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The Situation’s Trademark Situation Gets Naughty

February 4, 2010

According to a TMZ report this week, two trademark applications have been filed for THE SITUATION, apparently to cash in on the 15 minutes of fame of Mike “The Situation” Sorrentino from MTV’s “Jersey Shore.”  Never to let a “celebrity” trademark issue pass us by, TBTS investigated to get at the details.

As it turns out, a company called Vadio, LLC, based out of (you guessed it) New Jersey filed an intent-to-use application (which means it hasn’t started using the mark yet) for the words THE SITUATION on a laundry list of clothing items, from sweat pants to sport coats, and pajamas to pantaloons (seriously).  Vadio’s application was filed on December 11 of last year.

Naughty Limited, LLC, a Las Vegas company (which is, according to TMZ, owned by The Situation’s brother) then filed a use-based application for THE SITUATION in stylized form on December 28.  According to Naughty’s application, it first used the mark on December 21.

Even though Naughty claims to have used the mark before Vadio, because Vadio’s intent-to-use application established a “constructive” priority date of December 11, at this point Vadio’s application would trump Naughty’s.  However, neither applicant is on the road to Situation riches.  Here are four reasons why.

1.  He may be a douche, but he’s a douche with rights. As an initial matter, both applicants are going to have a problem because neither can honestly say that they are unaware of any other person with a legal right to use THE SITUATION as a trademark for related goods.  Applicants must swear to this when submitting an application.  While they might argue that The Situation’s “situation” only refers to abs and not neckties, they are clearly intending to cash in on the value (whatever that may be) of that infamous mark.

The Situation would be well within his rights to proceed with filing his own trademark application; while his application will be suspended due to the two prior applications pending in the trademark office, he can then wait until the other applications are published for opposition in order to file an opposition proceeding (a procedural matter that allows trademark owners the ability to prevent this very sort of thing).  However, The Situation does not have to file his own application to oppose the applications – to the extent that he uses THE SITUATION as a trademark, his “common law” rights in the mark already exist and a registration would only enhance those rights.  Therefore, he can merely wait for the other applications to be published and assert his common law rights.

2.  You gotta be bona fide. Vadio mistakenly thought it would get broader protection by including a laundry list of goods on its application.  In reality, Vadio’s greed may be its undoing.  When filing an intent-to-use application, you must have a bona fide intent to use the mark as claimed.  This threshold is not extraordinarily high but, if challenged, the applicant must be able to prove its intent to use the mark on all of the listed goods.  Not only could The Situation attack Vadio on this point, Naughty could as well because if a bona fide intent was lacking then Vadio’s application is void.

While I am sure these knuckle-draggers aren’t the most intellectual of fellows, this fruit is hanging low enough even for them.  Honestly, how hard could it be to prove that Vadio really didn’t intend to use the mark on turtle necks, thermal socks and cravats?

3.  Your ornamental is showing. Another problem that both applicants could have is that merely placing a logo on an item does not mean that the mark is functioning as a trademark.  The Patent & Trademark Office takes a dim view of applications for t-shirts and the like when the item of clothing is nothing more than a delivery mechanism for a catchy phrase.  Unless the mark is on the tag (like “Fruit of the Loom”) or in some other place to signify that the mark informs consumers of the shirt’s origin, the mark is generally considered ornamental.

An applicant can overcome this finding by showing that the mark is used in another way where it actually functions as a trademark.  For instance, if a band applies for a mark in connection with live performances and sound recordings, its no big deal to add t-shirts as well.  The meat of the trademark protection stems from the band’s main focus of performing live and selling records; because they do these things, they’re allowed to throw some t-shirts into the mix as well.

If Naughty is claiming its rights through or on behalf of The Situation then its application could do well – it can point to The Situation’s role on the TV show and assert that the mark is used primarily in connection with television entertainment.  However, if The Situation’s brother is simply trying to cash in on this thing on his own, he likely painted himself into a corner because its only claimed uses of the mark would be viewed as ornamental.

Vadio is almost certainly out of luck on the ornamental front, though its other fatal flaws will probably kill the application before it fights this battle.  The examiner of this application won’t have the opportunity to evaluate whether the mark is ornamental until a specimen is filed and, since Vadio’s application is an intent-to-use, the specimen probably won’t be filed until after the opposition period, which will be the most likely cause of death for Vadio’s near-brush with almost-fame.

4.  My, what a naughty specimen you have. A specimen is supposed to show the mark as it is used in real life.  For instance, a picture of a soda bottle or the packaging for a toy would be good specimens. Naughty provided several artist renderings of a thong, boy shorts and couple of t-shirts.  However, these appear more like proofs than actual products.  While it depends on the how picky the examiner is who reviews the application, I suspect that Naughty’s specimen might be inadequate.  This is not fatal if Naughty can provide substitute specimens that show actual products and it can honestly say that these products were being marketed to the public as of the first use date alleged in its original application.  If The Situation wanted to take on this battle, he could require proof of this use; if Naughty can’t provide it then The Situation would have a good shot at success.

TBTS prediction: Vadio’s application will be challenged by Naughty and/or The Situation and Vadio will ultimately lose.  If Naughty’s man in charge is a naughty boy and trying to cash in on his brother’s ab-tastic identity, its application will also go down.  The Situation will get his situation back, though unfortunately for him, the whole process would likely take at least three years, meaning that he’ll have his registered mark 2 years, 364 days, 23 hours and 45 minutes too late.

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