What’s worse? Osamarks or Disney’s Seal Team 6?

The media continues to cover “new discoveries” about World’s Worst Terrorist, Osama Bin Laden, who was killed by the Navy Seals‘ Seal Team 6 on May 1, 2011.

On May 5, 2011, I wrote about Osamarks (the Folly of Folks Who Seek to Register OSAMA Marks).  At that time there was only one new pending application for OSAMA — OBAMA GOT OSAMA.  In the intervening two weeks, ten more OSAMA trademark registration applications have appeared.  Of these, seven include both OBAMA and OSAMA’s name (and thus are not subject to registration since OBAMA is a living individual who’s written consent is needed to register a mark that includes his name).  Fortunately, none of these OBAMA-OSAMA applications was filed by an attorney.

In addition to all the OBAMA-OSAMA marks, there are two OSAMA BIN GOTTEN trademark registration applications, both of which were filed on May 2, 2011, just a mere ten minutes apart!  Jacqueline D. and David E. Belton were first to apply to register OSAMA BIN GOTTEN! for “bumper stickers; decorative stickers for helmets; magnetic bumper stickers; printed pamphlets, brochures, manuals, books, booklets, leaflets, flyers, informational sheets and newsletters, adhesive backed stickers, and kits comprising one or more of the foregoing materials in the field of Osama bin Laden; stickers; stickers; stickers and transfers.” (I am frightened to think what “kits in the field of Osama bin Laden” might mean (other than certain folks without counsel should not be allowed to play on the PTO website)).

Approximately ten minutes later, Patricia Kyle Smith and Christy Miles Smith applied to register OSAMABINGOTTEN for “on-line retail store services featuring physical and virtual merchandise for use by members of an online community in connection with a designated website featuring fictional characters.”  Patricia and Christy knew enough to state that their mark will be used in connection with “fictional characters,” which might prevent them from receiving the 2(a) scandalous refusal that was issued to some of the prior OSAMA mark applicants.  Too bad that Smith’s application will be refused if the Belton’s becomes registered, which is somewhat doubtful, if you ask me.  This will be an interesting pair of applications to watch.

Osama marks aren’t the only trademark registration applications being filed in response to this (somehow still) current event.  On Monday, May 16, Jon Stewart talked about Disney Enterprise’s application to federally register the trademark NAVY SEAL 6.  Watch . . .

There are a total of five PTO records for SEAL TEAM 6.  There are two dead applications, both owned by NovaLogic, Inc., which applied to register SEAL TEAM 6 in 2002 for “computer and video game software . . .,” “on-line computer games,” and “action figures and accessories therefor.”  Both of NovaLogic’s applications became abandoned in 2006 due to the applicant’s failure to file a Statement of Use (evidence of use of its mark, coupled with its first use date).

There’s also three pending applications filed on May 3, 2011 by Disney for SEAL TEAM 6 for: (a) “clothing, footwear and headwear;” (b) “toys, games and playthings; gymnastic and sporting articles (except clothing) hand-held units for playing electronic games other than those adapted for use with an external display screen or monitor; Christmas stockings; Christmas tree ornaments and decorations; snow globes;” and (c) “entertainment and education services.”  Disney filed each application under section 1(b) Intent to Use.  At a minimum, Disney’s descriptions of “clothing, footwear and headwear” and “entertainment and education services” are overbroad and will have to be narrowed before the marks can become approved for registration.  But will Disney’s applications have other problems as well?

How can Disney even claim rights in Navy Seal 6?  Well, it can’t do so yet — it has to put the marks into use first.  Ultimately, US trademark rights result from use of a mark in connection with sales of specific products/services in interstate commerce.  Further, trademark rights are relative to specific goods and services. In other words, multiple people can use the same mark for different, unrelated goods and services.  Think — FORD Models & FORD trucks.

NAVY SEAL 6 might be a service mark of the US Government for a tactical military unit services, though that’s debatable.  Disney also can use NAVY SEAL 6 because it plans to do so on products and services — clothes, toys, and entertainment and education services — that are unrelated to those offered by the Government under the mark (if it is one).  None of Disney’s products or services are related to tactical military unit services, so consumers are not likely to be confused into thinking that there is a relationship between Disney and the military that does not exist.  Thus, there is no trademark infringement by Disney’s use of SEAL TEAM 6.

Since there’s no infringement, in order for the Government to prevent Disney from using Navy Seal 6 under US trademark law, it would have to prove (a) that the term functions as a source identifier, commonly understood as a brand; and (b) that the brand was famous — a household name, if you will — before its adoption by Disney.  I think the Government certainly can prove the term’s fame, but whether NAVY SEAL 6 is a mark is debatable. I wonder if it even matters.  Might we see Disney vs. Navy Seals?  Only in America!

The PTO registers marks on a first-to-file basis (Opposition proceedings notwithstanding).  Given this, it is wise to do as Disney did and file Intent to Use registration applications upon the decision to adopt a mark, of course only after clearance by counsel.