Trademarks Making Headlines
Alt Legal Team | November 19, 2020
Trademark news often crosses over from legal publications to mainstream media when trademarks involve famous celebrities, well-known brands, newsworthy events, and otherwise funny or amusing circumstances. We’ve rounded up some of the most searched-for trademark news stories over the past year and given you a quick run-down. We’ll be updating this article regularly on the latest happenings with these stories and more.
If you want to read more about celebrity trademarks, check out our two part series on celebrity trademark filings and the strategies their counsel employs: Part 1 here and Part 2 here.
SPACE FORCE Trademark
On December 20, 2019, the United States Space Force was established as an independent military service branch under the Air Force. A month later, the government released the US Space Force logo, which Star Trek fans immediately identified as strikingly similar to the Star Trek Starfleet Command insignia. However, the similarity between the Air Force and Star Trek marks is only the beginning of this intergalactic IP battle.
The Air Force filed an Intent to Use trademark application with USPTO on March 13, 2019 in Class 25 for various clothing items (Serial No. 88338255). However, the Examining Attorney issued a Letter of Suspension on May 23, 2019, citing several prior pending applications. Despite the Letter of Suspension on the initial application, the Air Force proceeded to file two additional Intent to Use multi-class applications with the USPTO on May 20, 2020 and July 21, 2020, for various types of merchandise (Serial No. 88924951 and Serial No. 90064981). The first application has been suspended and the second application, a stylized design, was issued a §2(d) Office Action on November 5, 2020.
While the Air Force has been working to secure federal trademark protection, Netflix delivered a Vulcan nerve pinch. On May 29, Netflix premiered Space Force, a satirical comedy series from The Office showrunner Greg Daniels and star Steve Carell. The show brings The Office-style workplace humor and antics to the Air Force’s new branch: Space Force. The satirical show pokes fun at the current administration with a dysfunctional government, battling scientists and politicians, and thwarted missions. The Netflix series was enough to irk the Air Force and White House, but to the chagrin of the US Space Force, Netflix took to the final frontier and filed trademark applications for SPACE FORCE in Europe, Australia, Mexico, and elsewhere, where trademark rights are conferred upon the first to file an application.
Links to European applications, filed January 31, 2019 and July 31, 2019, both for various types of merchandise:
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https://euipo.europa.eu/eSearch/#details/trademarks/018017668
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https://euipo.europa.eu/eSearch/#details/trademarks/018101753
Links to Australian applications:
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https://search.ipaustralia.gov.au/trademarks/search/view/1986671; priority date, August 2, 2018 (based on convention, Jamaica); single-class application for TV series
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https://search.ipaustralia.gov.au/trademarks/search/view/2065854; priority date, July 31, 2019 (based on convention, EUIPO); multi-class application for various types of merchandise
There is no issue as to whether Netflix can use the term Space Force for its show since it is a parody protected by fair use. However, if Netflix and the US government decide to produce Space Force merchandise on similar types of goods, then trademark rights will come into play, and Netflix has apparently established prior rights.
Rise and Shine Trademark (Kylie Jenner)
Kylie Jenner is no stranger to filing trademark applications to protect her brand and incredibly high net worth. Check out our article discussing celebrity trademark filings, including Jenner here. In October 2019, Kylie Jenner posted to Twitter a video of herself singing “Rise and Shine” to her then one-year-old daughter, Stormi. The video quickly went viral with 1 billion views on TikTok and turned into a meme. Never one to shy away from a marketing opportunity, Jenner quickly began selling merchandise, including a hoodie emblazoned with “Rise and Shine,” which quickly sold out. Within days, Jenner proceeded to file intent-to-use trademark applications for RISE AND SHINE and RIIISE AND SHIIINNEE for use in connection with various clothing items and accessories in Class 25.
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RIIISE AND SHIIINNEE – approved for publication on October 7, 2020; published for opposition on October 27, 2020 https://tsdr.uspto.gov/#caseNumber=88659277&caseType=SERIAL_NO&searchType=statusSearch
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RISE AND SHINE – suspended on September 21, 2020 due to likelihood of confusion
https://tsdr.uspto.gov/#caseNumber=88659290&caseType=SERIAL_NO&searchType=statusSearch
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RISE AND SHINE – suspended on September 21, 2020 due to likelihood of confusion
https://tsdr.uspto.gov/#caseNumber=88659281&caseType=SERIAL_NO&searchType=statusSearch
Shortly after Jenner filed these applications, she received backlash from the Twitter-verse for aggressively capitalizing on a commonly used phrase instead of just producing amusing content. Soon after, Cathy Beggan, a New Jersey business owner, came forward claiming prior rights to the RISE AND SHINE trademark. Beggan serves as president and founder of Rise-N-Shine LLC, a nutritional supplement, vitamin, and cosmetics company that she established in 2006. She also produces cosmetics and clothing items under the RISE-N-SHINE brand.
