Ms. Mola earned her Bachelor’s degree in History, magna cum laude, from the Florida International University, and a Juris Doctor degree and Certificate in Intellectual Property Law from the Florida International University, College of Law. While at FIU Law, she served as the President of the Intellectual Property Student Association. As a result of her dedication to intellectual property law, she earned three CALI Excellence for the Future Awards in focused academic coursework. Ms. Mola is the recipient of the International Trademark Association’s 2020 Ladas Memorial Award for her article, Trademark Law’s Capability to Protect Traditional Cultural Expressions from Unauthorized Borrowing and Theft. Ms. Mola is a 2018 Microsoft/Hispanic National Bar Association’s Intellectual Property Legal Institute scholar.
On November 18, LeBron James, the famous professional Basketball legend who is a key star player for the LA Lakers (and previously the Cleavland Caveliers and Miami Heat), filed a Notice of Opposition at the USPTO Trademark Trial and Appeal Board against Carnival’s “KING JAMES” mark.
Why would LeBron James file this opposition for a mark used in connection with “cruise ship services” and filed last year? Perhaps because the mark is also in connection with Class 41 services: “providing sports facilities; organizing of sports competitions and sports events; providing facilities for recreational activities; . . . providing facilities for recreation” and Class 35 identification: “sport bags, gym bags, sports bags, . . . gymnastics and sporting articles.” See U.S. Trademark Application No. 88/588,812.
LeBron James’s Complaint has two causes of actions: (1) “False Suggestion of Connection with LeBron James” and (2) “Trademark Consist of a Name Identifying a Living Individual.” LeBron James alleges that “”King James” has been a well-known nickname of LeBron James for many years, well preceding the date Applicant filed its application. The media and basketball fans consistently refer to LeBron James as “King James”, and LeBron James’ Twitter handle is actually @KingJames. King James has therefore become a popular nickname of LeBron James, and is used interchangeably with LeBron Jame.” See Opposition No. 91266024 [TTABVUE 1]. It is worth noting that LeBron James does not currently hold a U.S. Trademark Registration for “KING JAMES.”
On November 26, Carnival withdrew its Application for “KING JAMES” “with prejudice.” This means that Carnival will not be allowed to refile an application for the mark “KING JAMES” in the future. See Opposition No. 91266024 [TTABVUE 4].
The United States Patent and Trademark Office (USPTO) protects consumers and provides benefits to businesses by effectively and efficiently carrying out the trademark laws of the United States. After considering the state of the U.S. economy, the operational needs of the agency, and the comments and advice received from the public during the 45-day comment period, the USPTO is setting or adjusting certain trademark fees. The changes are detailed in the USPTO’s Final Rule, effective January 2, 2021.
The changes will allow the USPTO to continue to recover the prospective aggregate costs of strategic and operational trademark and Trademark Trial and Appeal Board (TTAB) goals. These changes will further USPTO strategic objectives by better aligning fees with costs, protecting the integrity of the trademark register, improving the efficiency of agency processes, and ensuring financial sustainability to facilitate effective trademark operations. The changes include increases in trademark application filing fees, post-registration fees, petition fees, a NEW letter of protest fee, and TTAB fees. The main changes are shown below, see the Final Rule for more information and details.
Application and Application-Related Fees
- TEAS Standard: $350 per class (up from $275 per class)
- TEAS PLUS: $250 per class (up from $225 per class)
- Processing fee for failing to meet TEAS Plus requirements: $100 per class (down from $125 per class)
- Section 8 or 71 declaration filed through TEAS: $225 per class (up from $125 per class)
- NEW FEE for deleting goods, services, and/or classes from a registration after submitting a section 8 or 71 declaration, but before the declaration is accepted: $250 per class if filed through TEAS
- No fee if you electronically file a section 7 request to amend your registration before submitting a section 8 or 71 declaration and only delete goods, services, and/or classes in the request
Petition to the Director and Letter of Protest Fees
- Petition to the Director filed through TEAS: $250 (up from $100)
- Petition to revive an abandoned application filed through TEAS: $150 (up from $100)
- NEW FEE for letter of protest: $50 per application
- Petition to cancel filed through ESTTA: $600 per class (up from $400 per class)
- Notice of opposition filed through ESTTA: $600 per class (up from $400 per class)
- Initial 90-day extension requests for filing a notice of opposition, or second 60-day extension requests for filing a notice of opposition, filed through ESTTA: $200 per application (up from $100 per application)
- Final 60-day extension request for filing a notice of opposition, filed through ESTTA: $400 per application (up from $200)
- Ex parte appeal filed through ESTTA: $225 per class (up from $200 per class)
- NEW FEE for second, and subsequent, requests for an extension of time to file an appeal brief in an ex parte appeal filed through ESTTA: $100 per application
- NEW FEE for appeal briefs in an ex parte appeal filed through ESTTA: $200 per class
- NEW FEE for requests for oral hearings: $500 per proceeding
- *The USPTO is implementing partial refunds for petitions to cancel in default judgments if the cancellation involves only a nonuse or abandonment claim, the defendant didn’t appear, and there were no filings other than the petition to cancel.
