California Intellectual Property Blog

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The U.S. Government Has a Kanye West Trademark Problem

The U.S. Government Has a Kanye West Trademark Problem

The U.S. Patent and Trademark Office (USPTO) receives hundreds of thousands of trademark applications yearly. Each of these filings goes through a rigorous process. Only about half of these submissions receive trademark registrations. However, you’d expect this number to be much lower by looking at the success rate of Kanye West trademark applications.

In fact, around 350 applications filed by the singer’s trademark firm have failed in the last 12 months. However, these rejections were not related to the underlying validity of the trademarks in question. After all, “Yews” as a news service – one of the rapper’s applications – would’ve likely met the distinctiveness and commercial requirements of the USPTO.

As many might expect from the notorious celebrity, these rejections seem to stem exclusively from Kanye’s disorganized approach to… well, everything.

Hundreds of Kanye West Trademarks Denied

When Kanye West launched his “Yews” platform, many worried the name was an antisemitic bash on Jewish people. In reality, it was the hip hop star’s attempt at building his own news platform. The website didn’t last long, shutting down after less than a year. However, Kanye used his Ox Paha trademark company to file dozens of “Yews” applications during that time.

As of this writing, 20 of the 26 applications submitted to trademark the name have been rejected. Many of these seem nonsensical in nature, including attempts to register “Yews” for both agricultural and surgical supplies. However, this is only the tip of the iceberg. The USPTO has rejected at least 350 applications from Ox Paha Inc. over the last year.

In the majority of these cases, the filings became abandoned trademarks due to the applicant failing to submit the appropriate filings.

Kanye’s Abandoned Trademarks

One of the most important aspects of trademark law in America is commercial use. These brand identifiers must be distinctive, but brands must also use them commercially prior to registration. Applicants need to file a trademark Statement of Use (SOU) showing that this has occurred. In the majority of Kanye’s rejections, this basic requirement was not met.

In other instances, Kanye West trademarks became abandoned when communications from the USPTO were ignored. This seems to be the case with the attempt to trademark “Yews” for beverage services, among others. All told, the 350 rejected Ox Paha applications from the last 12 months were almost all due to abandonment – not any underlying issue with the trademarks themselves.

Unfortunately for Kanye, this seems par for the course with his company.

A Brand Hanging On for Dear Life

A cursory trademark search shows that Ox Paha hasn’t had a single successful trademark application in the past five years. However, the hundreds of failures from the last year don’t point towards an entrepreneur who has given up. Some of the applications to register “Yews” are still live in the USPTO system.

In these applications – such as the attempt to trademark “Yews” for legal services – the USPTO has not granted registration. Rather, they approved requests for extensions. Ox Paha asked for more time to submit a Statement of Use for the six applications that are still live. In addition to legal services, these applications cover Christmas decorations, electronic equipment, medical services, music streaming, and product design services.

Who knows? We might be able to sit around our Kanye West trademarked Christmas trees after visiting a “Yews” medical clinic in the near future. Assuming the necessary filings get submitted on time.

 

Fight Over a Wyatt Earp Whiskey Trademark Just Got Ugly

Wyatt Earp whiskey trademark battle

Many of us know Wyatt Earp as the Wild West lawman who took on criminals in Tombstone, AZ. Many people don’t realize that — before that time — he was known as a “bummer” who repeatedly got into gunfights and overindulged in alcohol. This fits right in with the fact that the battle over a Wyatt Earp whiskey trademark just got really ugly.

The USPTO Turns Into the O.K. Corral

In June 2020, two foreign citizens filed a trademark application for the name “Wyatt Earp” in relation to alcoholic beverages. They submitted the application as an intent to use application, and were granted the right to reserve the trademark as long as they used it in a timely manner. When they submitted evidence of commercial use in May 2021, the U.S. Patent and Trademark Office (USPTO) granted their registration.

This is a pretty typical process for most trademark registrations. Similar to Wyatt Earp’s earlier years, though, a fight ensued. That’s because, in June 2023, the World Whiskey Society Company filed a Petition to Cancel the registration. If they prevail in this fight, the current owners of the trademark will lose exclusive rights. So, on what grounds are they requesting cancellation?

Let’s visit the O.K. Corral.

Potential Claims of Illegal Sales

In the petition to cancel the current Wyatt Earp trademark registration, the World Whiskey Society Company has claimed that the commercial use alleged by the owner wasn’t as straightforward as claimed. They point out that the owners submitted a Statement of Use that included pictures of alcohol bottles featuring the words “Wyatt Earp” and “Straight Bourbon Whiskey.”

These photographs were submitted on May 28, 2021. However, the petitioner claims that the company was not granted a Certificate of Label Approval (COLA) by the Alcohol and Tobacco Tax and Trade Bureau until the end of August 2021. This certificate is required before any label can be placed on an alcoholic beverage. As such, they claim that the owner of the trademark could not have engaged in lawful use prior to claiming such lawful use.

What Does This Mean?

If the filing is accurate, the World Whiskey Society Company seems poised to seek its own whiskey trademark under the Wyatt Earp name. In its cancellation request, the company states that it filed its own trademark application on May 30, 2023. They’re also seeking exclusive rights to the term “Wyatt Earp” in relation to alcoholic beverages.

Like the original owners, the World Whiskey Society filed their request on an intent-to-use basis. This means they’ve not yet engaged in the commercial use of the moniker — likely out of an abundance of caution to avoid trademark infringement. However, they may soon have the opportunity for exclusive use if the USPTO cancels the existing registration.

The USPTO will likely undertake this measure if the current owners knowingly made false claims in the Statement of Use. For now, we’ll have to wait until the conclusion of the USPTO review, or an appearance by Billy the Kid.