Pattishall IP Blog

March 17, 2017

Game Over for EMPORIUM ARCADE BAR service mark: “Merely Descriptive”

Filed under: TM Registration, Trademark (General), TTAB — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:31 am

 

 

 

 

By Jacquelyn R. Prom

On March 8, 2017, the Federal Circuit ruled[1] that the phrase ‘Emporium Arcade Bar’ is merely descriptive of arcade and bar services.

Emporium Arcade Bar is a popular Chicago bar offering a variety of old-school arcade games, pinball machines, draft beers, and cocktails. This crowd-pleasing spot opened its first location in 2012 in Wicker Park. In 2014, it opened a second location in Logan Square.

In 2014, Emporium also applied to register     as a service mark.[2] The Examining Attorney refused registration on the ground that the phrase is merely descriptive of Emporium’s arcade and bar services. Emporium tried to overcome the refusal by disclaiming the exclusive right to use ‘arcade bar’ apart from the mark as a whole. The Examining Attorney, however, required the additional disclaimer of ’emporium’ before the trademark could register. Emporium refused. It argued a disclaimer for ’emporium’ was unnecessary because the term does not immediately convey knowledge of its arcade and bar services. The Examining Attorney disagreed and issued a final refusal. Emporium appealed to the Trademark Trial and Appeal Board.

The TTAB affirmed the refusal,[3] finding ’emporium’ to be merely descriptive of arcade and bar services. Emporium again appealed, this time to the Federal Circuit.

The Federal Circuit affirmed the TTAB’s decision, ruling that the composite mark could not be registered without a disclaimer of all the wording due to each term’s descriptive nature. In reaching this conclusion, the court relied on dictionary definitions of emporium, arcade, and bar, as well as third-party trademark registrations that disclaimed ’emporium’ for restaurant, catering, and bar services.[4] The Federal Circuit also rejected Emporium’s argument that ‘Emporium Arcade Bar’ is a unitary mark. For these reasons, the court held ‘Emporium Arcade Bar’ was merely descriptive.

So for now it is game over for ‘Emporium Arcade Bar’ unless it is willing to disclaim all the wording in the composite mark, including emporium.

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[1] In re: Ddmb, Inc., Appellant, No. 2016-2037, 2017 WL 915102 (Fed. Cir. Mar. 8, 2017)

[2] Ser. No. 86/312,296

[3] In re Ddmb Inc., 86312296, 2016 WL 552609 (Jan. 29, 2016)

[4] E.g., Reg. No. 2216510 for the mark THE FLYING SAUCER DRAUGHT EMPORIUM, registered with a disclaimer of DRAUGHT EMPORIUM for “restaurant and bar services”; Reg. No. 3304948 for the mark MCDADE’S EMPORIUM, registered on the Supplemental Register with a disclaimer of EMPORIUM for “restaurant and bar services”; Reg. No. 2741163 for the mark THE FOOD EMPORIUM, registered under Section 2(f) with a claim of acquired distinctiveness and with a disclaimer of EMPORIUM for “retail grocery store and delicatessen services” and “catering and take-out delicatessen services”; and Reg. No. 2352358 for the mark GARDEN EMPORIUM, registered with a disclaimer of EMPORIUM for “catering services and restaurant services.”

 

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

November 22, 2013

“THANKSGIVUKKAH” Convergence of Thanksgiving and Hanukkah—The Latest Pop Culture Trademark Sensation

Filed under: TM Registration, Trademark (General), Uncategorized — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:54 am

By Belinda Scrimenti, Partner

Many media outlets are asking:  Where is Adam Sandler when you need him?[1]  His well-known Hanukkah Song is due for a new verse that celebrates a hot new holiday “trademark.”

Popular culture events frequently are reflected in trademark filings.  The latest:  “THANKSGIVUKKAH” – This year’s rare convergence of Thanksgiving with the first full day of Hanukkah.   According to reports, the last time the overlap occurred was in 1888, and physicist Jonathan Mizrahi has calculated that the event will not occur for another 79,000 years.[2]

Indeed, this “once-in-eternity” event has brought a “cornucopia of money-making” opportunities as described by USA Today.[3]  And where there’s a money-making opportunity, there must be a trademark.

Reportedly, the “Thanksgivukkah” term was coined by a Boston resident, Dana Gitell,[4] who had the foresight to protect the mark by obtaining trademark registrations for the term, in Class 16 for greeting cards and other party goods, and in Class 25 for t-shirts and baby garments.  The applications, based on a stated first use date of December 3, 2012, were filed one day later, but nearly a year before the 2013 holiday.[5]

In another oft-reported story, a 9-year-old New York boy, Asher Weintraub, “invented” the “Menurkey” – a turkey-shaped menorah – and with his parents’ help, raised more than $48,000 on Kickstarter for the product.[6]   They have already filed for a federal trademark registration.[7]

Anxious to get in on the “Thanksgivukkah” trademark action?  Despite many media references to “Gobble tov,” as of this writing nobody has sought to register a trademark for it.  Also available:  “Hanu-Giving” and “Challahday Greetings,” the latter of which was first registered back in 1985 and has long since expired.

The trademark office is often a reflection of popular culture, but not surprisingly, many of these marks either never make it to registration, or are quickly forgotten and abandoned.  Government and historical events often spawn these filings.   For example, seven applications have been filed that incorporate the term “Obamacare” – mostly related to insurance services.  Three have already been abandoned, and four have pending office actions.  Nevertheless, this volume of filings pales in comparison to the adoption of other government catchphrases.

Remember the Iraq War’s “Shock & Awe”?  Within hours and days following the initial attack on Baghdad, applications for “SHOCK & AWE” in various formulations started flooding in to the USPTO.  Not counting applications for other marks incorporating the terms, 36 “SHOCK & AWE” applications were filed for everything from golf clubs to pesticides, lingerie to fireworks, and even “infant action crib toys.”  Of that, only four were eventually registered and remain on the register today.

