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.

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.

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.

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

The better question is this. Is it advisable to represent yourself at the USPTO. In the opinion of this writer, it is not. An experienced trademark attorney can advise the client with respect to the particular needs of the case. Furthermore, in many cases, it ends up being less expensive to hire a trademark lawyer to file the application properly at the outset, than to pay the lawyer later to amend an application that was improperly filed. Furthermore, a properly filed application is more likely to result in a trademark registration that issues at an earlier date that an improperly filed application. Moreover, in many cases, the Trademark Examiner prefers to deal with a trademark attorney rather than a pro se applicant who is not familiar with the law and the process and who tends to be more emotionally involved with the case. Finally, if your application is so filed sufficiently incorrectly, it may result in the application being denied and no registration resulting.

How does one prove that there is a likelihood of confusion? The pivotal case on this point is the so-called du Pont case which lays out the factors that the court may consider in a consideration of likelihood of confusion. Among these du Pont factors are:

1. The similarity between the marks. The closer the marks are to each other, the more likely the court will find that there is a likelihood of confusion. Conversely, the more different are the marks, the less likely. It is worth noting that there is no requirement that the marks be identical in order to find infringement by the later adopted mark.

2. The similarity between the products or services sold under the trademark. Obviously, the more closely related the goods/services, the more likely the court will find infringement. The less closely related, the less likely a finding of infringement.

3. The strength of the senior mark. If the senior mark is strong, there is a greater chance that the court will find that there is a likelihood of confusion, and hence infringement. Generally, stronger marks are those that have been used for longer periods of time, have been more extensively used and advertised, and are inherently distinctive (i.e. not descriptive or generic.)

4. Actual confusion in the marketplace. Although there is no requirement to prove actual confusion in order to prove infringement, actual confusion is a factor which may be considered by the court.

5. The likelihood that the senior party will bridge the gap to selling products or services sold by the alleged infringer.

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.

A mark that is merely descriptive of the product or service may become eligible for trademark registration if it acquires distinctiveness. Acquired distinctiveness (so-called secondary meaning) is developed through use of a trademark over time in conjunction with the product or service. As such, the public now perceives the mark as identifying the product or service from a particular source and no longer as descriptive of the product or service. The United States Patent and Trademark Office considers continuous use for five years of a descriptive mark in commerce in conjunction with a product or service as prima facie evidence of acquired distinctiveness.