(949)829-2186 sean@lynchllp.com

The Fine Bros have pissed off the internet (especially YouTubers) with their efforts to trademark REACT, but the conversations I have been seeing online tend to be misinformed. Let’s get everyone on the same page and get down the brass tacks and learn about what’s going on on the legal side of things.

What is a trademark?

A trademark (or service mark) includes any word, name, symbol, device, or any combination of those, that is used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services. If that sounds like a bunch of legalese, that’s because it is. Boiling it down, a trademark’s purpose is to help consumers identify the source of goods and services.

This is different from a copyright, which grants an author the exclusive right to exclude others from using, in certain ways, the expression of an original idea in a fixed medium. Copyright protection does not extend to any ideas, systems, procedures, or facts. Copyrights cover things like books, songs, photographs, works of art, and so on.

So what did the Fine Bros do wrong?

Well, technically nothing. They applied for a federal trademark registration, and the USPTO is allowing the registration to go forward (so far).

Essentially, the USPTO screwed up. In the course of prosecuting the application (“prosecution” describes the process of going back and forth with the USPTO to get a trademark registered), the Examining Attorney issued only a single office action, stating:

Identification of Services

Applicant’s services are identified as “Entertainment services, namely, an on-going series of website programs in the field of observing and interviewing various groups of people” in International Class 41.

The wording “website programs” in the identification of services is indefinite and must be clarified because the nature of the programs (and means of broadcast) is unclear.  See TMEP §1402.01.  Applicant may change this wording to “Entertainment services, namely, providing an on-going series of programs and webisodes via the Internet in the field of observing and interviewing various groups of people,” if accurate.  See TMEP §1402.01.

An applicant may only amend an identification to clarify or limit the services, but not to add to or broaden the scope of the services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

The only problem the Examining Attorney saw was that the description of goods and services to be used in association with the proposed mark (REACT) was indefinite. Subsequently, the Fine Bros’ attorneys (Sheppard Mullin Richter & Hampton LLP – a very large multinational law firm) simply amended the goods and services description to match the Examining Attorney’s recommendation, and after that the mark proceeded to publication. See the timeline below, pulled from the USPTO’s website:

[image_with_animation animation=”Grow In” image_url=”http://thesurflawyer.com/wp-content/uploads/2016/02/PTO-TM-Timeline.png” delay=””] [/image_with_animation]

Three months after publication, a mark then proceeds to registration. Registration of the mark then gives the Fine Bros a number of different advantages:

  • It provides nationwide constructive notice to third parties of registration and ownership
  • It confers the ability to bring action in a Federal Court concerning the mark
  • It creates a legal presumption of ownership
  • It creates a legal presumption of an exclusive right to use the mark
  • It confers the ability to recover certain statutory damages for counterfeiting
  • It deters others from using confusingly similar marks

That’s a pretty solid array of rights.

So what did the USPTO do wrong?

The sole Office Action issued in the course of prosecuting the REACT application really missed some important bases for refusal. Most importantly, the mark is descriptive (not to mention generic).

Descriptiveness is an easy basis for refusal to register a trademark, and with something like the word REACT used in association with Reaction Videos — well, you have to be kidding me. But looking at this from the perspective of someone who has no idea about the Fine Bros or reaction videos, it’s easy to see how the Examining Attorney missed this. Just look at the goods and services listed in the application:

Entertainment services, namely, providing an on-going series of programs and webisodes via the Internet in the field of observing and interviewing various groups of people.

If I had to guess, I would say the goods and services were drafted deliberately to avoid a descriptiveness refusal. This is a pretty common practice, but in this case, if the mark is allowed to register, the risk of unfair enforcement is high. Understandably, the community at large is unhappy about this prospect.

What’s to be done?

In trademark prosecution, the publication period exists to open a window for those who would be harmed by registration of a mark to oppose the registration of that mark.

If the applicant’s response overcomes the refusals and/or satisfies all requirements of the “Final” refusal letter (Office action), the examining attorney approves the mark for publication in the Official Gazette (OG). The OG, a weekly online publication, gives notice to public that USPTO plans to issue a registration. Approximately 1 month after approval, the mark will publish in the OG for a 30-day opposition period. Any party who believes it would be harmed by the registration may file an objection (opposition) within that 30-day period with the Trademark Trial and Appeal Board. No further action is taken until the opposition is resolved.

http://www.uspto.gov/trademark/trademark-timelines/section-1a-timeline-application-based-use-commerce#7a

Thankfully, the community has spoken: registration of the trademark, it appears, will clearly harm those who create and post reaction videos to their YouTube channels, and they aren’t taking it lying down. The Fine Bros appear to be ambitious go-getters (I can’t fault them for that), but they seemed to have failed to consider the public relations aspects of registering such a mark.

Like Sony’s LETS PLAY trademark application that recently hit a brick wall in the form of video game law specialist, Stephen McArthur (http://reddit.com/u/smcarthur), the REACT application is finding support among the legal community from Ryan Morrison (https://www.reddit.com/user/VideoGameAttorney). Ryan, in his own words, is assisting “assisting a large group of streamers and content creators in an opposition, pro bono (that means free), because I’m extra pissed about this one.” Fight the good fight.