On 6/21, a notice was sent to Lee’s attorney indicating two issues with the application, including a prior-pending application for the name filed by WWE.
“a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.”
“The filing date of pending U.S. Application Serial No. 88594009 precedes applicant’s filing date.”
Lee’s application included several screenshots from websites showing he has been using the name dating back to 2008. The trademark office believes the included screenshots only identifies the name of a specific individual, and doesn’t “function as a service mark to identify and distinguish” any specific services.
He filed the application under entertainment services, so including advertisements (posters) or merchandise bearing the name would likely result in a better outcome.
Registration is refused because the applied-for mark, as used on the specimen of record, is a personal name that identifies only the name of a specific individual or group; it does not function as a service mark to identify and distinguish applicant’s services from those of others and to indicate the source of applicant’s services.
The personal name of an individual or group is registrable as a service mark only where the record shows that it is used in a manner that would be perceived by consumers as identifying the services in addition to identifying the person or group. In this case, the specimen shows the applied-for mark used only to identify the name of an individual/group and not as a service mark for applicant’s services because, as used in the specimen of record, the wording KEITH LEE appears only to refer to the name of an individual, not the identified services. For example, the first page shows a Youtube® video with the title “Keith Lee vs Scott Mckenzie 11-01-2008”, merely conveying that KEITH LEE is one of two individuals featured in the video, not the source of the video. The recommended videos under this video further suggest KEITH LEE would merely convey to consumers the name of a person, because he appears to be the subject of the videos, rather than the source, such as “Keith Lee on leaving possible NFL career…”. The remaining pages consist of various news articles and an entry from the Internet Wrestling Database, which again merely refer to KEITH LEE in a manner that appears to be merely that of a person, rather than as a service mark, because it does not identify any of the specified services, just the name of an individual. For any entertainment service, advertisements or radio or television listings showing the mark may be submitted, but the specimen must show that the mark is used to identify and distinguish the services recited in the application, not just the performer. See In re Ames, 160 USPQ 214 (TTAB 1968) (advertisements for records show use of the mark for entertainment services rendered by a musical group, where the advertisements prominently feature a photograph of musical group and give the name, address, and telephone number of a booking agent). A designation that identifies only the performer is not registrable as a service mark. See TMEP §§1301.02(b), 1301.04(h)(ii). Thus, as the specimen of record only shows use of the mark as a name and not as a source of services, the specimen fails to function and registration is refused.
WWE Continues To Have Issues Trademarking Name
WWE has also faced roadblocks attempting to trademark the Keith Lee name, which they originally filed in August 2019.
WWE petitioned to revive their application this past March, but was told they must provide a signed document from Lee to secure the trademark, or once again face abandonment.
The previously attached evidence shows that Keith Lee is a well-known wrestler and thus the mark would lead to the assumption that he is associated with the applied-for services.
The refusal under Section 2(c) will be withdrawn if applicant provides both of the following:
(1) A statement that the name shown in the mark identifies Keith Lee, a living individual whose consent is of record.
(2) A written consent, personally signed by the individual whose name, signature, or portrait appears in the mark, authorizing applicant to register the identifying matter as a trademark and/or service mark with the USPTO; for example, an applicant may use, if applicable, the following: “I, Keith Lee, consent to the use and registration of my name as a trademark and/or service mark with the USPTO.”
WWE has until September to provide a signed consent form to move forward with the application.
In order for Lee to be granted the trademark, WWE’s filing must be once again abandoned, then canceled.