“God of Thunder” meets the USPTO

Some of you may have heard that Gene Simmons (AKA “The Demon” AKA “Dr. Love” AKA “God of Thunder”), the bass guitarist for the band KISS, filed a trademark application to register the “horns” hand gesture on June 9, 2017. I’ve seen quite a few articles reporting on the application, but I’m not aware of any trademark attorneys that have weighed in on the registrability of the “sign of the horns.” I’ll give it a go.

My first thought is that the gesture is “generic” and therefore unregistrable. A mark is generic if “the relevant public would understand the term” to primarily “refer to that genus of goods or services”[1]. But how does this inquiry apply to gestures, as opposed to words or designs? I’m thinking that, where a gesture is so closely associated with a genus of services (like performance of rock music), as opposed to a brand or business (like a specific band), it’s not eligible for registration. Anyone who has been to a rock concert knows that the horns gesture is the universal symbol for approving of the performance in question.Sign of the horns

If the USPTO determines the mark to be generic or descriptive, Simmons would have to prove that the gesture has “acquired distinctiveness”, but I don’t think that argument will work here. Terms that wouldn’t ordinarily be registrable because they are descriptive or generic, may, “through usage by one producer with reference to his [or her] product, acquire a special significance so that to the consuming public the word has come to mean that the product is produced by that particular manufacturer.”[2] Let us know in the comments if you think an examiner would buy the argument that the consuming public only associates the “horns” gesture with KISS.

P.S.: Ashley pointed out to me that, if the gesture has a meaning in ASL, it could be relevant in the “genericness” analysis; however, it doesn’t look like the “sign of the horns” means anything in ASL. Additionally, it occurs to me that the applied-for mark may not be identical to the typical sign of the horns. If anyone has insight into the differences between the applied-for mark and the “sign of the horns” or the ASL significance of the “sign of the horns”, please jump in and let me know.

by Alex Hecker


[1] In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682, 1685 (Fed. Cir. 2009); H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986).

[2]TMEP §1212; Nims, Unfair Competition and Trademarks at §37 (1947).

So, you received a “descriptiveness” refusal?

If you’re reading this, it’s probably because you received an Office Action from the USPTO on the grounds that the trademark you’re applying for is “descriptive.” Applicants whose marks have been refused on descriptiveness grounds have three options: (1) move the application to the Supplemental Register, (2) abandon the application, or (3) file a response to the office action.1lvvg6

Background

Trademarks that are “descriptive” aren’t eligible for registration on the Principal Register unless the applicant can demonstrate that the mark has become distinctive of the applicant’s goods in commerce. A trademark is “descriptive” if it “merely describes a feature, characteristic, purpose or function” of applicant’s goods or services.  Examples of marks that the USPTO has found to be descriptive include “APPLE PIE” used to identify potpourri and “BED & BREAKFAST REGISTRY” used to identify lodging reservations services.

Move the Application to the Supplemental Register.

Trademarks may be registered on the Principal Register or the Supplemental Register. The Principal Register grants the broadest protection to a trademark, because it creates a presumption that the mark is valid and in-use nationwide. However, marks that are “descriptive” can’t be registered on the Principal Register and are only eligible for registration on the Supplemental Register.

The main drawback of a registration on the Supplemental Register is it does not establish that the registrant has a proprietary interest in its mark. Basically, a registrant must first prove that consumers associate its goods with the registered mark in order to exclude third parties from using it.

Nonetheless, the Supplemental Register does still provide some protection. A registration on the Supplemental Register allows its holder to use the ® symbol in connection with the mark. This signifies that the mark is registered, and a lot of would-be third-party trademark users don’t realize the distinction between the Principal and the Supplemental Registers. Additionally, the USPTO will still refuse third-party applications to register marks that are confusingly similar to a mark registered on the Supplemental Register.

Perhaps the most common strategy for dealing with a “descriptiveness” refusal is registering a mark on the Supplemental Register and then “upgrading” to the Principal Register. As mentioned earlier, substantially exclusive and continuous use of a mark for five years is evidence that “the mark has become distinctive of the applicant’s goods in commerce” and is therefore eligible for registration on the Principal Register. Accordingly, an unopposed registration on the Supplemental Register for five years can be used as evidence that a mark as become distinctive and is therefore eligible to be on the Principal Register.

Abandon the Application.

An alternate solution to registration on the Supplemental Register is to simply abandon the application and wait five years to refile a full-fledged application for the Principal Register. Many applicants prefer this method because it allows them to fly under the radar with their use of the mark. Also, a registration on the Supplemental Register is tantamount to an admission that the registered mark is “descriptive” or otherwise doesn’t meet the requirements of the Principal Register. The drawback of abandoning the application is that the applicant will not be entitled to use the ® symbol.

Office Action Response.

An Office Action response is a set of legal arguments submitted to the USPTO asserting that a mark is eligible for registration. The biggest issue with filing an Office Action response is the costs associated with it. Office Action responses for descriptiveness refusals typically require a significant amount of research and drafting, and the legal fees can run in the thousands of dollars in connection with their preparation. Furthermore, responding to an Office Action does not guarantee registration of the applied-for mark. This is a usually only a good option only where there is a compelling need to have the mark registered as soon as possible.

By Alex Hecker