Daniel T. Goodwin Law
Katy Perry’s Left Shark – Trademark
During 2015’s Super Bowl halftime show, Katy Perry dazzled a worldwide audience of 118.5 million [http://www.billboard.com/articles/news/6458264/katy-perry-super-bowl-halftime-record] viewers, the largest halftime show audience in history.
During one segment of her performance, Katy was accompanied by several dancers in various beach-themed costumes, including two dancers who were dressed as sharks. When social media users commented en masse how the shark on the left (actually, Katy’s right) seemed to be incorporating its own moves instead of the planned choreography, a new Internet meme was born – Left Shark!
He became a symbol of individualism and doing things your own way.
KATY’S TRADEMARK APPLICATION
Katy’s lawyers wasted no time attempting to capitalize on the meme. Eight days after the Super Bowl aired, they filed applications with the U.S. Patent and Trademark Office (USPTO) for the phrases “Left Shark,” “Right Shark,” “Drunk Shark,” and “Basking Shark,” as well as for a design of a smiling, cartoon, bi-pedal shark.
After a trademark application has been filed with the USPTO and gone through a preliminary review and entered into the offices data system, it is assigned to a trademark attorney. The Examining Attorney who reviews an application will send what’s called an action letter if he or she has come across one or more problems with your mark or your application that warrant rejections.
Katy’s examiner, David Collier, found a number of problems with Katy’s shark design application.
Foundationally, to get USPTO approval of a mark as a trademark, the mark must function to identify and distinguish the applicant’s services from those of others and indicate the source. However, Katy’s examiner found that the image of the shark only identified a particular character. He wasn’t able to see evidence that the shark identified or distinguished Katy’s live musical and dance performances.
Next, Katy’s design application also needed to include a specimen of her mark being used in commerce for live musical and dance performances. Katy submitted a photograph of herself on stage at the Super Bowl with the shark-costumed dancer. However, the shark in the photo and application’s shark cartoon design did not match.
Said the examiner: “[T]he specimen displays the mark as a stylized depiction of a forward leaning shark in nearly a front profile with a portion of a dorsal fin, two pectoral fins and two legs and feet substituted for the caudal fin on the tail. The shark has five gills, a full mouth with teeth and round eyes with eyelids; however, the drawing displays the mark as a stylized depiction of an upright shark in full front profile with no dorsal fin, two full pectoral fins and two legs and feet; the shark has three gills and the sharks mouth appears without teeth; the shark also has oval eyes without eyelids.”
The application for “Left Shark” fared better than the application for the design, but the examiner still wanted further clarification on the identity of goods for the marks. For example, one of the classes of goods or services listed on Katy’s application was “Plush toys, action figures, figurines,” but the examiner wanted more for “figurines.” Would they be made out of rubber? Stone? “[B]one, ivory, plastic, wax, plaster, wood?”
NO TRADEMARK FOR KATY?
The week Mr. Collier’s USPTO Action Letters were released, the media declared that Katy Perry had “failed” in her attempts to trademark the Left Shark and the Internet squealed with glee. In reality, the orders clearly stated Katy’s legal team still has the opportunity to fix the identified issues. If they are able to do so in the proscribed timeframe, her registrations will be published in the USPTO’s Office Gazette [http://www.uspto.gov/learning-and-resources/official-gazette]. Then, any opposers will have 30 days to file their oppositions with the USPTO. If no opposers come forth, the marks will be officially registered with the USPTO as trademarks.
However, due to the high-profile nature of this application, it will be interesting who emerges to lodge complaints against the marks. Will other artists or businesses see the USPTO opposition process a way to get some great publicity off Katy Perry and the grand saga of Left Shark?