered in 1965 and is still in use today.
The Boston Globe reports that the Boston Beer Company, maker of SAMUEL ADAMS® beers and ANGRY ORCHARD® hard ciders, has filed to register the term BREXIT as a trademark for hard ciders. As the article notes, “Samuel Adams and the Sons of Liberty led their own Brexit in 1776, and now Samuel Adams the beer wants to keep that tradition alive.” The Boston Beer Company is not the only party in the U.S. attempting to capitalize on Great Britain’s historic June 23, 2016 vote to leave the European Union. According to the U.S. Patent and Trademark Office’s records, at least two other parties have filed trademark applications for the term BREXIT, one for clothing and the other for dietary and nutritional supplements. Given the global significance and potential ramifications of the UK’s “Brexit,” one suspects that more would-be trademarkers will follow suit. Read the article here. From The Boston Globe.
World IP Review reports that the U.S. Patent and Trademark Office (“USPTO”) has issued an initial refusal of a pending trademark application for DRUMPF on the grounds that the mark allegedly consists of Republican presidential nominee Donald Trump’s ancestral name. The application, filed by a company called Drumpf Industries, LLC, appears to have been inspired by a comedic effort by talk show host John Oliver to “Make Donald Drumpf Again,” a play on Trump’s campaign slogan “Make America Great Again.” According to the USPTO, “the applied-for mark consists of or comprises a name, portrait, or signature identifying a particular living individual whose written consent to register the mark is not of record.” The refusal is based on Trademark Act Section 2(c), 15 U.S.C. §1052(c), which provides that “[n]o trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it… [c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.” This provision protects living individuals from having their names appropriated as trademarks by third parties without their consent, regardless of whether or not they are famous, or are public figures. Since Trump, a prolific trademark filer himself, seems unlikely to be willing to provide his consent to what appears to be an unrelated company, the applicant is unlikely to be able to overcome the USPTO’s refusal to register. Potential trademark applicants would be wise to remember that the primary purpose of trademark law is to prevent, rather than enable, the trading by one party on the name of another. Read the article here. From World IP Review.
Two years ago today, on April 1, 2014, the law firm of Trademarkwise LLC was born. Originally conceived as an elaborate April Fools’ Day prank, the firm now represents a geographically and commercially diverse array of clients in their trademark, copyright, dispute resolution, litigation, entertainment, and contractual matters on a budget-friendly, flat-fee basis. And while the firm has now entered its terrible twos, with their attendant growing pains, teething, and occasional temper tantrums, we here at Trademarkwise® are determined to make those twos terrific, or some other word that shares a Latin root with terrible but can be contextualized into something more positive. And hopefully more marketable.
As we simultaneously celebrate the firm’s birthday and April Fools’ Day with trademark-wisecrackery, let us remember that while this day may bring mirth, securing protection for your trademark rights is no laughing matter. Well, unless your mark is COMFYBALLS.
In today’s [fast-paced/competitive/global/hard-charging/ever-changing/pick your euphemism] business world, brand protection and promotion are of increasingly vital importance to business owners. As this blog has previously observed, even drug dealers understand the tremendous economic power of good branding. Unfortunately (or fortunately, depending on one’s perspective), not all drug dealers understand the increasingly vital importance of not making harebrained business decisions with regard to their brands.
Case in point: the U.S. Attorney’s Office for the Eastern District of California announced this week that one “David Ryan Burchard, 38, of Merced, was arrested late Monday, charged in a criminal complaint with distribution of marijuana and cocaine on dark-web marketplaces, including the Silk Road.” According to the criminal complaint and affidavit, one of the clues leading to Burchard’s arrest was his attempt to federally register his online drug dealer alias CALI CONNECT as a trademark with the U.S. Patent and Trademark Office. Burchard’s head-slapping and apparently self-filed application No. 86317958 was submitted June 23, 2014, seeking registration for shirts, A-shirts, graphic T-shirts, and hooded sweat shirts. Mercifully, while the application listed the aforesaid swag apparel in Class 25, it did not attempt to cover any actual pharmaceutical goods in Class 5.
