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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.
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