As a human being, I feel it’s my responsibility to be kept abreast of what’s going on in the world. Thus, I read the news. But, sometimes when I do, the part of me that is a trademark attorney gets a little annoyed. Why? Because I have read numerous news reports that the trademarks of celebrities were “denied” and it’s not true.
This is a great opportunity for me to discuss something in trademark law called an office action.
Who are some celebrities who had their trademarks “denied” recently?
A few come to mind: Cardi B (who applied for OKURRR), LeBron James (TACO TUESDAY) and Kanye West (SUNDAY SERVICE).
They all filed a trademark application under an intent-to-use basis. This means that they intended to use the mark in the near future in association with different goods and services. The USPTO (federal agency that registers trademarks) allows this.
For an explanation about the intent-to-use application, you can read this blog post about Rihanna’s FENTY BEAUTY trademark.
What’s an office action?
In order to ultimately get a trademark registration, you have to submit a trademark application. If there are hiccups in this application process, you can get an office action from the USPTO. It’s a letter stating the reasons the USPTO thinks you shouldn’t be able to proceed with the registration process.
To clarify, an office action is NOT a denial of trademark application. Why? The applicant can submit an answer to the office action within 6 months of receiving it and explain why their application should be able to proceed. Many applicants are able to overcome an office action and proceed with their application.
Were Cardi B, Lebron, and Kanye sent office actions?
Yes, they were. Cardi B filed a trademark application in March 2019 to use OKURRR in the future in association with clothes. She received an office action in May 2019 for several reasons. One was because the USPTO thought that OKURR was a widely-used commonplace expression, one used by those in the drag community and celebrities to say OK. She had until November 2019 to reply to that office action. Cardi B replied to that office action in October 2019, but was sent another office action in November 2019. She has until April 2020 to respond to the latest office action.
LeBron filed an application in August 2019 to use TACO TUESDAY in the future in association with several things, including advertising/marketing services and podcasting services. He received an office action in September 2019 because the USPTO thought that TACO TUESDAY was a commonplace message that failed to function as a trademark. LeBron has until March 2020 to respond to this office action.
Kanye filed a trademark application in July 2019 to use SUNDAY SERVICE in the future in association with clothes. He received an office action in October 2019 because the USPTO thought that SUNDAY SERVICE was likely be confused with a trademark that was already registered. Kanye has until April 2020 to respond to this office action.
Their applications weren’t denied. They were, in a sense, paused for the time being.
Where can I learn more about trademarks?
You can read these blog posts about trademarks. I have written about the Blac Chyna-Kardashian trademark battle and recent Supreme Court cases that now permit offensive marks and curse words to be registered as trademarks.
You can also contact us here.
