HOW IT WORKS

The rules and procedures for registering a trademark are the same for everyone and every business.  The proposed mark has to represent a product or service of some type, it has to be used in commerce and it can’t be confusingly similar to another trademark.  In this case, Scott is attempting to register “can’t wait” under a 1(b) filing which means he isn’t claiming to be using the trademark right now but he’s promising that he has a bona fide intent to use the trademark at some future date.  The U.S. Patent and Trademark Office will not issue a trademark registration for Scott’s mark until he has begun to use it in commerce and has supplied their office with a specimen to prove how it is being used.  Of course, there will also be a time period in which the public can challenge his assertion of rights to this trademark by filing an opposition with the U.S. Patent and Trademark Office.

BART SCOTT’S GOODS

In this case, Mr. Scott has filed an application in which he claims a bona fide intent to use the mark “can’t wait!” on men’s, women’s and children’s clothing.  He isn’t claiming that he is using this mark in commerce right now only that he plans to do so.  He doesn’t actually have any rights to this potential trademark just yet.  He will have to produce a product, presumably a T-shirt that has “can’t wait!” splashed across the front before he will be able to convince the U.S. Patent and Trademark Office that he has rights to this mark.

ANSWER

The answer is “no” people, including celebrities, cannot claim trademark rights to words or phrases simply by virtue of vocalizing these in public (despite what pop culture might tell you).  The word or phrase has to be used in commerce on a product or service and it cannot be confusingly similar to another trademark.

Infringement generally means violating a right or privilege.  So in the trademark context infringement refers to violating another’s trademark rights.  If you need a refresher on trademark rights read this post.  Infringement can occur in two ways: Simple infringement and Technical Infringement.

SIMPLE TRADEMARK INFRINGEMENT

Someone uses your trademark without your authorization.  That’s it!  They have infringed upon your exclusive right to use your trademark.

TECHNICAL TRADEMARK INFRINGEMENT

Someone uses a confusingly similar name, word, symbol, sound or color (or any combination) in connection with the same or related goods or services in a way that is likely to confuse, deceive or cause consumers to make a mistake about the source of the goods or services.  This is often referred to as the “likelihood of confusion” infringement.  Since this is a little more technical here are some factors that the courts consider when determining whether a “likelihood of confusion” has actually occurred.

DUPONT FACTORS FOR LIKELIHOOD OF CONFUSION

1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
2. The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
3. The similarity or dissimilarity of established, likely-to-continue trade channels.
4. The conditions under which and buyers to whom sales are made, i. e. “impulse” vs. careful, sophisticated purchasing.
5. The fame of the prior mark (sales, advertising, length of use).
6. The number and nature of similar marks in use on similar goods.
7. The nature and extent of any actual confusion.
8. The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
9. The variety of goods on which a mark is or is not used (house mark, “family” mark, product mark).
10. The market interface between applicant and the owner of a prior mark.
11. The extent to which applicant has a right to exclude others from use of its mark on its goods.
12. The extent of potential confusion, i. e., whether de minimis or substantial.
13. Any other established fact probative of the effect of use.

Not all of these factors are always considered nor are they given equal weight.  However, it does give the holder of a mark some sense of what the law regards as infringement.

Is your mark qualified for federal registration or will the US Patent and Trademark Office (USPTO) deny your application?

Whether a mark is qualified for federal registration depends upon the following factors:

1. The USPTO must consider your mark to be distinctive.
2. The mark cannot legally conflict with another mark.
3. The mark has to be in actual use.
4. The mark’s use must be subject to Congressional regulation.
5. The mark cannot be scandalous, immoral or deceptive.

If you want to find out more about these five factors, please fill out our contact form and we will email you a pamphlet that explains in more detail the qualifications for obtaining a federally registered trademark.