Left Shark 2: Don’t Go in the Water (or in this case, USPTO)

In a previous blog post, we covered the drama surrounding Katy Perry’s attempted copyright claims over the now infamous Super Bowl Left Shark against artist Fernando Sosa and his three dimensional “left shark” figurines. However, the tenacious pop star refuses to give up “unconditionally,” and filed several trademark applications with the US Patent and Trademark Office (“USPTO”) in February 2015, for two design marks representing Left Shark (App. Nos. 86/529,342 and 86/529,321), and the word marks LEFT SHARK (App. No. 86/526,826), BASKING SHARK (App. No. 86/527,055), DRUNK SHARK (App. No. 96/527,031), and, not to be forgotten, RIGHT SHARK (App. No. 86/526,829) for use in connection with a variety of goods (including figurines) as well as live music and dance performance services.

Unfortunately for Perry and her company, Killer Queen, LLC, the USPTO hasn’t been “hot n cold” so much as freezing. All of her applications were rejected in April. The design marks especially face significant hurdles to registration because the Examining Attorney found that they do not even function as trademarks, that is, as a source of goodwill that identifies and distinguishes Ms. Perry and her company to consumers. Rather, the USPTO found that the marks only identify a particular character, Left Shark, and that it does not represent Perry’s music and dance services.

Furthermore, the USPTO identified several other missteps in the design mark applications. The applied for designs look like an early rough draft of the example of use in commerce given to the Examiner, the classes of goods were unacceptable because they were too broad, and there were issues regarding the color and description of the marks. The biggest misstep listed is the disconnect between the marks and the specimen of use in commerce. The specimen is evidence of how a mark is being used in the world. Because trademark rights attach through actual use of the mark in commerce, it is imperative that a specimen be a “substantially exact representation” of the mark as used. Here, Perry’s specimen showed only a single instance of use, and it wasn’t even actual use in commerce of the mark.

  

Mark Designs                              Use in Commerce Specimen

However, the fight is not over. Perry has a six month window to respond to the Examiner’s provisional refusals to attempt to keep the Left Shark marks alive.

Sosa, meanwhile, has been offering to sell a “Blue Drunk Shark” 3-D printed figurine at Shapeways, the same website where he first sold the Left Shark figurine until the initial demand letter was sent, all while continuing his Left Shark sales on his Etsy page. He’s even started a gofundme legal fund campaign to crowdsource funds to fight Perry’s legal claims.

Will Perry allow Left Shark to be “the one that got away?” This author has her doubts, but it is sure to remain an interesting, if uncoordinated, battle.

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