BIG TRUSS: A Playoff Story of Opportunism at the Trademark Office

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As a trademark attorney, devoted Baltimore Ravens fan, and furtive TMZ reader, I couldn’t help but notice this story authored recently, describing how Mark Ingram’s aspirations of registering BIG TRUSS in the US Trademark Office are (potentially) being blocked by someone who applied to register the phrase first.

For those uninitiated, “Big Truss” is the pet name for Ravens quarterback Lamar Jackson, coined by Mark Ingram, Ravens running back.  Mark and Lamar’s well-documented bromance is one for the ages.  The phrase first captured public attention when Mark Ingram uttered it in a November 21, 2019 press conference, although the origins of “Truss” appear to date back much further, to a 1991 album by Public Enemy, as this fascinating Baltimore Sun article explains.  The BIG TRUSS application blocking Mr. Ingram’s attempts to register the phrase was filed on December 13, 2019 – 3 weeks after the aforementioned press conference, and candidly, a lifetime in the trademark world.

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Refresh Your Logo While Keeping Your Old U.S. Trademark Registration

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We are tickled pink when we get to work with trademark registrations that issued before we were born. ‎(We won’t say when that was.) It’s nifty to be the steward of a trademark that has stood the test of time and that may endure long after we’ve headed off to the Great Principal Register in the Sky (no Supplemental Register for us, no sirree).

But what if your old, venerable logo is due for some sprucing up? ‎Please don’t immediately assume that a logo refresh means that you will need to start over with a new trademark application and allow your old logo registration to lapse. You may be able to amend your national U.S. trademark registration to cover the most current version of your logo, so long as the new logo isn’t a “material alteration” of the original registered logo. This allows you to preserve your original priority date that is associated with your old registration! (Note: this won’t work for registrations obtained in the USA via the Madrid Protocol. Sorry.)

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Tech Brings Authentication Challenges In Ad And IP Cases

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The ability of any individual, without access to sophisticated technology, to decipher the “authenticity” of any experience is diminishing daily. Moreover, this threat to the integrity of the law goes beyond digital impersonation and “deep fake” software driven by artificial intelligence. The famous Marx Brothers line, “Who ya gonna believe, me or your own eyes?” was once funny because it was ridiculous. Soon, it will be a description of our jobs and our lives.

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Strategies for Squashing Sketchy Specimens

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So your time-of-filing trademark watching service [1] warned you that someone filed a use-based application to register a mark that’s awfully close to your mark.

You drill into their application file history and notice that their proof of use of their trademark looks like this:

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How Much Use Equals “Use”? Decoding Common Specimen Refusals issued by the USPTO

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Filing a trademark example of use in the USA?  You think, piece of cake.  At this point you have jumped through the application hoops, chosen and narrowed your classes of goods and services appropriately and are ready to get the coveted “circle R.”  You jump on your website, see the mark clearly used on the first page, hit “print,” and send it to the USPTO.

Except…

Wait, how can use not be considered “use”?  As it turns out, simply displaying a mark is often not enough.  Below are some tips for decoding three common specimen rejections issued by the USPTO and finding a suitable example of use. Continue reading