The function of a trade mark

Print publication


Katy Perry’s performance at this year’s Super Bowl very quickly became an internet sensation, in large measure thanks to the performance of one her backing dancers – dressed as a shark. One of the dancing sharks (now known as the “Left Shark”) appeared not to know the choreography and fumbled his (or her) way endearingly through the routine. The impromptu routine went viral immediately.

Katy Perry, aware of or advised as to the commercial possibilities, has since tried to register the Left Shark design as a trade mark. She has already begun merchandising the shark design, for example on clothing, and her advisers have issued at least one cease and desist letter in respect of the Left Shark.

The US Trademark Office has, however, given the trade mark application very short shrift, refusing it last month on the basis that the Left Shark does not function as a mark that identifies or distinguishes Katy Perry’s musical performances from those of other performers. In other words, a consumer, on seeing the Left Shark, will not necessarily think of Katy Perry. Without such an association, the application was doomed.

The trade mark examiner also highlighted significant discrepancies between the drawing submitted in support of the application and the actual design of the Left Shark that achieved fame at the Super Bowl.

The case is a good illustration both of how merchandising works in the digital age and also of the absolute fundamentals of the purpose of a trade mark.