A World Without Trademarks

We almost never personally know the person who makes the things we buy and, yet, we blithely go into the world and buy stuff.

That would be insanely more difficult without trademarks.

Imagine a trip to the grocery store where the packages identify the contents with generic names but nothing else.

You liked the IPA you bought last week. Is the bottle that says “IPA” from the same brewery? That TP was soft and yet strong. I wonder if this package labeled “toilet paper” is the same stuff?

Maybe you fall back on knowing the grocer personally and that she stocks stuff only from reputable suppliers, but last week you bought three cans of tomato soup. They were all good, but one was creamier, just the way you like it. Here you are facing a shelf of cans marked “tomato soup.” Which have the soup you like?

It’s hard enough to imagine traditional commerce existing without trademarks, but how would e-commerce ever work? What good is a product review without branding? How much confidence would you have in the goods you’d receive from Amazon® or PeaPod® without being able to order by brand?

We sort of know how it would be. Not many people are comfortable ordering produce online because the brand doesn’t really tell you whether the item is overripe or has been mishandled.

Now imagine that every purchase was as involved as finding that perfect peach.

Trademarks are awesome.



Insomnia Cookies® and Momspit®

Some companies just nail the trademark choice.

They hit that sweet spot between coming right out and saying what they are (think Pizza Hut®) and having a trademark that tells you nothing at all (think Starbucks®).

In the trademark world, that sweet spot is called a “suggestive” trademark.

Suggestive trademarks are unlike any other kind of trademark. They “require imagination, thought, or perception . . ..” unlike a descriptive trademark “which immediately tells something about the goods or services.”*

Here are some of my favorite suggestive trademarks:

  • Insomnia Cookies®
  • Momspit™
  • Soylent®
  • Nest®
  • Roomba®
  • Smartmouth®

Each one gives you just a faint idea of what it is and what it stands for. Each pops up in the corner of the customer’s eye and reels her in. Great suggestive marks contain some or all of these elements:

  • Incongruity – The trademark contrasts with the product or service in some way.
  • Humor – The trademark makes you laugh because of the incongruity or surprising connotation.
  • Stickiness – The incongruity, humor, or another element of the trademark makes the trademark easy to remember and distinguishes it from the trademarks of competitors.
  • Relatability – The trademark reaches your memories or feelings in a direct way.
  • Imagination or mental pause – There may be a moment between hearing or seeing the trademark and fully grasping all of the connotations and hidden meanings.

It’s crazy hard to think up a suggestive trademark, but it’s worth its weight in gold.



*Trademark Manual of Examination Procedure Section 1209.01(a)

Color Me Jealous

We’ve looked at the strength of color as a trademark. Recently, a federal court had a chance to decide a case that’s all about color. Before we get into it, let’s try a quick test:
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Which airline flies this plane?

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Which company made this piece of equipment?



What brand of tape is this?


If you thought the middle one was made by John Deere, you aren’t alone. Seventy-four percent of respondents can identify John Deere farm equipment just by the colors.

What does it take to have that strong of a color mark? Here’s what the court talked about:

Protect your trademark: “Between the late 1980s and today, Deere sent communications to [40] companies requesting that they cease using the green and yellow color combination.”[1]

Use your trademark for a really long time: “For more than 100 years, Deere has sold a wide variety of . . . equipment” using those colors.[2]

Spend a fortune on advertising: “In 2016, Deere spent roughly $80 million on advertising its agricultural equipment . . ..”[3]

Dig up the dirt on your competitor: “FIMCO chose its green and yellow color scheme to associate with Deere’s famous green and yellow tractors.” [4] “If a party chooses a mark with the intent of causing confusion, that fact alone may be sufficient to justify an inference of confusing similarity.”[5]

We’ve seen how important it is to pick a mark that has the potential to be strong. Now we know what it takes to build that muscle: Time, money, effort.





[1] Deere & Company v. FIMCO Inc., d/b/a/ Schaben Industries, USDC Western Dist of Kentucky, Case No. 5:15-CV-105-TBR, at page 67.

[2] Deere v. FIMCO Inc., at page 4.

[3] Deere v. FIMCO Inc., at pages 10.

[4] Deere v. FIMCO Inc., at page 98.

[5] Deere v. FIMCO Inc., at page 84.


Photo of Southwest® Airlines plane ©2014 Tomàs Del Coro licensed under Creative Commons Attribution-ShareAlike 2.0, with modifications by Beeline.

Grow or Go to Zero

What business doesn’t want its assets to grow over time?

The choice you make at the start can have a huge impact on whether the value of your trademark will grow or wither.


