In February 2015, I wrote a comment about Katy Perry’s ineffective attempt to assert copyright to stop a 3D printer from selling figurines similar to a shark costume used in her Super Bowl XLIX halftime show. In an attempt to establish rights in various expressions of that shark, Perry (Killer Queen, LLC) filed U.S. trademark applications for BASKING SHARK, DRUNK SHARK, RIGHT SHARK, LEFT SHARK and for three  applications that depict designs of a shark. Each of the applications recite the goods to be used with the trademarks as cell phone covers, stickers, mugs, T-shirts, sweatshirts, hats, plush toys, action figures, certain costumes, certain figurines, and live musical and dance performances. Those applications have now been examined by the U.S. Trademark Office.

Trademarks, which provide protection for brands and other source identifiers, differ from copyrights, which cover original works of authorship. Although Perry did not come up with the term “Left Shark,” originality is not a requirement for rights in a trademark; however, other requirements may be of issue for her applications.

Perry’s word mark applications appear to be in line for allowance with some amendments, but two of the applications that cover a shark design — a front view of a standing shark and a side view of a standing shark— have been refused because the Trademark Examiner determined that the designs are of a character and do not function as trademarks. (Note: The third application for a shark design used a photo of an actual 3D shark figurine from the printer that Perry originally accused of copyright infringement; the printer asserted his copyright against Perry, and the application was abandoned.)

In addition to the refusals, the specimen submitted to show use of the marks for live musical and dance services for the trademark design applications is a photo from the Super Bowl performance. The sharks in the photo do not depict the shark designs in the applications, so new specimens showing the shark design(s) actually used for a performance are required.

Other hurdles lurk in the depths. U.S. trademark law protects a trademark owner’s right to prevent non-authorized use of a mark that would cause consumer confusion regarding the source of the goods or services — but that owner must be a senior user of the mark. An Internet search for the words “Left Shark” returned a multitude of goods, including the same types of goods listed in Perry’s applications, offered by parties other than Killer Queen, LLC. Though such uses may not interfere with Perry’s registration of the marks (unless one of these third parties files an opposition to registration), Perry’s registrations may not be effective to stop an unregistered prior user from using the marks. Unregistered trademark rights are based on priority of use of a mark within a geographic territory.

Another requirement for a trademark is that it must function as a source identifier. A trademark application can be refused registration because a specimen submitted to show use depicts the mark as a general ornamental concept rather than a trademark. Trademarks typically appear on the label or packaging of an article. A large rendering of the shark design on a cell phone cover, sticker, mug, or T-shirt would most likely be seen as an ornamental design, not a source identifier, and would not be afforded trademark rights.

So, to avoid issues similar to those Perry may be facing, a trademark owner should use the exact design depicted in the application on tags, hang labels or packaging for goods. For live entertainment services, acceptable specimens include a photograph of the performance with the design mark displayed. Take care, however, to create trademark use rather than an ornamental display. Lastly, a determination of a suspected infringer’s first use of a disputed mark is necessary to avoid having the rights a trademark owner is attempting to assert against that “infringer” turned against the owner to result in the loss of those rights.