Advertising Law Blog

The trademark world is buzzing over the rejection by the United States Patent and Trademark Office (USPTO) of Taylor Swift’s trademark application for "The Life of a Showgirl" due to potential conflicts with pre-existing marks. In the U.S., prior use of a trademark and a prior trademark application take precedence over any new filings regardless of how well-known the applicant may be. Taylor Swift’s application covers an extensive list of goods to be sold in connection with her new album of the same name and accordingly reflects the opportunity for substantial income, making securing this mark likely important to her.

From a procedural perspective, there is nothing particularly unusual about the USPTO’s rejection of this application. When applications are filed, the USPTO reviews them, and if the USPTO finds earlier-filed same or similar marks, the USPTO will issue an Office Action rejecting the registration. The applicant will then have up to 6 months to file a response to the Office Action, presenting arguments as to why the USPTO should register the mark in spite of the other pre-existing registrations.

Many conflicts with prior marks can be avoided prior to filing a trademark application by searching the mark before committing to use of same to check for potentially confusingly similar marks. If the mark is cleared through the search, parties are encouraged to file applications to cover all the goods/services for which the mark is used, or if the mark is not yet in use, to cover those goods/services for which there is an “intent to use” the mark. Filing applications on an intent to use basis will secure priority in the mark as soon as the date of filing becomes the effective date of first use once the mark is registered.

If a conflicting mark does arise in a search, it may be beneficial for the applicant to try to purchase the conflicting mark prior to filing. Not only would the conflicting mark not be a block to registration, but the applicant may be able to claim the earlier rights of the conflicting mark. It is usually possible to try to purchase a conflicting mark anonymously through a third party. This is especially helpful in situations where the applicant is going to be a famous person or a well-known brand.

Of course, even with a careful search, an applicant may still receive a citation of prior marks that were either not found in the search or that are arguably not conflicting at all. In fact, the number of Office Actions now being issued at the USPTO appears to be at an all-time high. In responding to the Office Action, Taylor Swift (and any other applicant) has multiple options to try to overcome any such objections, including the below:

1. If the cited mark is still a pending application, the applicant can wait to see if it becomes abandoned and ask that the application be suspended.
2. If the cited mark is registered but is coming up for a maintenance deadline within the 6-month response window, the applicant can wait to file a response to see if the required maintenance has been handled to keep the registration active.
3. If the cited mark is registered, it may be vulnerable to cancellation if not in use, on bad faith grounds if same exist, or on a number of other grounds under U.S. trademark law.
4. Arguments may be made regarding differences in the marks themselves as well as the goods/services listing to show that the public would not be confused as to the origin of the goods/services.
5. Arguments may be made such that the applicant’s mark and the cited marks are in a “crowded field” of marks, meaning that no one entity or individual is entitled to claim exclusive rights in the mark in all forms.
6. It may be possible to obtain a consent from the other party if both can come to an agreement about how each will use the mark. Note that this option can be dangerous, however, if the applicant does not have prior use of the mark.
7. Finally, it may be possible to purchase the mark from the third party and have it assigned to the applicant. Of course, if the applicant is well-known, as in the case of Taylor Swift, the amount the owner of the cited mark demands could be very high.

TAKEAWAY: A trademark search prior to commencing use and filing of a mark can help alleviate any conflicts on the path to registration. Even if the USPTO initially rejects the registration of a mark, it may still be possible to obtain registration.