Do You Really Want to Register that CORONAVIRUS Tagline? Things to Consider When Seeking a New Trademark Registration.

by Kim Grimsley | Apr 21, 2020 | In the News, Intellectual Property, Trademarks

Have you been sitting in your house, properly adhering to stay-at-home standards, and thinking to yourself, “I can’t wait to get some sweet coronavirus merch?” That is at least what recent trademark filers have assumed you were thinking, anyway. Since the beginning of 2020, fifty-three (53) trademark applications have been filed with the United States Patent and Trademark Office (PTO) containing the word “CORONAVIRUS”, and with one hundred seventy-six (176) more being filed containing “COVID.”

The majority of the trademark applications being filed are for printed materials like t-shirts or bumper stickers. “I SURVIVED THE CORONOAVIRUS,” “I SURVIVED COVID-19,” “CATS AGAINST COVID-19,” and “CORONAVIRUS FREE” are just a few examples. A quick search on the website Redbubble, a place where artists upload their designs to be printed on various items and sold, shows a litany of products already on the market.

 
While it is understandable that budding entrepreneurs may be looking to the current pandemic as a way to make a profit during this difficult economic time and achieve something positive, not every use of “CORONAVIRUS” or “COVID-19” is entitled to federal trademark protection.  So, it seems like a good time to take a brief moment to highlight several of the issues you should consider as you seek federal trademark protection, coronavirus-related or otherwise.  

First:  what is a trademark?  It is not just a clever saying – although that could be the beginning concept– but more is needed to establish trademark rights A trademark is a word, phrase, design or combination of both that is used in connection with goods or services and identifies and distinguishes the source of the good or services of one party from those of others. Consumers, for example, want to know when they’re drinking a genuine COCA-COLA product, not someone else’s inferior product with an infringing name slapped on it.  Thus, consumers associate you as the source of a product or a service when your trademark appears on that product or service.  By applying your trademark to your products or services, for example on a clothing line or a video game product, or in connection with consulting services or health-related services, you are building rights in your trademark. 

Also, at the time you file your trademark application, you must either (1) be using the mark in a trademark sense in interstate commerce (that is, actually selling your goods or rendering services to customers between more than one state or U.S. territory, or in commerce between the U.S. and another country); or (2)  have a bona fide good faith intent to do so.  You cannot obtain a registered trademark by merely requesting a “place holder” so no one else can use the mark on a particular good or service when you do not have a bona fide good faith intent to use the mark.  To show a bona fide good faith intent, you should have documentation to back up your intent, such as marketing plans and internal business meeting memoranda. 

Further, prior to filing, it would be in your best interest to make sure the mark is available for registration. If a third party has started using an identical or confusingly similar trademark before you in connection with the same or related goods or services, they would be the senior user of the mark and would have priority rights over you.  The United States is a use-based nation, meaning that trademark rights are created through the use of the trademark, and not necessarily through registration.  For this reason, a trademark search for the availability of a trademark – although not mandatory – is extremely beneficial in determining if your trademark is eligible for registration.  

This brings us to an important point regarding use of the trademark.  When a trademark is applied to your goods or services, the mark should be used in a “trademark sense” as opposed to an ornamental sense.  For example, a t-shirt design with the trademark placed largely front and center would not be considered a trademark use; rather, it would be seen merely as an ornamental use.  To function as a trademark, the mark would need to be displayed in a certain way for example, a properly used trademark would be displayed on clothing on its tag or label. The mark could also be displayed on the clothing item itself, usually in a smaller size above the breast, behind the neck, or son the arm of the shirt).  For services, the trademark would be used in connection with the services – for instance, on one’s website or brochures describing the services provided under the trademark. A trademark will not register on the Patent and Trademark Office’s Principal Register (where distinctive marks are registered) if it considered merely decorative or “ornamental.” 

Also, when considering whether to seek trademark registration, you may wish to consider how long you intend to use the mark, as the registration process can take 9-12 months if all goes smoothly at the U.S. Patent and Trademark Office and there are no issues with the mark.  During that period, you can use the TM symbol on your trademark, but you cannot use the  registration symbol until the U.S. Patent and Trademark Office actually issues a registration certificate.  Further, there are continued costs associated with maintaining the trademark after registration.  As an example, while we may all be thinking about COVID-19 now, hopefully down the road when we are all allowed to see each other’s bright and shining faces in public again, the initial phase of “covidwear” may fade out (as we hope the virus phases out), and you may no longer have a viable business interest in selling your goods or services under that mark. If you have any questions, please contact Kimberly Grimsley kim@olivergrimsley.com or Jennifer Mumm jen@olivergrimlsey.com at Oliver & Grimsley.

CARES Act and Trademark Deadlines

by Kim Grimsley | Apr 7, 2020 | In the News, Intellectual Property, Trademarks

On March 27, 2020, the President signed the Coronavirus Aid, Relief and Economic Security Act (CARES Act) – This Act is to provide the various areas in which the government is providing emergency assistance and health care to individuals, families and businesses impacted by COVID-19.  Under the CARES Act, the United States Patent and Trademark Office (the “PTO”) has provided for the extension of certain trademark filing deadlines between March 27th and April 30th, as the PTO has determined that practitioners, applicants, registrants and others associated with PTO filings and fees are being impacted and may be unable to make timely filings due to the outbreak.