During the same period, the ire over France’s lackluster support of the United States in the Iraq War led to another pop culture trademark spat.  French fries became “Freedom Fries.”   Within 60 days of the controversy, six companies sought to obtain a trademark registration for the term, and one tried two years later.  The first user of the mark ultimately prevailed in the registration battle, but years later, allowed the registration to go abandoned for failure to file the Section 8 maintenance declaration.[8]

The king of pop culture filings, however, occurred at the 2000 year millennium.  USPTO records reflect over 320 filings for trademarks incorporating the term “Y2K.”  Of that number, only 27 ultimately registered.  Today, only one registration remains on the register – for business consulting and information services.[9]

In contrast, the USPTO records may well be a good barometer of what is highly unpopular in the United States – as no one sought to register “FISCAL CLIFF,” “DEBT CEILING” or “GOVERNMENT SHUTDOWN”!

With no threats of the fiscal cliff, debt ceiling negotiations or a government shutdown hanging over the month of November, that brings us back to Thanksgiving.  A far more enjoyable government event remains free of trademark interlopers – no one has applied to register “TURKEY PARDON.”

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Belinda Scrimenti is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.   Belinda’s practice focuses on litigation in trademark, copyright, trade dress, and Internet law, as well as trademark prosecution and counseling.  She has worked on numerous matters relating to the registration, protection, and enforcement of trademarks, and litigated in over 40 U.S. federal district courts.

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[1] See, e.g., http://www.miamiherald.com/2013/11/12/3748399/this-year-thanksgiving-hanukkah.html; http://mainstreetmusingsblog.com/2013/11/04/thanksgiving-and-hanukkah-makes-thanksgivukkah/; http://www.kansascity.com/2013/11/11/4614193/this-year-thanksgiving-hanukkah.html
[2]
http://jonathanmizrahi.blogspot.com/2013/01/hanukkah-and-thanksgiving-once-in.html; see http://bigstory.ap.org/article/gobble-tov-american-jews-ready-thanksgivukkah
[3] http://www.usatoday.com/story/news/nation/2013/11/14/thanksgivukkah-products/3516299/
[4] http://en.wikipedia.org/wiki/Thanksgivukkah#cite_note-22
[5] See U.S. Registration Nos. 4,371,793 and 4,379,381.
[6] http://bigstory.ap.org/article/gobble-tov-american-jews-ready-thanksgivukkah; http://www.usatoday.com/story/news/nation/2013/11/14/thanksgivukkah-products/3516299/; http://online.wsj.com/news/articles/SB10001424052702304176904579112022682954300
[7] See U.S. Application Serial No. 85/956314.
[8] See U.S. Registration No. 3,220,999
[9] See U.S. Registration No. 3,677,414

August 22, 2012

The United States Patent and Trademark Office is Seeking Comments on Potentially Amending the Federal Trademark Act, the Lanham Act, to Require the Filing of a Declaration of Use After Three Years of Trademark Registration Rather Than the Current Five

Filed under: TM Registration — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 5:10 pm

by Phillip Barengolts, Partner

On August 16, 2012, the United States Patent and Trademark Office (USPTO) issued a Request for comment in the Federal Register on the potential amendment of the Federal Trademark Act – the Lanham Act – to require the filing of the first Affidavit or Declaration of Use or Excusable Nonuse (Affidavit) from between the third and fourth year after the issuance of a trademark registration, or the six-month grace period that follows.  See www.gpo.gov/fdsys/pkg/FR-2012-08-16/pdf/2012-20130.pdf.  Specifically, the USPTO “is interested in receiving public input on whether and why such an amendment is or is not favored.”  The deadline to submit comments is October 15, 2012.

Currently, under Sections 8 and 71 of the Lanham Act, the period to file the required Affidavit is between the fifth and sixth years after the trademark registration issues.  This proposal would require Congress to amend the Lanham Act, and the USPTO cannot implement this change itself through a rulemaking or otherwise.

The purpose of the Affidavit is to eliminate “deadwood” (marks that are not actually used) from the federal trademark register.  For attorneys and companies actively involved in the clearance of potential trademarks, having an accurate trademark register is valuable, and reduces trademark selection costs.  However, as any diligent trademark attorney will tell you, just because a trademark registration has expired does not mean that the underlying trademark is not in use, nor does an active trademark registration reveal the scope of use in the marketplace – only an investigation can provide such details.

A potentially important consideration for this request by the USPTO is that an applicant for a trademark registration in the U.S. relying upon a foreign trademark registration (under Sections 44(e) an 66(a) of the Lanham Act) does not need to submit a specimen of use to obtain the registration.  Thus, such registrations would now be subject to a use requirement two years sooner.

The specific questions on which the USPTO seeks comment are:

1.    Is ‘‘deadwood’’ on the trademark register a concern of yours, and what impact do you believe it has?

2.   Do you favor or oppose an amendment to shorten the first filing deadline for Affidavits or Declarations of Use or Excusable Nonuse under Sections 8 and 71 as a means of ensuring the accuracy of the trademark register? (Please explain why.)

3.   If you favor shortening the deadline, what time period do you believe would be most appropriate for the first filing deadline?

4.   Are you concerned that an amendment to the first Section 8 and 71 affidavit deadline would foreclose the ability to combine the filing with the filing of an Affidavit or Declaration of Incontestability under Section 15? What impact do you believe separating these filings would have?

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Phillip Barengolts is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Mr. Barengolts’ practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  He teaches trademark and copyright litigation at John Marshall Law School, and co-authored Trademark and Copyright Litigation, published by Oxford University Press.

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