As is expected, most well-known rock bands have an extensive portfolio of trademarks registered in the United States Patent and Trademark Office. (Most likely, there are foreign registrations as well, which is beyond the scope of this discourse.) This is a look at the trademark registrations of The Grateful Dead, and related entities.

The Grateful Dead was an American rock band founded in the 1960’s, who recorded and toured extensively until the death of its lead guitarist, Jerry Garcia, in 1995. Mainly through touring, but also its recordings, the Grateful Dead generated a loyal and devoted following of fans, colloquially known as “Deadheads”. Following the death of Garcia, merchandising became a more important aspect of their business model.

A search of the Federal Trademark Register for marks owned by the Grateful Dead reveals over 25 registrations which are still alive, some dating back as early as the 1970’s.

Naturally, the name Grateful Dead is protected by several trademark registrations. Since as early as 1974, the band registered the trademark for its name. For example, the U.S. trademark registration bearing registration number 0982352 protects the name in connection with live performance by a musical group. This registration, as it is for a standard character mark, is broad in its scope of protection. After the band formed its own record label, another standard character mark registration was obtained in the 1980’s for use with sound recordings. The name has been protected by the band many times since, and in connection with a wide variety of goods and services. Examples of these goods and services include t-shirts and other articles of clothing, stickers, posters, decals, etc. Even after the death of Garcia, the band has continued its merchandising enterprises by registering the band’s name in connection with loungewear, neckwear and the like.

Likewise, the band, which is well known for its associated artwork and iconography, has multiple trademark registrations to protect its logos. Familiar Grateful Dead logos such as the Skull and Lightning, Skeleton and Roses, Dancing Bears, Space Your Face and Lightning Bolt are the subject of trademark registrations, both in connection with music and also in connection with merchandise.

As is evident, the Dead have an extensive portfolio of trademark registrations and appear to be well protected. It is doubtful that anyone beside the band could profit from the use of the Grateful Dead’s trademarks, or anything similar, without the risk of trademark infringement. This model should serve well to instruct other musical acts on the protection of their brands and extension into merchandising.

I get calls in my office frequently from clients who have received a solicitation in the mail which request payment of money. The scenario goes like this. You, or more likely your attorney, filed an application to register your trademark in connection with particular goods or services in the United States Patent and Trademark Office (USPTO.) Your application, including your contact information, is a matter of public record. Unscrupulous companies mine this information and send the applicant a solicitation requesting payment of money. In most cases, the services offered are not required in order to obtain the trademark  registration.  Even worse, some of these companies have been making their solicitations appear as if they are official business from the government. As such, these are typically scams. One such  company has been sent a cease a desist letter from the government.  I always tell my clients for whom I have filed trademark applications, if it doesn’t come from my office, your response is not required.

One of the more common reasons that an application to register a trademark is rejected is that the mark as it is shown on the specimen is merely ornamental. This common basis for rejection is often found when applicants file an application to register a trademark on their own, pro se, without the aid of an experienced trademark attorney. Note that this is typically an issue of the manner in which the mark appears on the specimen and not a issue with regard to the mark itself. However, this can be fatal to the application if the applicant did not have appropriate specimens at the time of filing the application.

A mark will be deemed to be merely ornamental if the mark appears on the specimen as a merely decorative feature, and does not identify and distinguish the applicant’s goods. As such, the decorative matter does not function as a trademark.

This rejection is most often seen when the specimen provided is a t-shirt or article of clothing and the mark is splashed in large font on the front of the shirt.  This issue is not limited to clothing, however. The issue of ornamentation may arise when the application to register the mark is in connection with mugs, printed matter, or other goods.

As such, it is important to be sure that the mark is used as an identifier, i.e. a brand name or the like, or the application might be rejected. Worse, it may not be a rectifiable issue.

Infringement without likelihood of confusion or how congress has created broad protection for the Olympic symbols. The Amateur Sports Act of 1978 crafts an exception for the usual requirement of likelihood of confusion in a determination of trademark infringement. In pertinent part, the Act states that without the consent of the U.S. Olympic Committee, the Olympic symbols, (i.e., the familiar rings and other symbols of the Olympics) are reserved. Any person who uses these Olympic symbols, without consent of the USOC, for the purpose of trade or to induce the sale of goods or services, or the like, is subject to civil litigation. In other words, there is no need to prove likelihood of confusion, as would normally be the standard, in order to prove trademark infringement in the case of the defined Olympic symbols.

