The Biggest Trademark Fail of All Time?
In 2014, an Indiana based company spent an estimated $50,000 trying to register 152 trademarks. But in just a few years, every single one of those applications had been denied. How did this happen? And was this the greatest trademark fail of all time?
Let’s examine the legend of the Trademark King.
What happened?
As a business and trademark attorney, I’ve seen people make all types of mistakes when filing trademark applications. But when it comes to trademark blunders, I don’t know if anything tops this.
On October 30th, 2014, Trademark King Inc. was formed in Indiana. The very next month, the company filed 152 trademark applications. 152 trademark applications within a couple months of incorporating your business is wild. I don’t know if that’s a record, but it’s got to be close.
But what makes this truly bizarre is that the company was trying to register trademarks of well-known brands, individuals, and sayings that they clearly had no right to use.
For example, here’s a shortlist of some of the trademarks that the company tried to register:
- Warren Buffett
- MuhammadAli.com
- 2016 NCAA Final Four Houston
- Disney.com
- Google.com
- Black Friday Deals
- Astonmartin.com
- NBA.com
- Philips Arena
With an estimated $325 filing fee per application, Trademark King Inc. probably invested at least $49,400 to file these applications. And every single one was doomed from the start.
What went wrong?
At this point you’re probably wondering, what were they thinking? What ill-conceived plan possessed this newly formed company to spend 50 racks trying to trademark common phrases, and famous brand names? One can only speculate. However, we can find some clues by looking at the office action responses connected with some of these applications.
In every trademark application, the applicant must identify the products and services they intend to sell in connection with their trademark. In this case, Trademark King Inc.’s services included creating trademarks for others, and selling or leasing registered trademarks to others.
Judging from this and the types of trademarks that were filed, it seems Trademark King Inc. thought they could register trademarks connected to well-known people and brands, and license them to businesses seeking utilize them.
But, their plan was doomed from the start. And here’s why…
1) A registered trademark protects more than the exact wording of the mark
Trademark King Inc. attempted to register a bunch of trademarks that incorporated well-known brand names. The company wrongfully believed that just because the exact names and phrases weren’t already registered, they could use them. However, the protection granted to a registered trademark extends beyond the exact spelling or wording of the trademark and includes similar names that are likely to cause consumer confusion.
For example, Trademark King Inc. attempted to register “ASTONMARTIN.COM”. Aston Martin is a famous luxury car brand, founded in 1913. They did not have had a registered trademark for “AstonMartin.com” in 2014. But that didn’t mean that “AstonMartin.com” was available for registration by someone else looking to capitalize off the Aston Martin brand.
Trademark King Inc. learned this the hard way. Their application to register “AstonMartin.com” was rejected, in part, because of its similarity to the previously registered trademark “Aston Martin”. The two were so similar that allowing them both to register would have confused consumers about who was behind the new trademark.
At the end of the day, if your desired trademark uses the same words or phrases as a previously registered trademark, there’s a good possibility that your attempts at registration will be denied.
2) You must properly identify the goods or services that the trademark will be used in conjunction with
Trademarks are source identifiers. Their purpose is to help consumers identify who is providing a product or service (i.e., the source). Therefore, the trademark application must identify the nature of the goods and services offered in connection with a trademark.
In the case of Trademark King Inc., they attempted to register trademarks for brand development services, and creating trademarks for others. However, it doesn’t seem that they intended to use all of the trademarks that they attempted to register as source identifiers for these types of services.
Apparently, they wanted to license names like “Black Friday Sale” and “Post Game Show” to others who would then use them as trademarks. It seems that Trademark King Inc. would not have used these names to advertise its own services. Instead these brand names were the service. And customers would have used them to sell their own goods. So, Trademark King Inc. would have had to register each trademark in connection with the goods and services advertised by the customer.
Properly identifying your goods and services can be tricky. But it is a critical piece in the successful registration of your trademarks.
3) You can’t use someone else’s name, image, or likeness in a trademark without their permission
To use and register someone else’s name as a trademark, you must get their permission. And your trademark application must include a signed statement from that person indicating their consent for you to use their name.
Trademark King Inc. attempted to register several trademarks using the names of well-known people, including Muhammed Ali, Warren Buffet, and Elton John. However, they didn’t provide evidence of consent from any of these individuals.
Remember, if you’re going to use a person’s name, image, or likeness in a trademark, you will need to submit proof of their consent to such use when you apply for your trademark.
4) Your trademark application must be accompanied by an acceptable specimen
Lastly, the specimens submitted by Trademark King Inc. were insufficient, which was part of the reason the applications were rejected.
Before a trademark is registered, the applicant must provide a trademark specimen. A specimen is essentially an example of the trademark being used in the real world in connection with the identified good and services.
Providing an example of how you use your trademark seems simple enough. But it is a requirement that trips up many trademark applicants. Especially those who do not have previous experience with the registration process.
Trademark specimens must meet specific requirements. For example, a screenshot from a website can serve as an acceptable specimen. But only if it provides sufficient purchasing or ordering information. Advertising materials can only be used as specimens if they are physically printed (virtual proofs are insufficient). And specimens showing any variation from the applied for trademark are typically rejected.
In this situation, Trademark King Inc. was unable to provide proper specimens showing evidence that they were using the applied for trademarks.
Conclusion
In the end, the story of the Trademark King is a cautionary tale. The trademark process is not as simple as it seems. It’s full of pitfalls and opportunities for mistakes. You may think you’re saving yourself money by filing a trademark application on your own. But in reality, you could be making a costly mistake. So consult with an attorney before filing a trademark application on your own.