Bloomberg BNA’s Patent Trademark & Copyright Law Daily™is the IP industry’s premier news service, offering objective, timely,and reliable daily news coverage and commentary from leading IP law...
April 28 — The reports of Katy Perry's defeat at the hands of a federal trademark examiner are premature, according to a trademark practitioner who spoke with Bloomberg BNA on April 28.
A range of news outlets reported over the past week that an attempt by the pop music superstar to register a trademark related to her meme-generating Super Bowl halftime performance had been rejected or defeated.
However, according to Joanne Ludovici of McDermott Will & Emery, Washington, most of Perry's numerous registration applications were not affected by this rejection, and in any case, it was an initial rejection that is easily cured.
The story begins with Perry's performance on Feb. 1 during the halftime show of Super Bowl XLIX, televised from Glendale, Ariz.
Perry was accompanied on stage by several dancers in costume, two of which were dressed as sharks. One of the sharks—the one on the left—seemed to be dancing out of sync, and by the next day the “Left Shark” meme had taken hold across the internet.
Days later, Perry began filing a series of intent-to-use applications with the Patent and Trademark Office, seeking to register Left-Shark-related terms and images as trademarks.
Four were for simple word marks: “Left Shark,” “Right Shark,” “Drunk Shark” and “Basking Shark.” Two were for drawn images of blue-and-white colored sharks, one from the side and one straight-on.
Each application specified numerous classes of goods: cell phone covers, stickers, mugs, apparel and toys. As intent-to-use applications, Ludovici noted, these would have been accompanied by statements of how she intended to use the relevant term as a source indicator for these goods.
However, the applications for each also included use as a mark for a service: “Live musical and dance performances.” For these, Perry's applications were not intent-to-use applications. She claimed that the first use was during the halftime performance itself.
This one, limited portion of her applications was met with an initial rejection, Ludovici stressed.
The trademark examiner assigned to these applications simply determined that the appearance of the shark-costumed dancers in the performance itself was not a trademark use—that they were not indicating the source of the origin of the musical and dance performance that they appeared in.
“This is a substantive refusal, not a procedural one,” Ludovici said. “But it's not one that is insurmountable.”
“She filed under six classes and only the service mark class was refused,” Ludovici noted. “This happens all the time. She can do a ton of things to get that to registration. She isn't done. This isn't rejected.”
For example, Perry could just convert that to intent-to-use, like the rest of the applications and then use the shark designs that she applied for as trademarks.
“Some trademarks take time to acquire distinctiveness, and the examiner was saying this isn't enough,” Ludovici said.
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to firstname.lastname@example.org.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to email@example.com.
Put me on standing order
Notify me when new releases are available (no standing order will be created)