“Empire Records” (1995), A conversation between Ethan Embry (“Mark”) and Rory Cochrane (“Lucas”):

Mark: Oh! I’ve decided I’m going to start a band.

Lucas:  Really?  [Leaning in], the first thing you need, is a name.  Then you’ll know what kind of band you’ve got.

Mark: Yeah. I know.  I know.  I was kinda thinking about, umm, “Marc”.  What do you think of that?

Lucas:  Is that with a “C” or with a “K”?

Mark: Well, my name is with [checking his nametag], a “K”, so I was thinking maybe my band could be with a “C”.  So that way, its kinda like that psychedelic, you know, trip thing.

So Mark, in an effort to know what type of band he has, goes to the Trademark Electronic Search System and conducts a search of *Ma{“r”1:2}{“ckqxh”1:2}*[bi,ti] in International Classes 009 (downloadable music sound recordings) and 041 (Live performances by a musical group).  He believes the results to be promising and decides to move forward with his trademark application.
Continue Reading Bona Fide Intent to Use as Applied to “Empire Records” (1995)

In the first Spiderman movie of the superhero era in which we still find ourselves, J. Jonah Jameson believed he thought of a catchy title for the bad guy.  To his assistant, he then said the following declarative: “Call the patent office, copyright the name “Green Goblin.” I want a quarter every time someone says it!”

This line demonstrates a mistake made by many, and it isn’t simply that the Library of Congress rather than the United States Patent and Trademark Office registers copyrights.  Instead, it illuminates a general misconception that through intellectual property protection, a common phrase can become the exclusive right of one individual or entity.  We see this belief personified in trademarks, when an individual or entity seeks to register a common—and arguably public—phrase.  Were such a registration to issue, the holder would have a legal presumption of ownership of the phrase and the exclusive right to use the phrase throughout the United States and any U.S. territory on or in connection with the goods/services listed in its trademark registration certificate.

A search of the USPTO’s Trademark Electronic Search System (TESS) reveals that the mark “BLACK LIVES MATTER” has been applied for thirty times.  The Office received its first of these applications in January 2015, and its most recent less than ten days ago.  Similarly, the mark “I CAN’T BREATHE” was first applied for in December 2014.  See U.S. Trademark Application No. 86479784.  Since May 29, 2020, the same phrase or slight alterations thereof have been applied for more than ten additional times, while applicants have applied to register the term “ALL LIVES MATTER” or iterations thereof eighteen times.

Unfortunately for the owners of these applications, all of whom have paid a filing fee of at least $225 USD—and in many instances more—most of the applications are unlikely to register.  Here is why . . .


Continue Reading Save Your Money: You Can’t Register that Social Movement Phrase

While fans of the country music band Lady Antebellum have long abbreviated the band’s name for convenience, the band announced on June 11, 2020 that it would be officially changing its name to “Lady A.”  Merriam Webster defines “antebellum” as “existing before a war, especially existing before the American Civil War.”  And while the band’s motivations for the name change seem pure, the name change itself created ripples in the trademark and entertainment world that should have been anticipated and could have been avoided.

Continue Reading Ladies A– Lessons Learned from “A” Name Change

Source: USPTO
Source: USPTO

Source: USPTO

According to the Houston Chronicle, Whataburger and DC Comics are in discussions over Wonder Woman’s new stacked W logo, which looks an awful lot like Whataburger’s stacked W logo. Whataburger and DC Comics have used similar stacked W marks for years without any concerns about a likelihood of confusion, which is the standard for infringement in a trademark infringement lawsuit.   According to Whataburger’s spokesperson, the discussions started because DC Comics filed “nine new trademark applications, covering a much more substantial list of goods and services than just comic books, including a variety of food and beverage products.”  Indeed, a search on the United States Patent and Trademark Office reveals that DC Comics filed application 86896081 to use the stacked W mark for vegetable juices and application 8689606 for various food products.
Continue Reading Is Wonder Woman’s Trademark Confusingly Similar to Whataburger’s?