Monday, August 10, 2009

Not-so-wise trademark application for WISE LATINA

It never ceases to amaze me how events in the news will drive enterprising individuals to file for trademark protection on some phrase that has captured the public's attention with visions of grandeur of having an exclusive monopoly on said phrase (typically in connection with using the phrase on a t-shirt).

In this case, the phrase is WISE LATINA – made famous by the too often repeated (and taken out of context) quote that so many Republican Senators focused upon in order to try and come up with some kind of criticism against now Supreme Court Justice Sonia Sotomayor from a lecture she gave at the University of California (Berkeley) School of Law in 2001: “I would hope that a wise Latina woman with the richness of her experiences would more often than not reach a better conclusion than a white male who hasn't lived that life.”

A Wise Latina Indeed!

On July 24, 2009, Cultural Communications LLC filed a trademark registraiton application with the U.S. Patent and Trademark Office (“PTO”) to register the mark WISE LATINA for the following goods: “Full line of clothing, footwear, and headgear, namely, aprons, bandanas, bathing suits, bathrobes, beachwear, belts, body shapers, bottoms, caps, coats, dresses, ear muffs, earbands, footwear, gloves, hats, head wear, infant wear, jackets, jeans, lingerie, neckwear, nightwear, pajamas, pants, rainwear, robes, shirts, shoes, shorts, skirts, sleepwear, slippers, socks, stockings, suits, suspenders, sweaters, swimwear, tops, undergarments, underwear, and vests.” The basis of the application was use-in-commerce with first use date in commerce of July 24, 2009.

Of course, what I find most interesting about this application is the specimen submitted to the PTO (see picture below) in order to show use of the mark WISE LATINA as a trademark identifying the clothing goods.

If you look closely, the shirt's tag reads “American Apparel.” So is this a “Wise Latina” brand t-shirt or is this just an “American Apparel” brand t-shirt that someone emblazoned with the ornamentation “Wise Latina”?

In addition, this is just a picture of t-shirt. While the PTO does not require an applicant to submit specimens showing use of the mark in connection with all of the goods listed in the application, in order for the application to not be deemed fraudulent, the applicant must still be using the mark in connection with all of the goods listed . . .or else the ultimate trademark registration (if it issues with goods on which the mark was not being used at the time of filing) is tainted by fraud. Do you think that Cultural Communications was really using the mark WISE LATINA as a mark (and not just ornamental use) in connection with all of the clothing items listed in the application?

And finally, does the trademark applicant in these circumstances really believe that a trademark registration for the mark WISE LATINA in connection with clothing is really going to be able to stop other people from printing t-shirts emblazoned with the words WISE LATINA (with most consumers associating that phrase more with Justice Sotomayor’s now famous quote than with a particular seller of goods)?

Justice Sotomayor practiced in the area of trademark law before moving to the judiciary. What do you think her thoughts would be regarding this application?

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