January 01, 2015

Katy Perry’s “Left Shark” Trademark Application More Whimper than Roar

Erin E. Rhinehart

Remember the left shark that rose to Internet fame following the Super Bowl halftime show earlier this year? Of course you do. So, it’s no surprise that people have been trying to capitalize on “Left Shark,” as he is referred, with T-shirts, figurines, and other goods. This hasn’t made Katy Perry too happy, though. Since lefty became an Internet sensation, Katy Perry (or, more accurately, her lawyer) has been working hard to assert intellectual property rights in Left Shark. The Trademark Trial and Appeal Board (TTAB), however, has been less than receptive to the performer’s applications.

One week after the Super Bowl, Perry’s lawyer filed applications for trademark protection of Left Shark and threatened to file suit against a man selling 3-D printed figurines of Left Shark. In April, the TTAB issued an official letter refusing registration of the design of Left Shark as a service mark. The TTAB explained that “the applied-for mark . . . identifies only a particular character; it does not function as a service mark to identify and distinguish applicant’s services from those of others and to indicate the source of applicant’s services.” In other words, Perry tried to register the mark as a “service mark” (i.e., a mark (here, the shark) that represents the services provided by the entity seeking registration (here, Katy Perry’s company, Killer Queen, LLC)). As the TTAB explained, “[a] design of a character is registrable as a service mark only where the record shows that it is used in a manner that would be perceived by consumers as identifying and distinguishing the services in addition to identifying the character.” Because Perry’s services are “musical and dance performances,” the TTAB found that Left Shark does not identify and distinguish such services.

Most people understand that a trademark is a brand name that includes words, names, symbols, or combinations thereof. Service marks are different from trademarks, though they are often referred to interchangeably. A service mark, as the name suggests, identifies and distinguishes the services, rather than goods, of a seller or provider. Although federal registration of a mark is not required (trademark or otherwise), registration offers several advantages, including public notice of ownership of the mark, exclusive ownership rights nationwide, basis for foreign registration, and the right to sue in federal court and recover treble damages and attorney fees. Therefore, it is not surprising that Perry wants to stake her legal claim in Left Shark and capitalize on his Internet fame.

Perry still has other applications pending before the TTAB, including registration of the phrase “Left Shark.” She also has the option of submitting a response to the TTAB’s rejection letter, and appealing a final refusal by the board in federal court. Needless to say, it’s unlikely that this is the last the TTAB has seen of Left Shark.

Erin E. Rhinehart

Erin E. Rhinehart is a partner with the commercial litigation firm Faruki Ireland & Cox P.L.L. in Dayton, Ohio.