WWE has re-filed a trademark for the name Cody Rhodes preventing the AEW Executive Vice President from securing his name.
On April 13, WWE’s trademark for the name expired, which prompted Cody to file his own trademark for the Cody Rhodes name the same day.
WWE then re-filed their original trademark on May 15, citing a delay due to COVID-19.
WWE filed a trademark for the name “Cody Rhodes” October 13, 2009.The filing was valid for 10-years, expiring on October 13, 2019.
The United States Patent and Trademark office provides a six month grace period if a renewal is not filed.The six month grace period ended on April 13, which caused the trademark to expire. WWE now states they deserve an extension due to the COVID-19 outbreak.
WWE no longer wants their trademark to be used for “live performances by a professional wrestler and entertainer”. Instead they claim they own the trademark for “Entertainment services, namely, performing in wrestling exhibitions; providing wrestling news and information via a global computer network”.
The United States Trademark and Patent Office has now delayed Cody’s application due to confusion with the WWE trademark.
The following letter was sent to Cody’s lawyer Michael E. Dockins.
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below
LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3696328.
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and services of the parties.
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and services.
The applicant’s mark is CODY RHODES for “Bandanas; Hats; Hooded sweatshirts; Jackets and socks; Pants; Shirts; Sweatshirts,” and “Entertainment in the nature of wrestling contests; Entertainment services, namely, live appearances by a professional wrestling and sports entertainment personality; Entertainment services, namely, personal appearances by a professional wrestler and sports entertainment personality; Entertainment services, namely, wrestling exhibits and performances by a professional wrestler and entertainer; Providing wrestling news and information via a global computer network; Providing online interviews featuring a professional wrestler and sports entertainer in the field of professional wrestling and sports entertainment for entertainment purposes.”
This mark is confusingly similar to the registered mark CODY RHODES for “entertainment services, namely, performing in wrestling exhibitions and live performances by a professional wrestler and entertainer; providing wrestling news and information via a global computer network.”
When analyzing an applicant’s and registrant’s goods and services for similarity and relatedness, that determination is based on the description of the goods and services in the application and registration at issue, not on extrinsic evidence of actual use.
Cody now has six months to respond to the claim, and provide proof that he is authorized to use the name.
Applicant must clarify whether the name CODY RHODES in the mark identifies a particular living individual.
To register a mark that consists of or comprises the name of a particular living individual, including a first name, pseudonym, stage name, or nickname, an applicant must provide a written consent personally signed by the named individual. 15 U.S.C. §1052(c); TMEP §§813, 1206.04(a).
Accordingly, if the name in the mark does not identify a particular living individual, applicant must submit a statement to that effect (e.g., “The name shown in the mark does not identify a particular living individual.”).
However, if the name in the mark does identify a particular living individual, applicant must submit both of the following:
(1) The following statement: “The name(s) shown in the mark identifies a living individual(s) whose consent(s) to register is made of record.” If the name is a pseudonym, stage name, or nickname, applicant must provide the following statement: “CODY RHODES identifies , a living individual whose consent is of record.”
(2) A written consent, personally signed by the named individual(s), as follows: “I, , consent to the use and registration of my name, CODY RHODES, as a trademark and/or service mark with the USPTO.”
For an overview of the requirements for names appearing in marks, and instructions on how to satisfy this requirement using the online Trademark Electronic Application System (TEAS) response form, see the Name/Portrait/Signature of Particular Living Individual in Mark webpage.
Cody commented on the trademark situation back in 2017, speaking on WWE’s ownership of the name when he spoke to Sports Illustrated
“I’ll tell you this, and I’ve not told anyone this, but I don’t mind that WWE took away my last name,” Cody stated. “Deep down, in my bones, I definitely want it back, and I have plans to get it back, but there is something to being Cody.The longer I don’t have a last name, the more I’m okay with it.That’s not to say WWE is holding it ransom.It’s literally an intellectual property law that easily can be remedied, but there is something about being Cody that I don’t mind.”/strong>