In the past few decades, the brands associated with celebrities, social media influencers, athletes, musicians, and other power players in entertainment services have become more valuable than ever before. Entertainers are expanding into product endorsements and business enterprises using their name, brand, and reputation to promote products and services. At the same time, these superstars in the entertainment industry risk being imitated by businesses hoping to profit from using a mark, their likeness, or slogan associated with a celebrity.
Many famous people, such as Elvis, Madonna, Tim Tebow, and Kylie Jenner have realized the value and importance of a registered entertainment trademark. Some entertainment industry trademarks protect the owners’ likeness, a catchphrase, a signature move, or an entire product line. But simply being a celebrity does not guarantee your trademark application will be granted.
For better or for worse, our current society is drawn to famous people, “reality television” stars, film actors, professional athletes, and even social influencers who seem to have no identifiable talents beyond being attractive. The savviest of celebrities have parlayed their fame into smart business opportunities where they can sell just about anything using their name, face, or reputation. The wisest business people understand that a registered trademark in the entertainment services category can help protect their reputation and limit others from using their unique brand.
One of the most lucrative examples is reality star Kylie Jenner whose net worth is estimated at $1 billion. She has successfully applied for registered trademarks to protect her extensive product lines including cosmetics, clothing, and fitness tips. On the other hand, sometimes selling your trademark rights can be a wise financial decision. In 1992, sports announcer Michael Buffer obtained a registered entertainment trademark for his signature phrase, “Let’s Get Ready to Rumble!” and later sold the rights to that introduction for $400 million.
When it comes to intellectual property, even celebrities need to comply with the rules and regulations established by the US Patent & Trademark Office (USPTO) to receive an entertainment trademark. In general, a registered trademark must be:
In 2012, Jay-Z and Beyoncé tried to apply for a trademark to protect their daughter’s name, “Blue Ivy Carter” because they expect her to be a cultural icon. The application was denied for two reasons. First, they did not provide any proof that the baby’s name was being used as a mark in commerce, and second, a wedding planner had registered an entertainment trademark for her business name, “Blue Ivy” in 2009. The USPTO specifically allowed the party planner to continue using that mark despite the musicians’ attempts to claim it as their intellectual property.
The USPTO has established 45 classes of products and services that qualify for trademark protection. The trademark class for entertainment services is usually Class 41: Education, Training, Sports, and Entertainment. This class specifically includes products and services intended to entertain and amuse people or provide recreational opportunities.
Your entertainment trademark application must also include a specimen of your proposed mark, name, logo, or brand. This can be difficult in the entertainment industry because not every mark can be placed on a physical product in the marketplace. If you want to register a service, your specimen mark could be scanned versions of advertising materials, business cards or stationary, or a webpage that links the service to the source or brand. Also, an audio file from a radio or television ad may be appropriate if it uses your mark and explains the related product or services.
The USPTO will reject a specimen mark that doesn’t indicate the service it covers. Other unacceptable samples for a Class 41 trademark include:
Before you spend too much time and money developing your mark, it’s important to run a trademark search to determine if your proposed trademark, or something substantially similar to your idea, is already protected. It’s critical to complete a comprehensive search before filing your application to ensure your proposed trademark is available. Your application will be rejected if your specimen looks or even sounds too similar to another product or service in the same classification.
Once you are certain your proposed mark is unique, you must complete the required form application and provide the requested information to the Trademark Office. If the trademark reviewing attorney has any questions about your application, you will receive an Office Action requesting more information, legal analysis, or further explanation. An experienced trademark attorney can be a valuable ally throughout the application process and beyond.
When your personal identity, celebrity status, social reputation, and future earnings are at stake, you need to protect your unique brand with an entertainment trademark. The experienced trademark attorneys at the Trademark Lawyer Firm, PLLC have successfully handled more than 6,000 trademark applications nationwide. We can guide you through a trademark search, complete and file your application, respond to Office Actions, and explain how to protect your future trademark rights.
We are located in Ann Arbor, Michigan but we proudly serve the entertainment industry nationwide as a top-rated resource for entertainment trademark services. To schedule a free 15-minute case consultation, give us a call at 888-504-0336 or fill out our simple online form today.
Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.
A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights.
A good example of this is disclaiming “café” if your services are for a café.
If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry.
In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.
Two dates must be specified in a trademark application:
Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade.
Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.
The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.