THE MARATHON CONTINUES: A Lesson on USPTO Trademark Application Refusals

Updated: May 31, 2019

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Over the past few days, entertainment blogs and news publications have been ablaze with the news that a company called, Crips, LLC has filed a trademark application for “The Marathon Continues,” a slogan made popular by the late rapper, Nipsey Hussle.


According to the filing, the slogan will be used in connection with community organizing, gang prevention, gang intervention; films, documentaries, radio and television programs, boxing contests and other endeavors. It is unclear whether Crips, LLC is collaborating with Nipsey’s family members to pursue the above-mentioned but, many fans have asserted that Nipsey’s family should have the right to own and exploit the mark. 


The trademark application itself is riddled with issues that would disqualify its eligibility for registration. Firstly, it is important to bear in mind that a trademark is a word, phrase and/ or symbol that identifies the source of origin of the goods and/ or services that it is being used in connection with. 


The specimen (example of use of the trademark) submitted by the applicant does not show the slogan functioning as a trademark. 


Specimen submitted by Crips, LLC for "The Marathon Continues" trademark application

It merely announces that a documentary entitled “The Marathon Continues” will be released this summer. This use appears to be merely informational and does not show “The Marathon Continues” as an indicator of  the source of origin of goods and/ or services. 


Under sections 1, 2, & 45 of the Trademark Act, registration of a trademark may be refused on the grounds that the subject matter for which registration is sought does not function as a mark. With this considered, it is likely that the USPTO Examining Attorney will issue a refusal on these grounds.


Another major problem is the fact that this slogan is widely associated with rapper, Nipsey Hussle. Furthermore, his 2011 mixtape was entitled “The Marathon Continues.” 


Section 2(a) of the Trademark Act prohibits the registration of a mark that may falsely suggest a connection with a famous person. Moreover, the statute highlights that if “the fame or reputation of the person is such that, when the mark is used with the applicant’s goods or services, a connection with the famous person would be presumed,” it could then be established that the proposed mark falsely suggests a connection with that person. With this rule in mind, it is likely the USPTO Examining Attorney will issue a refusal on these grounds as well.


In addition to these substantive legal issues, there are a few administrative problems with the application. However, the applicant will have the opportunity to respond to the refusals to prove that the mark does not suggest a connection with Nipsey Hussle. Generally, it is extremely difficult to overcome false connection refusals and most people end up abandoning the application. 


It is important to note that an attorney did not do filing. If the applicants sought competent legal counsel, they would have been empowered to understand that the Trademark Act is not in their favor. This application seems destined for doom. 

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