USPTO Tenatively Rejects Phish Drummer Jon Fishman’s Dress Pattern Trademark

By Scott Bernstein Aug 7, 2015 9:40 am PDT

Back in April it came to light that Phish had filed a case with the United States Patent And Trademark Office to trademark the pattern of red, cheerios-like shapes on a blue background found on drummer Jon Fishman’s iconic dress that he has worn at most of the band’s shows. A few days back the USPTO issued an “office action” that according to attorney and Phish fan Jack Lebowitz is a tentative denial of the band’s application by a trademark examiner.

Lebowitz explains the decision as such, “In other words, the fact that so many people have already made use of the ‘Fishman dress’ cheerios in trade mitigates against Phish, Inc. trying to register the mark as a trademark in the Principal Register of trademarks as exclusive to prevent others from using the mark (like they can with the Phish fish-word ‘logo’ for instance, or the word ‘Phish’ or their many other registered marks like ‘Gamehendge’).

“Phish’s application fuzzies up the length of time it has used the mark. The way that trademark process works, for marks that don’t have a widespread secondary meaning (household world wide products like Coca-Cola), you have to submit applications individually by class of goods item by item, for instance, dog leashes and iPhone cases. Phish’s application correctly states those marks were only used on those items sought to be trademarked the past several years, since perhaps 2012. The application cited ‘for entertainment related purposes’ since 1988 is REFERRING SPECIFICALLY TO FISHMAN’S DRESS, although, curiously, Phish did not seek a trademark in dresses/apparel or fabric for dresses. The examiner’s point (well the second of his two points) is that other people have already been using the design for fabric and items made from fabric for Phish to be able to GENERICALLY claim the design denoted official Phish/Dry Goods products — the fans beat them to that claim, and timing of use in commerce is very important to establish the exclusivity claim. The other point/ground for decision was that a repeating pattern itself was not specific enough to its use on any good to be a trademark for that good.”

“The examiner refers to the attached Internet evidence obtained via the Google search engine in which a similar pattern is used by various parties on various goods. For example, see the use of the pattern on various fabrics available from different providers on the Spoonflower website. Also note the various goods using a similar pattern that are available from various artists via the Etsy website. Assuming arguendo that these uses may have been inspired by the applicant’s use of the mark, the current use of such a design pattern is widespread and may not be capable of acting as an indicator of a single source for the goods or services. As further evidence that the design is non-distinctive, see the website excerpt showing various patterns incorporating single-color circles set against a single background color,” reads part of the office action USPTO issued.

Phish has been using the pattern on merchandise for a long time including on water bottles, t-shirt, blankets, dog collars and even cell phone cases. The band’s original filing stated that the iconic imagery had been used for “entertainment services in the nature of live musical performances” dating back to July 1988.

Phish Inc. may respond to the office action by satisfying one of two different response options noted in the office action. Here’s some of the legalease found in the office action:

Registration is refused because applicant seeks registration of more than one mark in its application. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; TMEP §1214.01. An application must be limited to only one mark. 37 C.F.R. §2.52; TMEP §§807.01, 1214.01; see 15 U.S.C. §1051(a)(1), (b)(1); In re Int’l Flavors & Fragrances Inc., 183 F.3d 1361, 1366, 51 USPQ2d 1513, 1516 (Fed. Cir. 1999).

In the present case, the mark drawing consists of a “swatch” showing the applied-for repeating-pattern mark within a rectangle, rather than depicting the pattern’s particular placement on an item. Generally, swatch-type drawings do not adequately depict the nature of repeating patterns, because the commercial impression of these patterns may change depending on the nature of the pattern, the type of item the pattern appears on, the particular placement of the pattern on that item, and the size and scale of the elements in the pattern as applied. Thus, a swatch-type drawing may encompass more than one mark and each mark may create a different commercial impression.

Accordingly, a swatch-type drawing is acceptable only when an applicant has submitted sufficient evidence to establish that the mark is applied to various items but that these various uses of the repeating pattern nonetheless create the same commercial impression. In the absence of this evidentiary showing, swatch-type drawings of repeating patterns, such as the mark drawing here, are deemed to encompass more than one mark. See Repeating-Pattern Marks, Examination Guide 1-15 (June 2015), available at http://www.uspto.gov/trademark/guides-and-manuals/trademark-examination-guides; cf. In re Upper Deck Co., 59 USPQ2d 1688, 1689-91 (TTAB 2001) (holding unregistrable a mark comprising a hologram on a trading card when the hologram may have a myriad of shapes, sizes, contents and the like); In re Elvis Presley Enters., 50 USPQ2d 1632, 1633-34 (TTAB 1999) (holding unregistrable a mark comprising all likenesses and images of one particular person in all possible manners of presentation without limitation as to age, manner of dress, or pose).

The use on the applicant’s goods and in connection with the services, as depicted on the specimens is inconsistent and does not create the same commercial impression. No two uses are the same. Specifically, the use on the good in Class 9 depicts the mark in a wallpaper fashion with a single full circle, surrounded by incomplete circles and does not show use of the mark in the off-set lining pattern depicted in the drawing. The use on the dog collar and dog lead is also inconsistent with the mark as depicted on the drawing. There is no complete circle depicted on either item, rather, there are a series of half circles in an off-set lined pattern with the applicant’s stylized “PHISH” logo interspersed in between the half circles. The use of the mark on the goods in Class 21 does not match the drawing of the mark due to the lack of a lined pattern of full circles and because the inclusion of the applicant’s “PHISH” logo interspersed with the circles creates a different commercial impression than the drawing of the mark. For Class 41, the applicant must indicate that the use of the mark is on a costume that is worn by band members in the delivery of the services.

Because applicant has submitted a swatch-type mark drawing that encompasses more than one mark, and has not provided evidence that the mark, as applied to the various identified goods and services, would create the same commercial impression, registration is refused. See 15 U.S.C. §§1051, 1127.

Head here to read through the full office action.

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