Applebee’s, the restaurant chain, has filed an application with the US Patent and Trademark Office (USPTO) to protect the phrase NO TECH TUESDAYS as a trademark. The application applies to the following services (beware – trademark law involves a lot of capital letters): RESTAURANT AND BAR SERVICES, INCLUDING RESTAURANT CARRYOUT SERVICES. But has Applebee’s damaged its chances at a trademark registration with statements made about the application to the press?
The application was initially filed on March 28, but the news has only recently gotten around. Naturally, there have been some questions about how they intend to use this mark. Bloomberg Businessweek reported:
“Guests are welcome to use as much or as little tech as they want,” says Applebee’s spokesman Dan Smith. “Like many brands, we file many phrases for protection. There’s absolutely zero percent linkage between No Tech Tuesday and anything in the restaurant.”
OK, so I can still use my iPad while enjoying my Apple Chimicheesecake, what’s the big deal?
The USPTO application was filed on an Intent-to-Use basis. This means, as you might imagine, that the applicant intends to use the mark in commerce, but isn’t doing so yet. The key here is that there must be a bona fide intent to use the mark in commerce. Intent-to-use applications were not created so that companies could stake a claim on every combination of letters and numbers that they find appealing (that’s what domain names are for).
As this Law360 article notes, the USPTO’s Trademark Trial and Appeal Board has recently been giving more scrutiny to Intent-to-Use applications and the bona fide intent requirement. Citing several recent precedential decisions, the author, Judith Grubner, states:
These decisions also signal that the TTAB is becoming increasingly more sympathetic to oppositions based on a lack of bona fide intent and, for an applicant to prevail, the TTAB requires proof of some type of business or product development plan or ongoing activities existing at the time the application is filed.
Let’s review the statement from Applebee’s spokesman Dan Smith: “Like many brands, we file many phrases for protection. There’s absolutely zero percent linkage between No Tech Tuesday and anything in the restaurant.”
Does this signal a lack of bona fide intent to use the mark in commerce? This looks like a classic case of the company’s public relations department not consulting with their legal counsel before making a public statement. If I was Applebee’s trademark attorney, I’d be scrambling for a retraction or revision of that statement.