On Feb. 6, 2018, Mascotte Holdings, Inc., one of Kanye West’s companies, filed trademark applications with the USPTO to register the marks for “RED OCTOBER” and “RED OCTOBERS.” The applications are filed in class 25, which covers footwear, pants, shirts, etc. However, these applications looked slightly different because the goods and services listed in class 25 here are extremely broad and covered almost everything possible in class 25. From sneakers and T-shirts, to G-strings, ear muffs, snow suits, and capes. This was done on purpose to reserve the trademark in as many possible goods in that class before they narrow it down by actually using the mark, but most importantly it prevents others from doing the same.
The applications were also filed on an ‘intent to use’ basis. Meaning, that Kanye and his team are claiming that they have not used the marks in commerce as of the date filed, and will have to show evidence that they have used the trademarks commercially at some point in the future before the USPTO can approve and register the two marks. This seemed a little weird to me at first because I know that Nike and Kanye released the Nike Air Yeezy II “Red Octobers” in 2014. However, when you think about it legally it makes more sense. Kanye listed his own company as the owner on the two applications here so he could have exclusive ownership rights to these trademarks, not Nike or Adidas. Filing a new application stating that the goods with these marks on them have not been used yet distances himself and this trademark application from the 2013 Nike Yeezy release and makes a better case for his exclusive ownership if Nike tried to make any claim to ownership or file an opposition to these applications. Exclusive ownership of the ‘RED OCTOBER’ mark is obviously beneficial to Kanye and his company.
Despite the above, the question many were asking at the time of this filing in 2018 was whether Nike would allow Kanye to register this trademark so he can use it with Adidas or another company or if they would file a motion to oppose this registration. Well, the trademark process came and went and Nike did NOT file a motion to oppose either of these trademark. The USPTO issued a Notice of Allowance for both marks on Feb. 26, 2019. Now, the only thing left to do by Kanye and his team is to actually use the ‘RED OCTOBER(S)’ trademarks commercially on the items listed in class 25 above. The USPTO gives you six months after the NOA to use the mark, but you are allowed to pay a fee and request an extension of time for another six months if you cannot show use. You can request a maximum of five extensions total. So, you could have another 36 months to actually use the trademark in commerce, while keeping your original filing date from more than three years earlier.
Brands do this and file early before using the trademark so that they can get an earlier filing date and essentially mark their territory over a specific trademark before others can. This first use date can be very important in the event a conflict develops with another mark. Simply put, Trademark registration in the US is based on first to use the trademark. There are two ways to qualify as a first user of a trademark; 1) Actual use of the trademark on a product that is distributed in the marketplace ( or first use of a mark in connection with advertising and marketing if it is a service mark); or 2) Intent to use the trademark at a later time. In the later, the applicant files the mark first before it is used by another party, and puts the mark into actual use at another time.
The advantage of filing an intent-to-use application (option 2 above) is that your filing date will serve as the date of your first use of the mark— assuming you actually use the mark and take the other steps necessary to register the mark. This first use date can be very important in the event a conflict develops with another mark. If you filed your intent to use trademark application before another party began to use a conflicting trademark, you’ll get priority in registration over the conflicting trademark should there be a dispute. This approach allows you to reserve a trademark before you’re ready to launch your product, service, business or whatever uses the mark.
As of today, Kanye and his team are on extension request #3. The Feb. 26, 2021, deadline to file extension #4 is right around the corner. I haven’t heard about anything with the “RED OCTOBER” mark coming out this month so it’s likely that an extension will be filed and only one more remain. That means that within the next year we will see something from Kanye and his team, or the trademark will be abandoned.