Aside from its comedic value, this sorry incident provides an illustration of why one should always consult a trademark attorney when dealing with issues of branding. In addition to providing valuable strategic advice and helping to navigate the murky legal waters of trademark protection, a trademark attorney could have provided to Burchard the critical insights that (1) vanity is a deadly sin; (2) U.S. trademark applications are publicly-accessible documents; (3) putting your actual legal name and address on a trademark application for your secret online drug dealer alias might not be the best recipe for avoiding criminal liability; (4) crime sometimes does pay, but your dollars are probably better spent on bribery and private security than trademark enforcement efforts; and (5) dude, seriously? T-shirts? You’re going to jail because you couldn’t resist vanitizing your secret drug dealer alias on t-shirts? Read the U.S. Attorney’s Office press release here, the criminal complaint and affidavit here, and the CALI CONNECT trademark application here.
The Guardian reports that international pop star Kylie Minogue’s company, KDB Pty Ltd., has filed an opposition proceeding against reality television star Kylie Jenner’s company, Kylie Jenner, Inc., over the trademark KYLIE. Minogue’s opposition brief asserts six U.S. trademarks against Jenner’s pending KYLIE application, for the marks KYLIE, KYLIE MINOGUE, KYLIE MINOGUE DARLING, and LUCKY - THE KYLIE MINOGUE MUSICAL. The elder Kylie, described in the filing as an “internationally renowned performing artist, humanitarian, and breast cancer activist,” appears to have taken issue with the attempted appropriation of the KYLIE mark by Jenner, whom the brief characterizes as “a secondary reality television personality” and “a 2015 home-schooled graduate of Laurel Springs School in Ojai, California.” Jenner’s company has not yet filed an Answer to the Notice of Opposition, and the ultimate disposition of the case remains to be seen. It is clear, however, that in Minogue’s view, there can be many Kylies, but only one KYLIE®. Read the article here, and Minogue’s opposition brief here. From The Guardian.
Yes, it’s still a thing. Ars Technica reports that, as the latest twist in an ongoing legal drama, a federal judge in San Francisco has rejected the argument that a monkey can own a copyright under current U.S. law. In a hearing this week, U.S. District Judge William Orrick stated that the question of whether non-human animals can own copyrights “is an issue for Congress and the president,” adding that “[i]f they think animals should have the right of copyright they’re free, I think, under the Constitution, to do that.” Calling the primate plaintiff’s argument a “stretch,” the judge indicated that he intended to dismiss the case in an upcoming order. The judge’s decision is a setback for the monkey’s human representatives, the People for the Ethical Treatment of Animals (“PETA”), who brought the suit on the monkey’s behalf and intended that any proceeds from the suit would be used to help preserve the endangered monkey’s Indonesian habitat.
For those who have not been following this gripping saga as closely as you should have been (see earlier posts on this subject here, here, and here), the tale began in 2011 when a macaque monkey on the Indonesian island of Sulawesi snapped a series of selfies with a camera that had been set up by British wildlife photographer David Slater. Slater then filed for U.S. copyright protection for the images, which had quickly gone viral on the Internet. The U.S. Copyright Office refused registration on the basis that copyright protection requires human authorship of the work(s), and in 2014 amended its published guidelines to specifically state that “[a] photograph taken by a monkey” is non-registrable. The subsequent PETA lawsuit against Slater, filed in September 2015, is based on the argument that the law does not specifically state that copyrights may only be owned by humans, and therefore does not preclude animal ownership. Judge Orrick’s rejection of this argument is a blow not only to PETA and its monkey plaintiff, but also to the noble cause of animal intellectual property rights in general. The decision will likely send shockwaves though the animal community, and will no doubt stifle animal creativity and reduce the already meager economic incentives that animals have to create, sell, license, publicly perform, and otherwise exploit original works of authorship. Apparently, for animals, the law of the jungle prevails. Read the article here. From Ars Technica.