California Trademark Attorney® Blog

June 2012 Archives

Baseball Player's Trademark "That's A Clown Question, Bro" Gets Filed With USPTO

June 26, 2012,

beer-bottle-pouring.jpgCalifornia - On June 12, Bryce Harper, a right fielder for the Washington Nationals, uttered the instantly popular "That's A Clown Question, Bro" catchphrase after a game against the Toronto Blue Jays. Harper, who happens to be 19 years old and Mormon, was asked after the game if he would enjoy a beer. With a great deal of annoyance, the Nevada native answered, "That's a clown question, Bro!" In all fairness, the reporter was Canadian and the drinking age in his hometown is only 18. However, the viral buzz instantly caught on, the phrase started popping up everywhere and Harper's camp quickly filed for the phrase with the USPTO on June 13th.

The filing states that the phrase is being registered for use with t-shirts, sweatshirts, jackets, pants, shorts, hats, visors, gloves and shoes. Under Armour, a well-known sports clothing company, is set to begin manufacturing and selling t-shirts bearing the phrase immediately. Additional items will be produced if Harper's management determines that they will sell well. However, given the popularity of Harper and the viral phenomenon, it is likely that the t-shirts and any additional memorabilia bearing the now popular statement will quickly sell out.

Beer was not listed in the trademark application and Denver Beer Company is taking advantage of that fact by beginning sales of a beer named after the phrase. The beer, appropriately named Clown Question Bro Canadian Lager, is set to be on tap in time for the Colorado Rockies series against the Washington Nationals this week and is only being offered in Denver. Priced at five dollars for a 16-ounce draft beer, the brewery claims that the beer will not be offered long term. The Denver base beer company does not anticipate any issues with Harper management regarding the phrase, but they have a back up plan just in case. The beer name will quickly be changed to Clown Question Brau if Harper insists that the beer company stop using the registered phrase.

General Motors Trademarks 'Electra' Again - This Time for an Electric?

June 18, 2012,

automobile-plugin.jpgCalifornia - The world's largest automaker, General Motors, has filed a trademark application with the U.S. Patent & Trademark Office for 'Electra'. The application was filed on June 5, 2012 for "motor land vehicles, namely, automobiles, sport utility vehicles, trucks, vans, engines therefor and structural parts thereof." Although General Motors has been through the ups and downs with the U.S. economy, it remains a huge player in the auto industry.

This will be the second time that GM has pursued the trademark 'Electra'. The automobile giant was first granted ownership of the trademark on November 21, 1989. GM used the trademark for "motor vehicles, namely, automobiles, engines therefor, and structural parts thereof", almost identical to its most recent application filed in June of 2012. The trademark registration for 'Electra', number 1,567,028 was cancelled as of May 28,1996 and along with it went the Buick Electra. Although a fond but distant memory, the Buick Electra put in its time as one of Buick's luxury vehicles for thirty years. This Buick model appealed to many due to its various styles that included a convertible, sedan, and a coupe.

It has been 16 years since the original trademark registration for 'Electra' was cancelled and now enthusiasts are eagerly awaiting to see just what will come of GM's trademark application. Since GM filed the application under section 1(b) - intent to use, this requires GM to have "a bona fide intent to use the trademark in connection with the goods or services listed in the application." This requirement is based on Chapter 37 of the Code of Federal Regulations, Part 2.

The question at hand is if GM will bring the Buick Electra back from the dead with a new age model or will GM surprise us all by using 'Electra' for a new electric model vehicle. Could it be that GM is using a new and upcoming 'Electra' to go electric? Although GM filed in Class 1(b) it has also been rumored in the auto world that the leading auto company filed the trademark 'Electra' mostly head off other automakers from using the once popular vehicle model name.

Military Revokes Approval For Use Of Trademarks On Bibles

June 13, 2012,

bible.jpgCalifornia - The U.S. Military has recently revoked its authorization for use of military trademarks on bibles. In a statement, Navy officials reported that its trademark licensing division underwent a complete revamping in 2011. After reviewing all of its existing trademark agreements, it determined that the use of Navy trademarks on bibles did not meet the new standards. As a result, LifeWay, the company who publishes the military bibles, was notified that its trademark agreement would not be renewed. The Air Force Trademark Licensing Program claims it also withdrew its approval for trademark use in 2011. The Air Force did not allow for the depletion of existing stock, but specified that all copies must be immediately removed. Army and Marine Corps officials made no official comment, but its approvals were also withdrawn.

The Military Religious Freedom Foundation (MRFF) is claiming responsibility for the recent decision regarding the bibles. MRFF claims that it asked for removal of the bibles after receiving over 2000 separate complaints from military personnel. MRFF argues that sanctioning these bibles was a direct conflict with the United States Constitution, as well as a violation of Department of Defense regulations. According to military policy, endorsement of any non-federal entity is strictly prohibited. With that policy in mind, use of military trademarks on the covers of these bibles made the Holman Christian Bible appear as though it was the official bible of the U.S. Military. Because of the current U.S. conflict with fundamentalist Muslims in the Middle East, MRFF also claims that use of the military logos creates a security threat. MRFF insists that the conflict is a cosmic war between Jesus and Allah, and thus military endorsement of bibles is a national security issue.