Trademarks that are merely a surname are marks that consist merely of a last name or family. These marks are not immediately eligible for trademark registration absent a showing of acquired distinctiveness. This rule of law is based on the social policy that people should be entitled to use their own surname in business in connection with a product or service. The trademark examiner may look at several factors to determine whether or not the mark is merely a surname. Among these factors are how common or rare is the surname, whether the surname is associated with any of the trademark applicants, and whether the trademark has other meanings other than as a surname.

However, once the public associates the surname with a particular source of the product or service, the surname has acquired so-called secondary meaning. This may occur through substantially exclusive and continuous use of the surname in commerce in connection with the goods or services. In this case, the mark is said to have acquired distinctiveness and may be eligible for trademark registration.

Associated Press
NEW YORK — Anti-Wall Street demonstrators are trying to trademark the phrase “Occupy Wall Street” before anyone else does.

Leaders of the protesters in lower Manhattan’s Zuccotti Park filed an application Oct. 24 to trademark the name of their movement with the U.S. Patent and Trademark Office, said Samuel Cohen, one of their attorneys.

“The filing was primarily a defensive move to make sure that no persons not affiliated with Occupy Wall Street were attempting to use the Occupy Wall Street name for improper purposes,” Cohen said Monday.

The application was filed by Victoria Sobel and Pete Dutro, two leaders of the movement who handle its finances. It requests use of the phrase in various forms of merchandise, including backpacks, luggage, clothing and headwear.

The group also wants to use the name in periodicals and newsletters and on a website that features educational materials related to the Occupy Wall Street movement.

The demonstrators have been using a silk-screening station in Zuccotti Park to print T-shirts that say “Occupy Wall Street,” Cohen said.

“Nearly all nonprofit organizations trademark their names,” Cohen said. “And the purpose is to avoid consumer confusion.”

To complicate matters, two other parties also have filed applications to trademark the phrase.

On the same date, Arizona-based Fer-Eng Investments LLC filed a similar application that covered merchandise but not newsletters or periodicals. And on Oct. 18, Robert and Diane Maresca, of West Islip, N.Y., filed to trademark the phrase “Occupy Wall St.”

Simply being the first party to submit a trademark application does not guarantee approval, said trademark attorney Daniel Kirshner, in East Brunswick, N.J. The party that can prove it was the first to use the phrase in commerce likely would have an edge, he said.

But simply printing T-shirts is not enough, he said.

“I get clients all the time that say, ‘I want to print a bunch of T-shirts and get a trademark registration,’” Kirshner said. “The patent office doesn’t think that’s a trademark. That’s decorating a shirt.”

—Copyright 2011 Associated Press

Marks that are “primarily geographically descriptive” are marks that consist primarily of a generally known geographic place or location. These marks are considered to be descriptive and are not immediately eligible for trademark protection absent acquired distinctiveness through continuous and exclusive use of the mark in commerce. Marks that are primarily geographically descriptive, like other trademarks should be free for all to use in a descriptive sense.

Mark that are primarily geographically descriptive may be eligible for trademark protection and trademark registration upon acquiring distinctiveness. This is the same rule of law that applies to any other descriptive trademarks. In other word, in the perception of the relevant consuming public, the mark which was once primarily geographically descriptive, has now become identified with the source of the product or service.

A different rule of law applies to trademark that are geographically deceptive. A mark is geographically deceptive if 1) the primary significance of the mark is a known geographic place or location 2) the goods or services do not originate in the geographic place in the mark 3) purchasers are likely to make the goods-place association, that is, purchasers are likely to make the assumption that the goods originate in the geographic plane or location, and 4) the misrepresentation regarding the geographic location is likely to be material in purchaser’s purchasing decisions. Marks that are geographically deceptive may not be eligible for trademark protection, and trademark registration, even with a showing of acquired distinctiveness.