From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Wednesday, 16 March 2016

Twitter drones on about trademark registrations: will it be too late before it even begins?

Drones have become increasingly popular for filming events, music videos and  recreational use. Kat readers may have seen the video of a drone flying through New Year’s Eve fireworks display, capturing spectacular footage. The use of drones raises legal issues such as privacy (this Kat recently had an uncomfortable experience at the beach when a drone hovered over her for an inordinate amount of time), aviation rules, property damage and insurance, and now, trade mark law. Twitter has sought to register the word ‘dronie’, a combination of drone and selfie, but with varying success in different jurisdictions.

Twitter first registered ‘dronie’ in Iceland for goods under class 12 of the Nice Classification, which includes “vehicles, unmanned vehicles, remotely piloted vehicles”. Twitter then proceeded to claim priority in other jurisdictions via the Madrid Protocol. For Kat readers practicing in jurisdictions where the Madrid system is not in place, the Madrid Protocol allows a trade mark owner to file a single application to register her mark in countries that are signatories to the Treaty. The Intellectual Property Office of the country in which the mark was first registered sends the international application to WIPO for a formal examination, registration in the International Register and publication in the Gazette. WIPO notifies the desired countries of registration about the application. Domestic law then comes in to play as each country has to determine whether to allow the registration.

At OHIM, claiming priority from the Icelandic registration, Twitter successfully registered ‘dronie’ for classes 9, 12, 28, 35, 38, 41, 42, and 45. However, in the United States, the application was refused on the ground that ‘dronie’ is a descriptive term under s.2(e)(1) of the Lanham Act. The examiner reasoned that –

 “…DRONIE is a merely descriptive word used to refer to taking a video of one’s self using a camera on a drone… It is likely the applicant’s goods and services feature information about dronies and are used in taking, processing, posting and sharing dronies. Accordingly, the word DRONIE in the proposed mark is merely descriptive for a feature and use of the goods and services and registration must be refused…”

Twitter appealed this refusal on March 10. 2016.

@dronie's profile picture
Why did the examiners in Iceland and OHIM differ from that of the US with respect to the descriptive nature of the mark? Perhaps the term was not simply recognised at the time of application, at least in Iceland. Indeed, perhaps the examiner thought that Twitter had come up with the term (although days before the original application in Iceland, the Daily Mail published an article entitled, “Move over selfies…it’s time for the dronie…”). In fact, Twitter seems to have made limited use of the mark ‘Dronie’ prior to the applications. The only evidence of use by Twitter is limited to a dronie Twitter account, launched on June 15th 2014 at the Cannes Lion Festival of Creativity.  This account been inactive since October 27th 2014, but previously posted links to videos filmed on drones.

Registration may also have succeeded in Iceland and OHIM because examiners considered dronie to be suggestive rather than descriptive of the goods. According to Professor McCarthy (§ 11.26 McCarthy on Trademarks and Unfair Competition, 4th ed), the combination of two descriptive terms, without a space in between them, forms a ‘telescoped’ terms. ‘Telescoped’ terms can make two otherwise descriptive words merely suggestive, but this is not always the case. McCarthy gives the examples of “BIASTEEL for steel belted tires and NICAD for nickel cadmium batteries” as marks that  passed the descriptiveness hurdle. EXPRESSSERVICE for banking services and URBANHOUZING for real real estate brokerage, however, were considered descriptive. The line between descriptive and suggestive, without evidence of secondary meaning, will depend in part on the interpretation of the particular examiner.

No matter what the USPTO rules on appeal, perhaps the biggest threat to the registrability of ‘dronie’ across jurisdictions is the risk that it will become part of the popular lexicon to an extent that it will become generic. As opposed to descriptiveness, which tells you about the product, generic terms tell you what the product is, and usually occurs mark has become the household name for the product. Still, widespread exposure and popularity of the term, to the point that ‘dronie’ becomes the very name of the good, will be required before ‘dronie’ faces the risk of genericide.  More and more companies are venturing into dronie capturing. Time Magazine published an article on the evolution of the dronie, the recently concluded NYC Drone film festival featured a dronie category, and there are over 17,000 dronie hashtags on Instagram. Whether all of this indicates that ‘dronie’ (and ‘selfie’ for that matter) may well be on the way to genericide is something that bears close watch.

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