Despite MRFF claims, the Department of Defense claims that removal of the bibles was strictly the result of a re-evaluation of trademark agreements and policies. However, some religious groups are calling this recent decision a cowardly move. These groups argue that military personnel from as far back as George Washington have used the bible and other religious texts for encouragement and counsel. They are calling removal of the military bibles a "reckless assault on religious liberty" and are demanding a congressional investigation.

The military-themed bibles are a product of B&H Publishing, owned by LifeWay Christian Resources of the Southern Baptist Convention. Lifeway publishes four versions of the Holman Christian Standard Bible, one each for the Army, Air Force, Navy and Marine Corps. Covers for each specific branch of the military include the name and insignia for each specific branch. The bibles reportedly offer devotional material and prayers for military personnel. LifeWay told Fox News Radio that it received authorization to use the official U.S. Military trademarks in 2003. However, it received notice last year that the authorization was being withdrawn. After selling existing copies, B&H replaced the official insignias with generic ones which it claims continue to sell well.

End of U.S. Rum Trademark War With Cuba Seems Near

June 8, 2012,

whiskey-in-glasses.jpgCalifornia - The fight between U.S. and Cuba over use of the trademarked Havana Club name in the U.S. appears to be nearing an end. Although it is currently distributed in over 120 countries, Havana Club rum was never distributed in the Unites States, because Cuba refused to allow the brand name to be sold or licensed within the borders of its bitter rival.

The trademark "Havana Club" came up for renewal with the United States Patent and Trademark Office in 2006, but Cuba has since been unable to renew the trademark. Cuba claims that the U.S. Treasury Department Office of Foreign Assets Control, which enforces the embargo, has not issued the license allowing Cuba to make the $200 renewal payment. Cuba subsequently sued the U.S. government over the issue and lost. The decision against Cuba was handed down on May 14th, beginning the 30-day countdown for the period in which the USPTO can cancel registration of the trademark. Under the 30-day timeline, the Havana Club trademark could expire and be available for new registration in the U.S. as early as June 13th, 2012.

Bacardi, the well-known distributor of rum, currently bottles a rum product that it calls Havana Club Rum. The limited quantity rum product has been distributed in Florida only, but Bacardi has announced plans to expand its sales into other states. However, Cuba considers the use of its brand name in the United States unauthorized, and accuses the U.S. of underhanded maneuvers. If its trademark is allowed to expire in the United States, Cuba promises retaliation against U.S. trademarks currently protected on the island. However, since most U.S. goods are barred from being sold in Cuba under the 50-year embargo, these threats seem hollow. This is not to say that Cuba's threats are all bark and no bite. Even with the current embargo limitations, owners of many popular trademarked food items could still face costly litigation to win back trademarked rights once the embargo is lifted.

Despite its recent loss and struggles over the use of the Havana Club name in the U.S., Cuba vows to continue fighting for its brand name. Proactive steps have been taken to allow the Havana Club rum formula to be sold under an alternate brand name that has already been registered with the USPTO. The French company who handles distribution has plans to distribute the Havana Club formula under the alternate name Havanista once the U.S. Embargo has been lifted.

Havana Club rum is one of the best selling rums in Cuba, and Cuba is confident the product could do well in the United States as well. Its Havana Club rum formula is exceptionally light and dry, primary because of charcoal filtering and an oak-barrel aging process, which allows for extra sweetness. The Cuban rum company also offers various other rums, ranging in price from a couple of dollars per bottle, to a high-end product that sells for over $1200 dollars a bottle.

RIM Wins in BBM Trademark Infringement Case

June 1, 2012,

cellphone_blackberry.jpgCalifornia - Research in Motion (RIM), the creators of Blackberry, won a hard fought victory in court today over use of the BBM trademark.

BBM, or Blackberry Messenger, is an instant messaging application that is sold pre-installed with the Blackberry smart phone. Despite the well-known name and nature of the application here in the United States, the use of the trademark BBM was recently challenged by Canadian television giant BBM Canada. BBM Canada filed a trademark infringement lawsuit with the Canadian federal courts over the use by RIM of its long-used and trademarked name BBM. A cease-and-desist letter had been sent to RIM in 2010, but the letter failed to illicit the response that BBM Canada had anticipated.

In the current trademark case, the court determined that although the trademarked term BBM was owned by the Canadian television company, the two combatants operated in two different industries. And although BBM Canada had long standing ownership of the mark for over fifty years, RIM had not infringed on this ownership because of the fact that they used the trademark BBM in a distinctly different industry. Therefore, confusion among consumers was held to be unlikely.

The news of the win its current infringement case comes on the heels of an earlier trademark infringement case involving RIM and its Blackberry products. In the earlier case, RIM was forced to make changes to its soon to be released Blackberry 10 BBX Operating System. Basis International, the owner of the confusingly similar trademark BBX, sued RIM in Albuquerque, NM federal court to prevent the use of its trademark in RIM's new product release. Blackberry was subsequently forced to make last minute changes to its operating systems and product release materials prior to its Blackberry 10 product launch.

This latest win against BBM Canada could not come at a better time for the beleaguered smart phone manufacturer. RIM has suffered an extremely difficult year with downturns in sales and layoffs resulting from product problems, including global outages and customer dissatisfaction. The latest round of Blackberry outages resulted in a class-action lawsuit against the manufacturer and is not likely to be resolved any time soon.