The Business Insider ran an article containing what it deemed to be some of the most ridiculous trademark attempts. Some of the applications were approved and some were not so lucky. A summary of the trademarks is below.
15. Jersey Shore Star, Nicole “Snooki” Polizzi trademark application for “Snooki” was denied by the United States Patent and Trademark Office (“USPTO”) Snooky the cat, the star of a children’s book already owns the trademark.
14. In 2008, the New England Patriots attempted to trademark “19-0” in recognition of their perfect season. The USPTO denied the trademark and the Patriots lost the Super Bowl to the New York Giants ruining their perfect season.
13. Wal-Mart’s application was denied by the USPTO when Wal-Mart sought trademark protection for the smiley face design; the one that has been in general use since the 70’s.
12. You think “That’s Hot!” means Paris Hilton? The USPTO agrees; Paris has a registration for her catch phrase, and in 2007 she sued Hallmark for using the term and won.
11. Another celebrity, “Sarah Palin,” tried to trademark her name but was denied. A procedural failure in the application caused her application to be denied by the USPTO; she apparently forgot to sign the application.
10. When Syracuse University filed an application to register its nickname, “Orange,” it was allowed to proceed; the request is still being considered by the USPTO and has not yet made it to registration.
9. A federal trademark registration for “Tweet” was sought by Twitter; the USPTO denied the registration citing a prior mark for “Let Your Ad Meet Tweets, filed by twitter-based marketing company, Twittad.
8. Another school, Boise State University, who sports a blue artificial turf football field, known as the Smurf Turf, obtained a registered trademark in its blue turf. Other teams with colored fields could also file trademark applications for their field colors.
7. “Footlong” is a pending application for Subway’s sandwiches. Subway sent cease and desist letters to a Coney Island hot dog shop as well as stores selling 12 inch hotdogs and sandwiches, earning Subway a major opposition lawsuit from its competitors, which could cause the refusal of the registration of “Footlong.”
6. Can you hear the difference between a Harley and a BMW motorcycle? Harley was so confident that consumers could differentiate the sound of their motorcycles, that the company filed an application to register the sound of their engines. Competitors complained that their engines sound the same and Harley ended up withdrawing their application from the Trademark Office.
5. When you think of “App Store,” do you think of a general application selection outfit or do you think of Apple? Microsoft filed a lawsuit against Apple earlier this year, suggesting “App Store” is a generic term incapable of being trademarked. Currently Apple owns the trademark rights to “App Store.”
4. McDonalds was unsuccessful in its application to register the “Mc” prefix when they encountered opposition from other restaurants with a “Mc” prefix in their names.
3. The word “face” was recently trademarked by Facebook.
2. “SEO,” for search engine optimization, received a denial from the USPTO when internet marketer Jason Gambert applied for a trademark of the term.
1. Donald Trump applied for the term “You’re fired” for use with clothing, games and casino services. The USPTO apparently thought “You’re fired” sounded too similar to a trademark for “You’re hired” used with board games.
As these examples demonstrate, there are many trademark applications filed for words and phrases by companies and individuals who believe that they have superior rights to those words or phrases, but don’t understand the trademark registration process. While the trademark registration process may seem simple, satisfying the numerous requirements of the trademark statute and the USPTO is not easy and trademark applications are rejected by the USPTO regularly often for reasons that may not seem to make sense. A trademark is often a company’s most valuable asset. It makes sense to have an attorney experienced in the area draft your application so as to help avoid the cancellation of the mark or the likelihood of a lawsuit.
The attorneys at Marcus Stephen Harris, LLC conduct and review searches of federal and state trademark applications and registrations and advise their clients on the potential risks involved with choosing a particular name, product configuration or advertising. They prepare, file and prosecute trademark applications both in the United States and abroad. Once registered, the attorneys of Marcus Stephen Harris LLC manage their clients’ trademark portfolios through their trademark watching, renewal and maintenance services. Marcus Stephen Harris attorneys are able to pursue licensing opportunities on behalf of our clients by drafting and negotiating complex documents. Contact Marcus Stephen Harris, LLC today if you have questions about an existing or proposed trademark.