On May 1, 2011, and elite group of American soldiers known as Navy Seal Team 6 went to Osama Bin Laden’s house and shuffled him loose the mortal coil. As a result, “Seal team 6” became a household name throughout the United States, probably the world. Two days later, Disney Enterprises, Inc. filed an application in the United States Patent and Trademark Office for the proposed trademark “Seal Team 6″. Ugh. Disney.
To start, when filing an application for trademark, the applicant must select a filing basis. The two we care about today are the Section 1(a) basis and the Section 1(b) basis. The Section 1(a) application is known as the “currently used in commerce” application. It means that the mark is actually being used as a source identifier in commerce. The second is a Section 1(b) application, the “intent to use” application. It means that the mark isn’t being used in connection with the sale of goods or services, but the applicant has the intent to do so in the near future.
Both types of applications are examined, but the 1(b) applicant must submit proper evidence of use in commerce within one year of the filing date, else the application will be abandoned. If there are two applications for the same mark, the Trademark Office will examine the first filed application and typically suspend the later filed application until there is a final disposition of the first one. The examined application must still meet all requirements for trademark protection e.g., it can’t be descriptive, generic, or confusingly similar to a registered mark.
Federal trademark law is codified in the Lanham Act (Title 15 United States Code). Trademark law is unique in that it has both state based and common law rights, so you will find individual states dealing with trademarks somewhere in their laws, usually in their consumer protection statutes. It’s important to note that, unlike patents and copyrights, trademark law is not derived from the US Constitution. It’s actually tied up in consumer protection and fair trade laws. For this reason the standard for obtaining, keeping, and asserting a trademark is found in the consuming public.
A proposed mark will be rejected and a registered mark will be infringed if (among other reasons) there is a likelihood of confusion in the purchasing public as to which company (the “source”) is selling the goods under a particular brand. For example, if there were two companies selling pens under the mark “quillity”, customers would not know which company offered the pen they preferred, hence “consumer confusion”. In our example, “Quillity” must be a unique brand of pen that only one company sells to prevent this confusion. Consumer recognition of a brand is such an important concept in trademark that a registered mark can even fall into the public domain if it ceases to be a unique source identifier (“death by genericide”). Finally, if a trademark owner stops using the mark in commerce for an extended period of time, the mark can be deemed abandoned, and can be up for grabs. Each of these scenarios I just mentioned requires a very thorough analysis that we’re not going to get into right now. Just remember — for the purposes of today’s article, in trademark law it’s always about the consuming public’s recognition of a mark and attribution of that mark to a particular source. Always.
Back to Disney’s May 3rd applications. First off, Disney is not the first company to try this and their applications aren’t the only ones pending before the Trademark Office. Back in 2002, a company called NovaLogic, Inc. filed two section 1(b) applications for “Seal Team 6” in connection with videogames and toys. Both were published for opposition and ultimately allowed, but both went abandoned in 2006 for failure to file a statement of use. Today, there are 5 applications for “Seal Team 6” pending in the Trademark Office. Disney owns three of them. The Disney applications are identified by serial nos. 85310970, 85310966, and 85310957. The identified classes are for toys, games, educational services, and clothing. All were filed on May 3rd and all are intent to use applications. There is also application serial no. 85322344 for watches, filed on May 16th, which belongs to a company called Resco Instruments. It is an intent to use application as well. Finally, there is application serial number 85322100 for clocks, jewelry, and watches, owned by M.Z. Berger and Co. It was also filed on May 16th and, you guessed it, an intent to use application. Let it never be said that there is a shortage of opportunists in the world.
It didn’t take long for the Department of the Navy to figure out what Disney et al. were up to. The Navy filed two applications for trademarks on May 13th. The first is application serial number 85320305 for “Seal Team”. The identified class is “membership in an organization in the Department of the Navy”. By the way, there are 8 Navy SEAL teams that we are aware of, which may be one explanation for the application for just “Seal Team”, as opposed “Seal Team 6”. The other is serial number 85320473 for “Navy Seals” to be used on posters and clothing. Both applications are section 1(a), meaning the Navy is currently using the marks in commerce, and has been for quite some time. The Navy also owns the trademark registration “Seal” (registration no. 3285473), which indicates “membership in an organization of applicant that develops and executes military missions involving special operations strategy, doctrine, and tactics.”
So what does all this mean? Hopefully nothing. But it does get a little sticky. This is because, technically, there is no “SEAL Team 6” anymore. SEAL (Sea Air and Land) Team Six was formally created in October 1980, but in 1987 a new group, the “Naval Special Warfare Development Group” (also called “DEVGRU”) was formed and SEAL Team Six was dissolved. But the name SEAL Team Six is often used in reference to DEVGRU because of their similarities. So even though the public recognizes and knows the team as “Seal Team 6”, its real name is “The United States Naval Special Warfare Development Group”, or “DEVGRU”. SEAL Team 6 is the team’s former name.
Theoretically, Disney could try to make some argument that since SEAL Team 6 was dissolved in the 1980s, the Navy no longer has a claim to it, and if they ever did, they abandoned it years ago. I don’t know how far that argument would go, given that pretty much the entire world thinks of the Navy and DEVGRU when they hear the term “Seal Team 6”, but still, there is no registered trademark for “Seal Team 6” belonging to the Navy, and technically there is no team named “SEAL Team 6”. So there is at least some kind argument that Disney could make in favor of its applications.
Whether Disney will actually have the chance to make that argument, or if it will work, will hopefully remain a mystery. I would not be surprised if Disney’s and everybody else’s applications go the “rejection then abandoned” route. Because even though Disney was the first to file, I don’t think the Navy will have a tough time showing “Seal Team 6” is rather distinctive of it, and not Disney. And even if “Seal Team 6” is not a registered trademark belonging to the Navy, the Examining Attorney could, theoretically, reject Disney’s (and any of the other applications) as being confusingly similar to a “known mark”, which would be based on a mark used by another and not abandoned. See Trademark Manual of Examination Procedure Chapter 1207.
Incidentally, and perhaps more importantly, there have been several attempts over the years to trademark the name “Navy Seal” as well. Resco Instrument supra is currently trying it (application serial number 85322367), as well as Master Cutlery (application serial number 8523677. But we’ll give them a little amnesty- that application was filed back in February). These applications have routinely been rejected and subsequently abandoned because “Navy Seal” is too similar to the United States Naval Academy’s mark “Navy” and the department of the Navy’s mark “Seal” and attempting to trademark “Navy Seal” falsely suggests a connection with the Navy Seals. I wouldn’t be a bit surprised if, in light of recent events, the Examiner made the same sort of rejection and requirement that Disney (and everybody else) show a connection with the Department of the Navy.
I guess this all depends on how much Disney really wants to push this. They are already getting a TON of bad press over this, and we have yet to see if the Navy will file an opposition. The smart money’s on abandonment, though. It’s awfully early to tell yet; the applications won’t even be assigned to an examiner for another three months. And given the fact that, with the exception of the Navy, none of the applicants is even using the mark yet this might just be a big nothing. Plus, I’m not sure it’s worth it for Disney. But then, I haven’t sat in on any of their marketing meetings, so maybe they have other reasons. But I will still file this one under “Heh, nice try”, and remain optimistic it will stay that way.