November 30, 2018

The Trademark Office is Body Shaming Elves

While researching Christmas themed trademarks, I came across U.S. Trademark Application No. 76/644,599 for the following logo of an elf sitting alongside a Christmas tree and books:

Elf Shelf | Intellectual Property Law Firm | Harness IP

The interesting aspect of this application is the first design search code applied by the Trademark Office:

Elf Shelf 2 | Intellectual Property Law Firm | Harness IP

The adjective “grotesque” is surprisingly judgmental, and, in my opinion, there is not clear indication that the depicted elf is a man. Elves are not alone, though — the Trademark Office also searched for “Elves; Fairies; Gnomes; Leprechauns; Trolls.”

On a substantive note, this case is a good reminder to routinely check the status of a trademark application. This application was twice abandoned for failure to respond to an office action. Applicant successfully revived the application the first time, but the Trademark Office denied the second revival petition. In so doing, the Trademark Office reminded the Applicant that a revival petition must be filed “(1) within two months of the mailing date of the notice of abandonment; or (2) within two months of actual notice of the abandonment, if the applicant did not receive the notice of abandonment and the applicant was diligent in checking the status of the application.” To meet the diligence standard of the second prong, an “applicant must check the status of a pending application every six months between the filing date of the application and issuance of a registration.” See TMEP § 1705.05.

Here, the Office Action was mailed on December 15, 2006 and the Notice of Abandonment was mailed on July 23, 2007. The Second Revival Petition was not filed until October 29, 2007 — 10 months after the Office Action and 3 months after the Notice of Abandonment. Applicant alleged that the notice of abandonment was not received. The Trademark Office, however, determined that Applicant did not sufficiently demonstrate diligence in checking the status of the application.

This story does have a happy ending, though: Applicant filed another trademark for a similar logo — this time for a female elf — and guess what? Instead of the “grotesque men” design code, the Trademark Office used: “02.09.04 – Humans, including men, women and children, depicted sitting or kneeling; Kneeling, humans; Sitting, humans.”

The application was approved and registered.