First Trademark Application of 2018 Gets the Year Off to a Strange Start
It is official: the first trademark application of 2018 is serial number 87739622 for "the image of a cat's face and shoulders with the word 'HAIL' in uppercase lettering at the bottom of the mark" claiming "animal advocacy, t shirts, stickers, entertainment services." Let's unpack this one a bit, and see if we can figure out what lessons this application may teach us for use in the coming year.
Beginning with a bit of background, this application was filed by an individual in Seattle, Washington, and there is no attorney of record listed. Although the mark is listed for individual ownership, the applicant is also the registered agent for Hail Kitty, LLC in Washington. The company filings also provide for alternate names of Hail the Kitty, LLC, or Hail the Meiji Kitty, LLC. And who is the Governor (manager or managing-member) of the LLC? Meiji Kitty herself — the very kitty shown in the mark. Meiji Kitty is no slouch, providing online reviews while also running her LLC. She is not, however, a trademark attorney (from what we can tell), and so perhaps did not identify some of the issues in this filing.
First, this application is a 1(a) application, meaning the applicant declares that the mark has been used in commerce prior to filing. With a claimed first use date of October 20, 2012, the applicant puts a stake in the ground and asserts that this particular image has been used to designate the source of the claimed goods or services since that date. While this may be true, a priority date from over five years ago can open up the mark to later challenge. For example, if a challenger to the mark could demonstrate that this particular image hadn't been consistently used to identify the source of the claimed goods or services during the intervening years, there could be a basis to allege fraud on the United States Patent & Trademark Office (USPTO). Given that the applicant signs a declaration acknowledging that "willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001,” and that § 1001 specifically provides for imprisonment of not more than 5 years, one should be particularly careful prior to making such a declaration. Failing to properly designate a first use in commerce date can create legal headaches and result in unnecessary expense and lost time. The takeaway? Take extra care to be certain that the mark has been used in commerce beginning on the claimed date and with no significant breaks in use prior to the application.
Second, this application is filed under International Class 35, which generally covers "advertising; business management; business administration; office functions." Importantly, class 35 is a class specifically for services, and cannot be used to claim protection for physical goods. Further, even for services, one must be careful which class to use, as particular services fall under other classes. As you recall, applicant is claiming "animal advocacy, t shirts, stickers, entertainment services." Animal advocacy? While this is a service, it often is found under class 36 as a part of charitable services. T shirts are physical goods, and cannot be claimed under class 35 — rather, they fall under class 25 for clothing. Stickers are also a physical good, generally falling under class 16. And entertainment services, properly a service, will generally be found under class 41. These numbers matter, as filing in an improper class may result in the USPTO issuing an office action, which identifies an issue with the application requiring resolution prior to registration. If an application is filed in a fundamentally incorrect class, the mark will not proceed to registration, the filing fees will not be refunded, and the "place in line" in the process is lost. The takeaway? Applicants must understand and carefully select the proper class for a particular mark. One helpful tool for this is the online Trademark ID Manual, which allows the public to search for terms in the trademark database and provides guidance on which classes are appropriate.
Third, this application provides the following specimen (example of use):
As trademarks serve to identify the source of a good or service, the question becomes whether this specimen supports the claimed good of "t shirts." Putting aside the matter of being filed in an improper class, the specimen itself is an issue, as it suggests that the mark is a design on the front of the shirt. Unfortunately for applicant, according to § 1202.03(a) of the Trademark Manual of Examining Procedure (TMEP), "matter that is purely ornamental or decorative does not function as a trademark." The mark specimen should demonstrate how the mark designates the source of the shirt itself, rather than being a design simply placed on the front of another provider's physical shirt. Thankfully, TMEP § 904.03(i)(B)(2) provides very clear guidance on what would suffice for a specimen, and could save applicant a likely office action. The takeaway? Take the time to clearly understand what type of specimen is required prior to filing. Not only will this increase the chances of getting a mark granted — it also educates the applicant on what ongoing use in commerce will be sufficient to maintain trademark protection once a federal registration is granted, avoiding the risks of the mark being declared abandoned.
Lastly, this application was filed as a TEAS Reduced Fee, which lowers the per-class government filing fee to $275 per class. If, however, the applicant used the Trademark ID Manual to select preapproved language for goods and services, she could have reduced this fee even further to $225 per class by filing as a TEAS Plus application. This not only saves money, but can speed up the processing time for the application by reducing office actions to modify particular wording in the application. The takeaway? The USPTO has mechanisms by which applicants can save money, speed up processing, and improve the chances of obtaining registration — but the applicant must seek out and use those tools.
The issues above could likely be avoided by engaging an experienced trademark attorney who deals with these issues regularly. Further, trademark applications don't stand alone, but rather are part of a larger business strategy. Retaining counsel with the knowledge and insight to assist with overall growth is a key step in building the foundation for long term success.