On June 30, 2020, the U.S. Supreme Court rejected the rule that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like “.com,” is automatically generic. USPTO v. Booking.com B.V., 140 S. Ct. 2298, 2020 USPQ2d 10729 (2020). In light of the Court’s decision, the USPTO recently issued Examination Guide 3-20 to address its examination procedures for “Generic.com terms.” It is worth noting that the Exam Guide pertains to a generic term and any generic top-level domain designating an entity or information (“.com,” “.net,” “.org,” “.biz,” “.info”).
While Booking.com rejected the per se rule that Generic.com terms are automatically generic, it did not otherwise significantly alter the analysis nor USPTO examination procedures regarding these generic terms. A mark must be capable of serving as a source indicator, rather than indicating that the term, as a whole, is merely the name of the class or category of the goods and/or services identified in the application. Ultimately, examining attorneys must not initially refuse registration of a Generic.com term on the Principal Register as “generic,” even if there is strong evidence of genericness. Instead, the examining attorney must refuse the mark as “merely descriptive” under Trademark Act Section 2(e)(1), requiring a showing of Acquired Distinctiveness or amendment to the Supplemental Register. The Exam Guide indicates that the suggestion to amend to the Supplemental Register will depend on whether the Generic.com term is at least capable of serving as a source indicator based on the available evidence.
The Exam Guide maintains that examining attorneys must follow the existing disclaimer policy and procedure when examining proposed marks containing Generic.com terms and other matter. If the Generic.com term is incapable of serving as a source indicator and is separable from the other matter in the proposed mark, a disclaimer of the term is appropriate, whether registration is sought on the Principal Register or Supplemental Register. However, when disclaiming a Generic.com term, the term must be disclaimed in its entirety, rather than disclaiming the generic term and the generic top-level domain separately.
While an examining attorney may not outright refuse marks on the basis of genericness, the refusal may be based on the grounds of failure to function. In doing so, “examining attorneys must also consider whether the specimen of use shows the Generic.com term being used solely as a website address and not in the trademark or service mark manner. If so, a refusal on the ground that the proposed mark fails to function as a trademark or service mark is appropriate.”
Finally, the Court in Booking.com recognized that registered Generic.com terms may be subject to a narrower scope of trademark protection. The Court noted that “[w]hen a mark incorporates generic or highly descriptive components, consumers are less likely to think that other uses of the common element emanate from the mark’s owner.” As such, examining attorneys may take this into consideration determining whether a prior registration for a Generic.com term that contains the same generic or highly descriptive terms that appear in a proposed mark should be cited under Trademark Act Section 2(d). As always, a case must be considered on its own merits, with consideration given to all relevant likelihood of confusion factors.
Read Examination Guide 3-20 here.
Since its start in 1953 as an American men’s lifestyle and entertainment magazine, Playboy has become one of the most recognizable and well-known brands worldwide. Throughout the years, Playboy Enterprises International, Inc. (Playboy) has applied for over 50 trademarks at the United States Patent and Trademark Office in connection with its brand. Who can forget the iconic silhouette of the tuxedo-wearing Playboy rabbit mascot? One of Playboy’s most notable and renowned symbols is that of the “bunny costume” first worn by Playboy Bunnies, waitresses at a Playboy Club, in the 1960s. The bunny costume was inspired by Playboy’s tuxedo-wearing rabbit mascot and consisted of a strapless corset, wrist cuffs, a collar, a bow tie, and its infamous bunny ears and tail. Many celebrities such as Kate Moss, Debbie Harry, Jenny McCarthy, Anna Nicole Smith, Holly Madison, Pamela Anderson, among others, have sported this iconic costume. The bunny costume™ design is even federally protected, see Reg. Nos. 3,353,308, 3,234,488, and 3,319,643.
With this type of heightened popularity, trademark infringement issues can arise as others attempt to profit from the success of a brand. Just one quick search on Google for “playboy bunny Halloween costume” displays a multitude of links for knock-off, imitation, and lookalike bunny costumes. As such, Playboy recently filed a trademark infringement, dilution, and unfair competition 22-page complaint in the U.S. District Court for the Central District of California against Fashion Nova, Inc., a fast fashion retail company who has previously been sued for copying copyrighted designs, trademarks, and trade dress elements of well-known designers. See Playboy Enterprises v. Fashion Nova, Inc., 2:20-cv-09846 (C.D.Cal); See also Gianni Versace S.r.l. v. Fashion Nova, Inc., 2:19-cv-10074 (C.D.Cal). More than just selling lookalike costumes in direct competition with Playboy, Playboy alleges that Fashion Nova attempts to confuse and mislead consumers about an association between the infringing product and Playboy, through its “willful misappropriation” of Playboy’s trademarks, and to trade off of Playboy’s goodwill and reputation. Playboy further alleges that Fashion Nova is advertising these infringing products using the description “Bunny of the Month,” which is “a clear and unauthorized reference to Playboy’s famous PLAYMATE OF THE MONTH trademark,” used in connection with the Playboy brand since the mid-1950s. See Reg. No. 3,388,248. Playboy also alleges that Fashion Nova’s “failure to implement appropriate quality controls further diminishes the value of the trademarks.”
Playboy seeks injunctive relief and monetary damages; however, Playboy ultimately seeks to protect its nearly 70 year old famous brand, and related trademarks. It is relevant to highlight that Playboy’s once powerful mark could be at risk of becoming a descriptive term sometime in the future due to the substantial use of the word “Playboy” to describe a bunny costume with identical or highly similar features as those belonging to Playboy. Happy Halloween!