Trademark Case - this case talks about how to work with the US Patent Trademark Office and apply for intent-to-use (ITU) trademark application.

Sunny n' Funny Days, Inc. ("SFD") is the nation's largest and oldest provider of clown costumes and large arena-sized circus performances. SFD owns a registration for "SUNNY N' FUNNY DAYS" for use in connection with costumes and producing live acrobatic, musical, and comedy performances. SFD also operates a clown school that it uses as a feeder for clowns in its circus shows. SFD has sold out arenas for circus shows in every major city in North America every year for the last 10 years.

SFD has advertised its tours as "Awesomeness Awaits on [Date of the Show]" for the last five years without registering those words as a trademark. Last month, a major entertainment company filed an intent-to-use (ITU) trademark application with the U.S. Patent and Trademark Office (PTO) for "Awesome Awaits" for use in connection with operating theme parks.

The first two Awesome Awaits parks are scheduled to open in New York and Los Angeles in exactly one month. Each park will have two massive roller coasters, one with a talking animals theme and one with a time-travel theme. Both parks have also employed full-time staffs of professional clowns to make balloons for visitors.

SFD wants to file an application with the PTO to register "Awesomeness Awaits" as it plans to continue using that mark for its circus shows and plans to expand its use of that mark into other product and service categories in the future.

QUESTION: How could the entertainment company have reduced its risk of infringing on SFD's trademark rights prior to filing its ITU application for "Awesome Awaits"?

a. Think "clearance" searching. Could it have conducted an extensive Google search for:

i. Variations of "Awesome Awaits" (e.g. "Awesomely Awaiting")

ii. Variations of "Awesome" along with a good or service similar to the entertainment company's goods and services (e.g. "Awesomeness roller coaster" and "Awesomeness clown balloons")

b. Would it have been better off selecting a different name?

i. Could the words "Awesome" and "Awaits" be considered descriptive or generic?

ii. Could the entertainment company have selected a better (i.e. more arbitrary or fanciful) name as its new trademark?