If you start with a wonderful trademark like Nest®, Staples®, Google® or Moo®, the sky is the limit for trademark value. Whether the mark actually attains that value depends on lots of things, but at least there’s nothing about the trademark itself that will hold you back.

If you start with a trademark that:

  • Consists of words that everyone and her brother are using, like Office Depot® or United®; or
  • Merely describes what you sell, like Radio Shack® or Century Theatres®; or
  • Is already owned by someone else;

then you’re starting with two strikes against you. Your trademark will be at best neutral and at worst a liability.

Coming up with a clever trademark is hard. Coming up with a trademark that is clever and that no one else is using is even harder but, isn’t it worth it so you don’t have to worry about its holding you back? Isn’t it worth the effort and the cost to get this one thing right at the beginning?



Three Stripes, You’re Out

There’s a brand that’s going after the owners of each of these trademarks for infringement against its famous logo. Can you guess what these trademarks are all allegedly infringing?

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No? You can’t figure out who’s going after Futbol Club Barcelona’s jersey stripes, Huck Faters’s stylized bird-flipping, Turner Sports’ stylized “E”, God is Limitless’s . . . whatever that is, and Tesla’s stylized “3”?

Here’s a hint:  They make clothing and shoes, but are best known for their shoes.

Still not sure?

Scroll on down for the answer.




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Were you confused into thinking that Turner Sports was connected to Adidas?

Did it seem to you that Tesla had adopted the three horizontal lines to capitalize on Adidas’s fame?

I’m all for going after infringers. I completely understand the need to protect a trademark or risk losing it, but I think it’s possible to go too far.

What’s next? Suing Calphalon® if they use a picture of a frying pan with three strips of bacon? Forcing the U.S. Navy to change the insignia on a seaman’s uniform? Going after Verizon® when it provides good, but not great, cell phone coverage?







Sextuple Burger?

Smashburger® recently started calling one of its hamburgers the TRIPLE DOUBLE.

In-N-Out Burger® and its DOUBLE DOUBLE® burger and TRIPLE TRIPLE® burger have a problem with that.

Waddaya think? Should Smashburger get to keep using TRIPLE DOUBLE?

Hold that thought while I add some more facts.

In-N-Out started using TRIPLE TRIPLE in 1966 (and registered it in 1990). It’s been using DOUBLE DOUBLE since 1963 (and registered it in 1973).

Knowing that its use goes back to before most of us were born probably makes In-N-Out’s case stronger in your mind. Why is that?

Long-time readers will remember that infringement boils down to whether or not the use of the trademark is likely to cause confusion among consumers. How does longevity make confusion more likely?

If a trademark has been in use for a very long time, it comes more easily to mind among more people. You don’t have to stop and think: “Hmm. Where have I heard something like that before?” Instead, you think: “Woah! Doesn’t In-N-Out have a burger called DOUBLE DOUBLE?”

The longevity also makes it seem like Smashburger (a relative newcomer to the burger biz) is using TRIPLE DOUBLE as a way to get people thinking about In-N-Out, rather than as just a catchy burger name they came up with out of the blue. That piggy-backing on someone else’s fame is a big no-no in the world of trademarks.

If you were advising Smashburger, would you tell them to fight or change the burger name?


That Which We Call Weinstein By Any Other Name Would Smell As Foul

Assuming you aren’t named Tiffany or McDonald, is it a good idea to sell widgets using your name as a trademark?

If you do, enforcing your rights is going to be hard. Kicking people out of their own names is a game for the big guys, but even if you have the resources of McDonalds Corporation and the fame of Tiffany & Co., it’s risky to tie a brand to a person. Just ask the people at The Weinstein Company, who are now considering a branding change in the wake of allegations of sexual harassment and abuse by Harvey Weinstein. Ditto Mario Batali.

Old AJ.png

Even using the name of a fictional character can be problematic due to changing social mores. For example, Quaker Oats® has had to update the image of Aunt Jemima® over the years. On the left is the Aunt Jemima trademark circa 1905. On the right, 1992.

New AJ.png

Even with the update, the mark (word or image) is problematic and likely to become more so.  Ditto Uncle Ben’s®.

Pep Boys.png

Names and images are more likely to become dated. When was the last time you met someone named Manny or Moe? And look at these guys? Is this who you want to trust with your new hybrid car? Ditto Mr. Clean.®

Every trademark has unforeseeable risks. No one could have predicted that sales of a diet product that had been on the market for 47 years would fall by 50% because its trademark sounds like a deadly disease, but names and images of people are more likely to cause problems. There are so many great ways to brand, why pick something with so much potential for problems?



