We hope you had a fun Halloween and that your candy hangover isn’t too bad. We were posting Halloween-themed posts in October, and today’s post will be the last one addressing the mask from the Scream movies.
As we explained in our post about trademark protection for Sour Patch Kids candy, you can receive a trademark registration the shape, layout, or design of an item. This is called “trade dress,” and in the Sour Patch Kids post, we showed other candy shapes that were subject to a trademark registration (i.e. the Peeps shape and Hershey’s Kiss shape).
Trade dress protection is also available to the three-dimensional configuration of items like packaging containers and even Halloween masks.
For example, maybe you’ve heard of the Steve Miller Band song (and album) titled “The Joker.” Well, Mr. Steven H. Miller owns a trademark registration for a three-dimensional “joker” mask like the one he wore for the cover photo of the Joker album. The registration covers t-shirts and masks, both of which he sells. See: https://www.merchbar.com/rock-alternative/steve-miller/steve-miller-band-joker-mask and https://www.merchbar.com/rock-alternative/steve-miller/steve-miller-band-the-joker-t-shirt.
This is the drawing of the trademark as filed with the USPTO:
And here is Steve Miller wearing the mask on the cover of the 1973 Joker album:
Turning to the mask from the Scream movies, below is the trademark drawing that Fun World submitted with its trademark application, which was filed November 19, 2020:
Fun World described the mark with: “The mark consists of a three-dimensional configuration of a costume mask featuring elongated, hollow eyes, a skeletal outline for a nose, and an elongated, open mouth. The mask features a shroud which hangs around and below the mask. The shroud appears in dotted lines and is not claimed as part of the mark.”
They claimed a first use date of December 4, 1991 for the mark as used with Halloween and costume masks.
Despite this extensive use, the USPTO rejected the trademark application for a number of reasons, including that the mark (the mask) was not able to function as a trademark because of its nondistinctive features. To overcome this type of rejection, the mark owner must present evidence that the public associates the mark with the source of the goods. This type of evidence typically includes sales and financial information, consumer surveys, and media coverage.
Fun World responded to the refusal with the appropriate arguments – providing a declaration about the media coverage, sales, and other items which Fun World believed provided “acquired distinctiveness.” Without acquired distinctiveness (a/k/a secondary meaning), then trade dress such as product packaging or the three-dimensional product itself cannot receive a trademark registration.
Unfortunately for Fun World, the USPTO rejected the arguments and issued another Office Action which continued to refuse registration of the mask as a trade mark. Fun World responded with more argument and evidence, but the USPTO held firm and issued a dreaded Final Office Action.
The Final Office Action is where the USPTO dug in its heels and provided the damaging commentary and analysis of the problems with Fun World’s attempts to register the mask.
For example, the Final Office Action does a brutally clear job of showing how uncontrolled infringement on Amazon can and will be used against you when trying to claim that your design is exclusively yours. Here, the USPTO Examiner provided over ten links to various third parties offering masks that looked just like the applied-for mask configuration. These links went to Amazon stores, Etsy shops, and other costume retail websites. Recall from the last post about this mask – there is a duty to police one’s trademark and copyright for infringement, and the Fun World arguments against the USPTO refusals mentioned some enforcement efforts.
But now, the USPTO has “finally” denied the Fun World Applicant a registration, so it is unclear whether or not the mask configuration can be protectable as a trademark and thus even able to be infringed. If the design is not protectable as a mark, then those third parties would obviously not be trademark infringers. And, based on the issues with the mask’s copyright registration that we addressed in last week’s post, it may be difficult to prove copyright infringement. This puts Fun World in the not-fun position of trying to prevent copycats but with deteriorating intellectual property rights. This is why it is so important that you have a strong IP strategy in place before you start branding and launching products. There were ways that Fun World could have used its mark(s) from the beginning to try and associate the mask as a trademark with consumers, but it is too late for those measures now.
Fun World has until December 6, 2022 to request reconsideration of the Final Office Action and to signal its intent to appeal the refusal. We’ll update you on the progress, if there is any.
Conclusion:
When asserting a barrage of intellectual property claims, it is possible to overreach (or prematurely reach) and damage the asserted IP as opposed to strengthening it. Sometimes the attempts to rehabilitate or otherwise strengthen your IP at the USPTO can also have the contrary effect.
Businesses are better served by professionals who remain on the cutting edge of technology and the law. Hiring an attorney who can guide you through multiple avenues of protection is one important step in providing you with strategic IP solutions and not merely IP services.
Call or click here to get started on protecting your IP today.
