In the weird and wonderful world of trademarks, lawyers are used too receiving odd requests for trademarks applications and advice. But occasionally the more experienced law firms—places like Kirton McConkie in Salt Lake City and Baron Warren Redfern in London, both of which deal with trademark prosecution and trademark infringements—receive requests to assist with truly bizarre trademark projects.
A trademark is a sign or a symbol that distinguishes your goods, products and services from your competitors and helps to build a brand identity—it creates a link between you and the things you sell. A trademark can be a word, a symbol or logo, a catchphrase, a figure or mascot, or even a short piece of music. Most trademark requests are perfectly normal but there have been some rather bizarre trademarks, especially when celebrities are involved. Here are five unusual trademark applications that have hit the news in the past.
The American TV show Jersey Shore is popular in a number of countries for the outrageous behavior by a group of young adults living and working together on the Jersey shore.
In 2010, the TV star Nicole ‘Snooki’ Polizzi attempted to trademark her nickname. Even for a reality star, trademark applications are not an easy process. In Polizzi’s case her application was denied by the USPTO (United States Patent and Trademark Office) . The name ‘Snooki’ is also used by a character in a children’s book and that name had already been trademarked by the book’s creators. Snooky the cartoon cat from the children’s book is spelled differently but sounds the same, therefore Polizzi had the chance to appeal her case.
Walmart’s ‘happy face’
In 2006, America’s retail giant Walmart attempted to trademark the yellow ‘happy face’ logo which has long been used to create the company’s brand identity in its stores. The attempt to register this mark seemed impossible from the outset, given that the smiley face image has been around since the 70’s. But Walmart persisted with its effort, even attempting to sue a man named Charles Smith for making a parody of their logo. Still, Walmart failed in its efforts and the smiley face remains available to the rest of the public.
Another popular reality star Paris Hilton, heir to the Hilton chain of hotels, made the unusual application to trademark the catchphrase that she used on her TV show: “That’s Hot”. To the surprise of many, her application was approved. Currently, Paris Hilton has three active That’s Hot trademarks in the U.S., for clothing, multimedia entertainment, and alcoholic beverages. With a successful trademark in hand, Paris Hilton went on to sue the greeting card company Hallmark for using her phrase alongside an image of her likeness on one of their cards without her permission. She won the case.
Social media giant, Twitter, became famous for their micro-blogging network that is now worth billions. But their market power was not enough to succeed initially in their effort to register Tweet as a trademark. Twitter’s trademark application was refused due to an earlier trademark right owned by a company ‘Twittad,’ which had already successfully trademarked the term “Let Your Ad Meet Tweets”. The irony must have been apparent to Twitter, since a company was actually referring to Twitter activity in the trademark that blocked their application to protect Tweet. Eventually, Twitter must have reached a deal with Twittad, because the Tweet trademark is now registered and in the hands of Twitter.
Finally, consider the popular sandwich shop ‘Subway,’ which tried to trademark the term “footlong” for their foot-long sandwiches. Subway even sent out cease-and-desist letters to other venders that were using the term before Subway has successfully completed the trademarking process. The food chain’s battle for trademark rights was a long one; finally, in 2013, their application was denied. Subway made a second attempt, applying to register the same term, but this time with their brand name added: ‘Subway footlong’ is now a registered trademark for their sandwiches.
But the saga continues. Customers have since been attempting to sue Subway, claiming that the sandwiches are not always a foot long. Subway commented on these claims, stating:
“We are committed to providing a consistent product delivering the same amount of bread to the customer with every order. The length however may vary slightly when not baked to our exact specifications. We are reinforcing our policies and procedures in an effort to ensure our offerings are always consistent no matter which Subway restaurant you visit.”
It seems that the more trouble you stir up, the more trouble comes back to you.
These examples show that the decision of what to trademark and how to secure those legal rights is not always as straightforward as it seems. Businesses and individuals that want to create a solid brand identity or otherwise protect their intellectual property (including patent applications or copyrights), are well-advised to use an experienced patent attorney or trademark attorney.