In particular, the PTO and the Trademark Trial and Appeal Board (TTAB) has provided that they are giving a 30-day extension for the following deadlines currently due between March 27, 2020 and April 30, 2020:

1. Response to an Office Action, including Notices of Appeal from the final Office Action under 15 U.S.C. § 1062(b) and 37 C.F.R. §§ 2.62(a) and 2.141(a);
2. Statement of Use or Request for Extension of time to file a Statement of Use under 15 U.S.C. § 1051(d) and 37 C.F.R. §§ 2.88(a) and 2.89(a);
3. Notice of Opposition or Request for Extension of Time to file a Notice of Opposition 15 U.S.C. § 1063(a) and 37 C.F.R. §§ 2.101(c) and § 2.102(a);
4. Priority filing basis under 15 U.S.C. § 1126(d)(1) and 37 C.F.R. § 2.34(a)(4)(i);
5. Priority filing basis under 15 U.S.C. § 1141g and 37 C.F.R. § 7.27(c);
6. Transformation of an extension of protection to the United States into a U.S. application under 15 U.S.C. § 1141j(c) and 37 C.F.R. § 7.31(a);
7. An Affidavit of Use or Excusable Nonuse under 15 U.S.C. § 1058(a) and 37 C.F.R. § 2.160(a);
8. A Renewal application under 15 U.S.C. § 1059(a) and 37 C.F.R. § 2.182; or
9. Affidavit of Use or excusable nonuse under 15 U.S.C. § 1141k(a) and 37 C.F.R. § 7.36(b).

There are other extensions available as well.  For instance, TTAB  has provided that if COVID-19 has caused a delay in a filing not mentioned above, a request (in an ex parte appeal) before the Board or a motion (for trial cases) for a reopening of a case may also be made.

Also, if a trademark application was abandoned or a trademark registration was canceled/expired under any of the deadlines listed above (due to an inability to respond to a trademark-related Office communication by its original deadline) because of the COVID-19 outbreak, the PTO will waive the revival and reinstatement fees.

Thus, filing one of the above documents will be considered timely provided that the filing is made within 30 days of the original due date and provided that the filing includes a statement that the delayed filing or payment was due to the COVID-19 outbreak.  With regard to the type of circumstances that would be considered to effect a timely filing, the PTO has noted the following situations::

• Office closures,
• cash flow interruptions,
• inaccessibility of files or other materials,
• travel delays,
• personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.

The PTO and TTAB are providing information as to their extensions and information on frequently asked questions on its website at www.uspto.gov/coronavirus.  The PTO will continue to evaluate the situation and will report if additional measure or extensions are put in place.

If you have any questions, please contact Kimberly Grimsley kim@olivergrimsley.com or Jennifer Mumm jen@olivergrimlsey.com at Oliver & Grimsley.

Book Wars: Romance Novelist Seeks to Block Others from Using “Cocky” Trademark

by Mike Oliver | Jul 13, 2018 | In the News, Intellectual Property, Trademarks

If you search for books with the word “COCKY” in the title, the romance genre offers a large selection. One author in particular appears to be building a series of books with titles created as a play on words based on the main characters’ last names, Cocker. Thus, the books feature titles with the word “COCKY,” including titles such as “Cocky Roomie” and “Cocky Senator”.

The term “COCKY” is the subject of a recently registered trademark that has spurred quite the controversy. In April, romance author Faleena Hopkins, through her company Hop Hop Productions Inc., received a certificate from the United States Patent and Trademark Office (USPTO) granting her a trademark registration for use of the word “COCKY” in connection with goods for “a series of books and downloadable e-books in the field of romance.” Under U.S. Trademark laws,15 U.S.C. §§1051, 1052, and 1127,  more than one book is required in order to apply for a trademark for the title of a book series.  See also TMEP 1208 et seq.  The title of a single creative work is not registrable on either the Principal or Supplemental Trademark Register. Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1162, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) (“the title of a single book cannot serve as a source identifier”).

Since obtaining the U.S. Trademark Registration Certificate for COCKY, Hopkins has been asserting her registered trademark in cease and desist letters and threatening litigation against novelists in romance and other genres in order to force them to change the titles of their respective books. The world of romance e-books is mostly filled with self-published authors – generally meaning that these authors don’t have the commercial revenue to fight lawsuits, or design new cover art and promotional materials in order to comply with demands or risk their works being removed from online retailers such as Amazon.

Romance Writers of America hired an intellectual property lawyer to assist authors affected by the “COCKY” owner’s recently issued trademark and aggressive enforcement tactics. Retired lawyer turned writer Kevin Kneupper filed a Petition for Cancellation with the USPTO. In response to this action, Hopkins, through her attorneys, filed for a preliminary injunction and a temporary restraining order in the Southern District of New York against Kneupper and writers Tara Crescent and Jennifer Watson, authors accused of violating the trademark. Hopkins argued that the social media tirade against her has resulted in popular hashtags, such as #CockyGate and #ByeFaleena, and has directly affected her sales and income. On June 1st, a federal judge denied Hopkins’ motion and dismissed Kneupper from the lawsuit.

Hop Hop Productions, Inc. is also asserting ownership of a second “COCKY” trademark, a stylized design wordmark featured in the cover art title of the books. The font used was allegedly created by Set Sail Studios, which is owned by graphic designer Sam Parrett. Parrett recently sent a cease and desist letter to Hopkins and asserted ownership claims in connection with the font. At this time, Hop Hop Productions, Inc. remains the registered owner of this trademark in the USPTO. However, the USPTO provides means for parties to contest ownership, such as by procedural means of opposition of allowed trademarks or cancellation of registered trademarks.

Trademark rights provide an owner with a right to stop unauthorized third-parties from using the same or similar mark on similar or related goods in order to reduce the likelihood of consumer confusion. Trademark owners should seek legal counsel on evaluating enforcement methods and tactics prior to taking any action. Challenges or consequences may exist, such as third parties taking actions to oppose allowed trademarks or cancel registered trademarks, along with posts made to social media related to a matter.

***For more information on this topic or other trademark matters, please contact Pamela K. Riewerts, Esq., a partner at Oliver & Grimsley, LLC at: pamela@olivergrimsley.com.