Cody Garrett Runnels Rhodes, more commonly known as Cody Rhodes is a second-generation American professional wrestler for World Wrestling Entertainment (WWE). Rhodes is the son of Virgil Riley Runnels Jr., who was a famous WWE wrestler known as “The American Dream” Dusty Rhodes. Dusty spent his career working in the wrestling industry until his death in June 2015.
On March 10, 2019, Rhodes, who goes by the moniker “The American Nightmare,” filed a trademark application for his late father’s moniker, “The American Dream” (see U.S. Serial No. 88/333,299). The application is designated under international class 041, and claims the following list of goods and services:
“Entertainment services, namely, live appearances by a professional wrestler and sports entertainment personality; entertainment services, namely, personal appearances by a professional wrestling and sports entertainment personality; entertainment services, namely, wrestling exhibits and performances by a professional wrestler and entertainer; entertainment services, namely, providing podcasts in the field of professional wrestling and sports entertainment.”
The USPTO initially refused registration of the mark in an office action on March 24, 2020, stating that not only did Rhodes fail to present a specimen of the mark as it would be used in commerce, but that he has “applied for “entertainment services, namely, live appearances by a professional wrestler and sports entertainment personality” then stated in another application that Dusty Rhodes, with whom this mark is used, is not a living individual” (emphasis added). Naturally, you can’t have live appearances from a person who is no longer alive.
Furthermore, the USPTO stated that the specimen that Rhodes submitted merely “identifies only the name of 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, the only thing that the specimen did was to identify a character; it did not identify and goods or services provided or how the mark would be used with said goods and services.
In response, Rhodes submitted a different specimen, arguing that the substitute specimen shows the mark used in “ring gear” worn during wrestling matches, on an action figure, and a few other examples, claiming that such a specimen is “similar, if not identical, to other specimens filed with respect to innumerable other wrestling-related trademarks and accepted by the USPTO.”
The USPTO then responded with a final office action, maintaining its refusal. In its refusal, it explains that the substitute specimen “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,” and basically stated that the “The American Dream” mark that Rhodes is applying for “does not function as a service mark because it does not show THE AMERICAN DREAM as the source of the applied-for services.” Additionally, the USPTO invited Rhodes to provide any serial numbers for any U.S. trademark applications that demonstrate the stage name of a deceased performer being registered after that performer’s death. Finally, the USPTO noted that Rhodes’ argument about these types of specimens being similar, if not identical to other specimens filed with respect to innumerable other wrestling-related trademarks and accepted by the USPTO” is not unpersuasive, as “prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board” (TTAB); each trademark application is decided on its own facts, and each mark must stand on its own merits.
Rhodes then filed a request for reconsideration on August 20, which was subsequently denied by the USPTO last week Monday (September 14). The rejection was on the grounds that Rhodes’ request did not:
(1) raise a new issue;
(2) resolve all the outstanding issue(s);
(3) provide any new or compelling evidence with regard to the outstanding issue(s), or;
(4) present analysis and arguments that were persuasive or shed new light on the outstanding issue(s).
At this point, if he hasn’t done so already, Rhodes options are to attempt an appeal at the TTAB and hope that they disagree with the position of the trademark examining attorney who evaluated his application. If Rhodes hasn’t filed an appeal to the TTAB, he has until January 2021 to either: (a) file another request for reconsideration, addressing the outstanding issues raised by the trademark examining attorney, or to (b) file a notice of appeal to the TTAB.