Katy Perry, Last Year’s Super Bowl, and a Shark with a Mark

With Super Bowl 50 quickly approaching, it’s a perfect excuse to check in on one of the IP issues that made big waves at last year’s “Big Game.” You may recall that the Super Bowl halftime show last year featured Katy Perry crooning on a beach-themed stage flanked by two dancing sharks. The shark to Katy’s left (the “Left Shark”) was a bit “choreographically challenged” and got out of step with his finned counterpart on Katy’s right. As a result, the hapless Left Shark made an enormous splash on social media during and after the show. Facebook and Twitter exploded with pics and comments about Left Shark, who in a matter of minutes became the most famous aquatic creature since Jaws. Some even went so far as to claim that Left Shark was the “real MVP” of Super Bowl 49 (a claim that I’m sure Tom Brady disputes).  As with many internet memes these days, there was an IP issue lurking in the shadows (see, for example, our prior post here regarding the running back for the Seattle Seahawks and his quest to trademark a phrase he made famous).

The “specimen of use” that accompanied Katy’s 1(a) application

Literally within hours of the halftime show, Left Shark merchandise was being peddled on the Internet and elsewhere. Costumes, 3D prints, and other paraphernalia flooded the marketplace. Within just a couple of days, cease and desist letters from Katy Perry’s lawyers soon followed claiming copyright and trademark protection to Left Shark. To stanch the flow of these finned imposters, Katy Perry’s company, Killer Queen, LLC, dove in at the trademark office and launched an application sharknado. Six different trademark applications were filed including the word marks “Left Shark,” “Right Shark,” “Drunk Shark,” “Basking Shark” and two design marks featuring the now-famous dancing Left Shark. The applications were all pretty much identical. They sought registration based on intent to use the mark under Section 1(b) for various goods. The two design marks, though, also sought registration under Section 1(a) claiming that Ms. Perry’s company had been using these shark designs for “live musical and dance performances” since February 1, 2015, i.e., since Super Bowl Sunday. The specimen of use submitted with the design marks was the above picture of Ms. Perry and the sharks.

Katy Perry’s Design Mark

The U.S. Patent & Trademark Office did not bite, at least on the part about the design marks being used for “live musical and dance performances.” The examiner refused the 1(a) applications based on alleged use in commerce “because the applied-for mark, as used on the specimen of record, identifies only a particular character; 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 design applications were thereafter amended to intent to use Section 1(b) applications, and soon sailed through examination. The opposition period came and went on January 22, 2016, without any opposers wading into the waters. On the word mark applications, the opposition period closes on February 5, 2016—just two days before this year’s Big Game.

The design mark applications are a good reminder about how the specimen of use really does need to show how the applied-for mark acts as a brand or source identifier for goods or services. Simply because the applied-for mark is used as part of the world famous entertainer’s act, that does not mean it is entitled to trademark registration under the Lanham Act. The examiner got it right on this one.

So, now you are fully briefed on last year’s big Super Bowl IP dispute and the pending trademark applications resulting therefrom. We’ve got our IP Lifeguards on duty here at The TMCA.com for the Big Game, and will be watching closely for this year’s version of the Left Shark attack.