The USPTO issued final refusals against two of Cardi B's USPTO trademark applications for OKURRR intended for use in connection with clothing and paper goods. The Examiner that refused the USPTO applications claims that OKURRR (a) does not function as a trademark as it is a "commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment," and (b) is confusingly similar to WORRY ABOUT YOUR OWN KID OKURRRRT for related goods and services.
Cardi B's catchphrase OKURRR has been used in a Pepsi commercial, in her songs, in interviews, and elsewhere. So why is the USPTO refusing her catchphrase?
The Examiner issued a final refusal after two non-final rounds of refusals. The Examiner argues that mere additions or deletions to marks may be enough to find a likelihood of confusion between marks that bear other similar wording. Here, the Examiner claims that OKURRR is a mere deletion of the additional wording and the letters "RT" from WORRY ABOUT YOUR OWN KID OKURRRRT.
The Examiner also issued a failure to function refusal. A failure to function refusal essentially claims that the wording applied for is a common term and no one person or entity should have exclusive rights. Unlike a merely descriptive refusal, amending the application to the Supplemental Register does not help to overcome a failure to function objection. The Examiner maintained that based on Internet evidence and well-known publications OKURRR is a common expression, especially amongst celebrities and the drag community, as an alternative way of saying "OK" or an affirmation of sorts. Consumers, the Examiner contends, would not view the mark as identifying the source of the goods, and may only convey an informational message.
Lawyers for Cardi B filed responses to the second non-final action issued in November of 2019, by submitting arguments in an attempt to overcome the USPTO objections. With regard to the likelihood of confusion refusal, Cardi B's lawyers contended that the mark is not likely to cause confusion due to the different wording and elements in the competing marks. With regard to the failure to function refusal, Cardi B's lawyers argued, among other things, "[i]t is premature for the USPTO to deny registration on the ground that the applied-for mark does not function as a trademark before Applicant is able to demonstrate how the mark is being used." Cardi B's lawyers relied on case law supporting the holding that relevant public perception is a necessary question to determine whether a designation functions as a mark.
So what's next?
For a likelihood of confusion refusal, a party may submit arguments and/or coordinate a coexistence agreement with the owner of the cited mark to overcome a likelihood of confusion objection. However, a failure to function refusal requires overcoming the refusal. We anticipate that Cardi B will appeal the refusal, especially in light of her public defense of her trademark application, but we will see.
For assistance related to USPTO responses to office actions or other intellectual property questions, please contact Scott Sisun at firstname.lastname@example.org or 347-913-7800.