Stars: They file trademarks just like we do! (Part 2)
Margo Cruz | August 29, 2020
While in Part 1, we discussed examples of celebrity trademark strategies that included filing as a method of exploration and filing for seemingly everything, in Part 2, we will discuss how celebrity trademarks can surprise us. We’ll investigate marks on opposite ends of the trademarking-strategy spectrum (from quite surprising to extremely normal).
LeBron James used the trademark process in an innovative way, confirming the non-trademark-ability of the phrase TACO TUESDAY.
James applied to register the phrase in August 2019, but after a “commonplace term” office action, James’s spokesman announced that he was happy with the result because it meant that he would not be barred from using the phrase, and the refusal of registration would “protect not only James but anyone else… using “Taco Tuesday” for business reasons.”
In the office action, the trademark examiner explained that “Taco Tuesday” is a “commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment.” According to the USPTO, this common usage makes it less likely that consumers will perceive the term as a trademark for goods and services (TMEP 1202.04(b)).
There are several other Taco Tuesday trademark applications, but responses to them reveal potential inconsistencies. A 1(b) trademark application for TACO TUESDAY for t-shirts and other apparel received a Notice of Allowance on March 10, 2020, despite a letter of opposition presented before publication. The letter of opposition detailed the many ways that the phase has become a commonplace term and included examples of prior commercial uses of the phrase. Notably, James had applied to trademark the phrase with the goods and services category, “downloadable audio/visual works,” which may explain the discrepancy, but it does not entirely clear up the lack of office actions on this other TACO TUESDAY application.
Furthermore, two separate companies still hold the trademarks to TACO TUESDAY for restaurant services. One company holds the mark inside New Jersey, and another holds the trademark everywhere else in the United States. In spite of the restaurants’ efforts at active trademark enforcement, authors have suggested that the marks are already victims of genericide. A New York Times article on James’s unsuccessful application argued that if he really did want to protect everyone’s ability to use the phrase “Taco Tuesday,” his team could have issued petitions to cancel the existing marks, rather than attempting to register the mark himself.
With all the TACO TUESDAY trademarks out there, it makes sense that James’s legal team sought either registration or confirmation that it had become too generic. It remains to be seen what will happen to the other TACO TUESDAY trademark applications, or if the restaurants mentioned above will be allowed to maintain their marks going forward.
On the other side, standard trademark applications simply meant to register a mark for use as a source identifier are not always problem-free. One Kanye West trademark application brings up interesting likelihood of confusion points.
Unlike many of the trademarking styles discussed above, Kanye West seems to apply for a trademark when he has a legitimate intention to use it in connection with a product (as the Lanham Act intends).
West holds many trademarks under his companies Mascotte Holdings and Yeezy LLC. Some of his more recent trademark applications include 1(b) intent to use applications for WEST DAY EVER (filed on June 26) and for 2020VISION (filed on July 7) by Yeezy LLC. The hashtag #WESTDAYEVER also appeared in multiple @ye Tweets on the same day, some of which promoted his new partnership with Gap. This may indicate that West intends to use the former applied-for mark in connection with his Gap collaboration. 2020VISION appears to be linked to West’s presidential ambitions.
West similarly used Mascotte Holdings, Inc. to apply for the trademark SUNDAY SERVICE, the name of his weekly choir production usually live streamed on sundayservice.com. This mark has not had a straightforward registration process, and it received a “likelihood of confusion” refusal due to a prior existing mark: SUNDAY SERVICE, registered to one Jeff Jonas since 2015. Jonas’s mark comes with an eye-catching specimen.
While West’s application is for merchandise like t-shirts and Jonas’s mark is for musical performances, the USPTO considered the goods and services too closely related to allow West’s registration. The refusal is worth the read, and it states that trademarks need not be for identical goods and/or services for there to be a likelihood of confusion, when the marketing for the goods could “give rise to the mistaken belief” that the goods come from the same source (see TMEP 1207.01(a)).
The office action went on to explain that West’s SUNDAY SERVICE merchandise is associated with West’s Sunday Service musical performances, creating too much room for overlap with Jonas’s goods and services. The refusal states, “these marks are likely to engender the same connotation and overall commercial impression” in connection with the respective goods and services.
West’s application for the SUNDAY SERVICE trademark was suspended at his lawyers’ request, on May 11, 2020 until legal proceedings are resolved.
Still, it seems that Jonas’s most recent Sunday Service show was curiously timed. West’s application was filed in July 2019, and Jonas held a Sunday Service reunion show just a few months later. Online searches suggest that Jonas had not used the mark in commerce for many years before West’s application was filed. If a substantial settlement over the mark is made, Jonas’ Sunday Service shows may end up being one of the most lucrative DJ sets ever.
Rogue SUNDAY SERVICE Applications
The SUNDAY SERVICE trademark story does not end there: a company called 4K Enterprises filed applications for THE SUNDAY SERVICE COLLECTIVE, SUNDAY SERVICE AT THE MOUNTAIN, and THE SAMPLES (the name of the Sunday Service choir) in fall of 2019. The contact person listed, Doreonne Stramler, appears to be an audio designer on West’s Jesus is King documentary short. There is no attorney listed, so they appear to be pro se applications filed by Stramler himself. RON WINANS FAMILY & FRIENDS, filed July 10, 2020, is the only other trademark application by 4K Enterprises so far.
These two celebrity trademark strategies resulted in interesting lessons for likelihood of confusion and genericide. While LeBron James’s response to the TACO TUESDAY refusal may have been unexpected, it may prove useful to other would-be TACO TUESDAY users. Further, while Kanye West may not have expected a refusal for differing goods and services descriptions, the office action is key knowledge for others attempting to register marks for closely related goods.
In both cases, we have a rare glimpse into the strategies and perhaps mindsets of celebrities and their legal teams.
The many corresponding USPTO office actions hold lessons for commonplace terms, use-requirements, and likelihood of confusion issues. Non-celebrities may even find themselves borrowing celebrity strategies for confirming generic phrases, or warding off opportunists. Whatever the mark, we look forward to reading up on celebrity trademark stories in future.