A few weeks ago, I performed a trademark clearance search for a client and found confirmation of fact I teach often, if you are building a brand trademarks are (and I cannot stress this enough) a must!
A quick clearance search will show you that more and more brands, from adult film stars and social media comedians, to the LA Crips, are protecting their brands with federal trademark registration.
Yes, you read that correctly, the LA Crips, one of the most prominent gangs during the 80s and 90s are out here owning their genius. So, I ask, why aren’t you?
Transitioning from past stigmas and aggressions, The LA Crips who are currently working with their rivals, the Bloods, to come up with programs for gang violence prevention have filed multiple trademark applications. Although the L.A. Crips currently possess a trademark for the name of their organization and another for their drink, Crip-A-Cola, the application that everyone is talking about is their application for ‘The Marathon Continues’.
The Marathon Continues was coined by the late and respected Nipsey Hussle, a member of the LA Crips. I assume that it was this association that prompted the Crips to move forward with registration. Here’s what I know about the application:
- It was filed without a lawyer.
- It was filed as an in –use application, which means they are claiming to be CURRENTLY using the mark in commerce.
- The application was filed under one class for a VARIETY of different services which are listed below:
- Arranging and conducting youth sports programs;
- Concert booking;
- Developing educational manuals for others in the field of community organizing, gang prevention, gang intervention;
- Direction of making radio or television programs;
- Entertainment in the nature of boxing contests;
- Entertainment services in the nature of an ongoing reality based television program; Entertainment services in the nature of development, creation, production, distribution, and post-production of documentaries and films;
- Entertainment services in the nature of live concert performances;
- Entertainment services in the nature of hip hop artist;
- Entertainment services, namely, live appearances by a celebrity;
- Entertainment services, namely, non-downloadable ringtones, pre-recorded music, and graphics presented to mobile communications devices via a global computer network and wireless networks;
- Entertainment services, namely, televised appearances by a Crips) Community Organizers), Bloods (Community Organizers), Celebrities, Comedians, Singers, Rappers and Dancers; Entertainment, namely, live performances by a musical band; Film editing; Museums;
- Music production services;
- Music selection services for use in television, film, radio and video games;
- Organizing community sporting and cultural events;
- Presentation of musical performances;
- Providing information, news, and commentary in the field of current events via the Internet;
- Providing on-line computer games
Whew! For those of you who read the entire list, *cue applause (Gif)*.
Now that we are on the same page, let’s talk about this application, specifically the possible challenges the Crips will face during registration.
First thing’s first
Who said they can claim this phrase?
I would not be surprised if Nispey’s estate, is going bananas right now, trying to control the wave of people attempting to benefit off of his likeness. As a matter of fact, his brother filed an application a few days after the Crips for The Marathon Continues. We will keep an eye out on his application as well.
Moving right along
When you file an in-use application, you must submit proof that you are using the mark in commerce. To fulfill this requirement, the Crips submitted what I am assuming is a screenshot of some sort with the message “Marathon Continues Documentary coming soon”.
Here’s the challenge with that, when it comes to filing an in–use application, the services that are being claimed must actually already be available for use in interstate commerce. If they are not and you file as in use, your application will be refused for approval. If USPTO is not aware that you are not currently using the goods or services in commerce and later finds out your application will be voided. In addition to losing your trademark registration, you could find yourself paying fines or going to jail for lying on your trademark application. Remember, the application is filed under oath.
Now some may think, “well I’m just starting out and by the time it clears the products may very well be in use”. These types of thinkers are the very ones that fall prey to the random audits by the United States Patent and Trademark Office. That’s right, USPTO are performing audits, taking random applications and making the owners submit proof that they are using the application as filed.
This means, if your brand is currently selling t-shirts but will began selling hoodies at a later date, don’t include hoodies in your in-use application.
Listen, there’s a lesson in everything and our top three lessons from today are
- Own your genius
- Every good and service must be in use in interstate commerce when you file your in use trademark application
- Your trademark application is filed under oath. Lying on your trademark application can result in a fine or imprisonment.
This is an application that we are going to keep our eye out and see where it goes.
LaConya Murray, Esq.
The Brand Attorney
Owner of Off the Mark Ip Solutions and Founder of Launch Legally