Winning? Maybe. Registering? More than Tiger Blood is needed for a trademark application.

11 04 2011

In late March (the 19th through the 22nd), Charlie Sheen, through the company, Hyro-Gliff, filed 24 trademark applications covering some of his quotes such as “Duh, Winning,” “Violent Torpedo of Truth,” and “Rock Star From Mars.”

These applications were generally filed in connection with products and services such as candy, gambling machines, travel agencies, luggage, backpacks, and shampoos, among many others.  The entire application was filed in Class 9, even though the goods and services would likely need to be several classes (maybe all of them, who knows?)

When Sheen, through, Hyro-Gliff filed the applications, it was generally reported that he has trademarked those terms.  However, these applications are a long way from registering, and many of them may never register as trademarks.

It’s well known that Pat Riley, aka Riles & Company, received several registrations for the wording “Three-Peat” in the 1990’s.  The registration issued for shirts, bumper stickers, and collectibles; Riley/Riles & Company could not keep the mark from being used in news articles and descriptions of championship teams that have won three straight titles.  No, Riley would not receive royalties every time Three-Peat was used.

In fact, Riley’s registrations covered Three-Peat only with those products, and he wisely limited the mark’s use to a narrow group of goods.  If he had applied for a long list of items, there would have been serious questions as to whether he had a bona fide intent to use the mark on all of those products.

Riley also managed to avoid an ornamental refusal for t-shirts by using Three-Peat on the crest of shirts; trademark applicants routinely try to register slogans and catch phrases on t-shirts, only to be denied because there would be no association between the mark and the source of the product when it is used on a t-shirt.  However, there is a general exception for labels or wording used on the crest of the shirt because that’s how trademarks are commonly presented on shirts.

Not learning that lesson, Riley has filed for Threepeat without the hyphen in 2010.  That application has been refused registration because the wording is only ornamental, in other words, the wording is not shown in a way that would associate that would indicate the source of the mark.

Sheen and other celebrity trademark filers will likely run into a number of procedural issues as they try to register their catch phrases.  New York Jets linebacker Bart Scott has filed a trademark application for the Jets’ phrase Can’t Wait! in connection with clothing.  The application was filed as an intent-to-use application, so at some point, Scott will have to show the mark in use.  If the mark is splashed on the front of a t-shirt, he will likely see the same ornamental refusal.

As for Sheen’s application, he has filed for so many products that he will also have issues showing use.  However, his issues will involve a reclassification of his products and services into many different classes, and when he ultimately shows the marks used on products, there may be questions as to whether he actually had an intent to use his marks on all of the items listed in his application.  He may remove many of the products and services from his applications at some point; if he does so, then he may actually intend and use his marks for products such as toothpaste, table cloths, and pet foods, as his applications say.

As they stand now, they could be vulnerable to refusal by the Patent and Trademark Office, and certainly by third parties if they can show that Sheen never intended to use the products with any of the marks that register.

Defeat may not be an option for Sheen, but it’s possible that trademark protection will not be as well.

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