UPDATE: The battle over Left Shark is not over yet! Upon closer examination, last week’s trademark-related denial involved only one of six classes (Class 41 for “live musical and dance performances”) covered in Katy Perry’s application to register a front view of the Left Shark. The Patent and Trademark Office rejected the specimen she submitted to prove use of the image as a service mark. The specimen in question was a photograph taken from the Super Bowl performance. Despite this initial rejection all of Perry's applications are still very much in play.
Generally domestic applicants can file trademark applications based on either actual use of a mark or bona fide intent to use (ITU). An ITU application is examined in the same manner as a use-based application, but instead of obtaining a registration the applicant receives a “Notice of Allowance.” Before a registration will issue the applicant must use the mark in commerce in association with the good/services covered therein, and then submit the date of first use and a specimen showing proper trademark use to the PTO.
Here, all that happened was that Perry’s submission related to a claimed actual use in connection with live musical and dance performances was deemed insufficient as merely a photograph of the halftime show. Ms. Perry can respond to the office action by submitting an appropriate specimen of use. The office action does not affect the other classes covered in the application or her applications to register a side view of the shark, the word mark LEFT SHARK, or applications to register BASKING SHARK, DRUNK SHARK, or RIGHT SHARK.
So. the idea that Left Shark is fair game (fish?) is not yet a reality, and no one should order any Halloween costumes quite yet. There will no doubt be further developments.
