LL Cool J recently filed a trademark application for the mark "The Influence of Hip Hop."
However, his trademark application was refused based on the specimen that was submitted. His attorneys then filed an appeal of the refusal.
What is a trademark specimen?
Each trademark application requires a trademark specimen. The specimen serves as evidence to show how the mark is used in public.
The USPTO will not issue a trademark registration until the applicant submits a specimen in connection with each class.
There are specific requirements for specimens in each class. "A trademark specimen must show use of the mark on the goods, on containers or packaging for the goods, on labels or tags affixed to the goods, or on a display associated with the goods. To constitute a display associated with the goods, a specimen must show use of the mark directly associated with the goods and such use must be of a point-of-sale nature. The Office may accept another document related to the goods or the sale of the goods when it is impracticable to place the mark on the goods, packaging for the goods, or displays associated with the goods."
For example, a mark connected with clothing must submit a specimen showing that the mark is shown on the label or tag. It is not enough that the mark is only printed on the item of clothing.
The Influence of Hip Hop Appeal
LL Cool J sought to trademark "The Influence of Hip Hop" for “[r]adio communications; radio broadcasting; radio broadcasting information; mobile radio communication; audio and video broadcasting services over the internet via telephones; transmission of radio programs by satellite, cable, mobile devices, and internet” in Class 38.
The Examining Attorney initially refused registration on the grounds that the specimen did not show that the mark was used in connection with broadcasting services.
LL Cool J responded that he amended the description to exclude the broadcasting services description, and that the submitted specimen was proper for the remaining services.
The Examining Attorney nevertheless issued as Final Office Action refusing registration of the mark.
On December 28, 2020, LL Cool J submitted an appeal of his trademark application refusal. He asserts: "The specimen submitted identifies Applicant (who is a well-known musician, actor, and entertainer) and identifies the radio communications and radio broadcast information at issue. (Specimen of Use, August 27, 2019.) As such, there is a direct association between the mark and the services."
The Examiner responded that the specimen did not show the proposed mark in connection with the type of services asserted. Specifically, "the mark used on the specimen of record refers to the name of the radio program being broadcast, not the services used to communicate or transmit the program[, Sirius XM.]" The Examiner emphasized that the mark was the name of the show and not the communication service.
Oral arguments are scheduled for later this month.
If you have any questions about your trademark application specimen, our office would be glad to assist.
Melissa D. Goolsarran Ramnauth, Esq. is a trademark and business attorney. She writes articles on trademark law. She also writes weekly articles on West Indian history and politics to raise awareness of the past, and educate the Caribbean diaspora on the need for legal contracts and trademarks. You can view these articles at www.westindiandiplomacy.com.
She graduated magna cum laude from the University of Miami with a Bachelor of Arts degree in Political Science, a minor degree in History that focused on the slavery and indentured servitude eras, a minor degree in Criminology, and a Juris Doctor degree.
MDGR Law, P.A.