In August 2020, Jenner filed two new, related applications, this time for RISE AND SHINE BY KYLIE JENNER and RIIISE AND SHIIINNEE BY KYLIE JENNER
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RISE AND SHINE BY KYLIE JENNER – awaiting examination
https://tsdr.uspto.gov/#caseNumber=90110354&caseType=SERIAL_NO&searchType=statusSearch
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RIIISE AND SHIIINNEE BY KYLIE JENNER – awaiting examination
https://tsdr.uspto.gov/#caseNumber=90110418&caseType=SERIAL_NO&searchType=statusSearch
As of November 12, 2020, there is no RISE AND SHINE merchandise available on The Kylie Shop, the official Kylie Jenner merchandise website.
Black Lives Matter and BLM Trademark
The term Black Lives Matter (BLM) and the corresponding movement came to light in 2013 following the acquittal of George Zimmerman in the killing of Black teenager Trayvon Martin. The term and movement have grown significantly in 2020 following the killing of George Floyd, spurring protests in the US and internationally. There has also been a spike in trademark applications in the US and internationally for terms related to Black Lives Matter and the BLM movement. Read our article about trademark applications relating to Black Lives Matter here.
The earliest filed application for BLACK LIVES MATTER was filed in 2015 by a Chicago-based business, Crazy4tshirts, to be used in connection with shirts and hoodies. The application was refused for not being a source identifier, but rather an expression of support for the BLM movement. The filing was later abandoned.
While some of the applied-for marks, like the 2015 application, have been filed seemingly to profit off of merchandise containing the phrase, others appear to be filed for philanthropic reasons. For example, Black Lives Matter Global Network Foundation Inc. and Black Lives Matter Greater New York Inc. filed applications in July and August 2020, respectively, for stylized logos. Both organizations’ logos are designed with colors and themes relevant to the civil rights protests (the former: yellow lines signifying highways that protests shut down; the latter: colors of the Pan-African flag). Both organizations aim to protect their logos from others seeking to profit off of the designs and not contribute back to the movements. Read more about these organizations here.
We will have to continue to watch how Black Lives Matter and related marks are filed and subsequently examined with the USPTO.
Tom Brady Trademarks
Soon after Tom Brady joined the Tampa Bay Buccaneers in March 2020, his company, TEB Capital Management filed several trademark applications with the USPTO– TOMPA BAY and TAMPA BRADY, both to be used in connection with various clothing items. Both applications were issued Office Actions, dated May 7, 2020 and June 30, 2020, respectively, citing prior filed applications and registration refusal under 2(a) false association with Tom Brady. Brady provided consent, allowing the TOMPA BAY application to proceed.
Additionally, Yee & Dubin, the sports management firm that represents Brady, filed the following trademark application with the USPTO–TB X TB [Tom Brady x Tampa Bay], to be used in connection with various clothing items; Notice of Allowance issued on September 22, 2020.
TOMPA BAY immediately became fodder for social media jokes. Users suggested that the term sounded like prescription medication, a new level in Mario Bros., something associated with Pokemon, or an off-brand Tonka truck. However, the decision to file a trademark application for the mark may not have been driven by Brady’s marketing team; rather, it may have been in reaction to trademark trolls.
On March 18 and April 20, a Scottsdale, AZ individual using the email address [email protected] proceeded to file a number of applications with the USPTO:
The applications are currently live, but have all been issued Office Actions dated May 7 citing 2(a) false association with Tom Brady. As of November 12, the applicant has not filed responses to the Office Actions, which were due on November 7.
Simultaneously, on March 31 a Saint Petersburg, FL individual filed an application for TOMPA BAY. The examiner issued an Office Action claiming 2(d) likelihood of confusion with the prior-filed marks mentioned above, as well as registration refusal under 2(a) false association with Tom Brady. The applicant filed for express abandonment on May 11. Perhaps Brady’s counsel sent a letter to the applicant urging express abandonment. It will be interesting to see if the Scottsdale, AZ applicant similarly files for express abandonment or allows the applications to lapse.