FUCT is Not

Last week you could not register the trademark FUCK. Today you can.  If that’s all you wanted to know, you can stop reading, but you’ll miss a pretty cool story.

Here’s how it went down.

There’s a statute that prohibits registration of a trademark that “Consists of . . . scandalous matter; or matter which may disparage” a group of people.*

Earlier this year, the U.S. Supreme Court heard a case brought by Simon Tam. Mr. Tam is the front man for an Asian-American rock band called The Slants. The Trademark Office refused to register THE SLANTS because it was disparaging to Asians. The Supreme Court ruled that it’s an impermissible restriction on speech for the government to refuse registration on that basis. Mr. Tam and The Slants were able to register and rock on.

Waiting in the wings was Mr. Erik Brunetti. Mr. Brunetti had been trying to register his clothing brand FUCT. He was refused registration because FUCT is a naughty word and therefore “scandalous.”

The Supreme Court’s ruling focused only on the “disparagement” part of the statute, so we have all been waiting to hear what the Court of Appeals for the Federal Circuit (CAFC) would say about FUCT which implicates the “scandalous” part of the statute.

On Friday, we found out. Along with Mr. Brunetti’s application, the following applications will now move forward:


It also means that Work Release Records, Inc.’s application to register CERTIFIED STREET NIGGAZ, which the Trademark Office said was both disparaging and scandalous, will move ahead.

That’s all you need to know, but here is the most hilarious bit from the decision: The government argued at one point that the statute is constitutional because the government has an interest in “whether or not its examiners are forced to decide whether one drawing of genitalia is confusingly similar to another drawing of genitalia.” [Opinion at page 30]


And here is the majority’s inspiring conclusion:

“The trademark at issue is vulgar. And the government included an appendix in its briefing to the court which contains numerous highly offensive, even shocking, images and words for which individuals have sought trademark registration. Many of the marks rejected under § 2(a)’s bar on immoral or scandalous marks, including the marks discussed in this opinion, are lewd, crass, or even disturbing. We find the use of such marks in commerce discomforting, and are not eager to see a proliferation of such marks in the marketplace. There are, however, a cadre of similarly offensive images and words that have secured copyright registration by the government. There are countless songs with vulgar lyrics, blasphemous images, scandalous books and paintings, all of which are protected under federal law. No doubt many works registered with the Copyright Office offend a substantial composite of the general public. There are words and images that we do not wish to be confronted with, not as art, nor in the marketplace. The First Amendment, however, protects private expression, even private expression which is offensive to a substantial composite of the general public. The government has offered no substantial government interest for policing offensive speech in the context of a registration program such as the one at issue in this case. We hold that the bar in § 2(a) against immoral or scandalous marks is unconstitutional because it violates the First Amendment. We reverse the Board’s holding that Mr. Brunetti’s mark is unregistrable under § 2(a).” [Opinion at pages 41-42]

Yay trademarks! Yay freedom!



*USC Section 1052(a)

**Matal v. Tam, 137 S. Ct. 1744 (2017).

What’s in a Corporate Name?

In October 2015, the company that owns GOOGLE® changed its name from Google Inc. to Alphabet Inc. Recently, Coach, Inc. announced it was changing its corporate name to Tapestry, Inc. I overheard some people chatting and it was clear they thought Coach was changing the brand instead of just the name of the corporation.

The name of a corporation is NOT a trademark.

I have bought and will continue to buy COACH® brand handbags. As a consumer, I neither know nor care what the name of the corporation is. I look for the brand because it means stylish, high quality, and functional.

I use GOOGLE® brand internet search services. I don’t care what the name of the corporation is. I use GOOGLE® brand search services for extraordinary search algorithms, an uncluttered user interface, and solid results.

It’s possible for a corporate name to include a trademark. NIKE® happens to be owned by Nike, Inc. That doesn’t make “Nike, Inc.” a trademark. If Nike, Inc. changed its name to Wangadoodle Inc. it wouldn’t affect the trademark NIKE®.

Trademarks are shorthand for how you like your stuff.

Think of it this way. A mom sends her kid to the store. “Max,” she says, “Run down to HOME DEPOT® and pick me up a BLACK + DECKER® drill.” She doesn’t have to describe the quality she wants or rely on little Max to be able to know a good drill from a bad one.

The mark is all she needs.



When Can I Use the Mouse?

So: When can I use an image of Mickey Mouse® in my advertising?

Never: You’ll never be able to use an image of Mickey Mouse in your advertising.

Really?: Never is a very long time.

Okay: You’ll be able to use Mickey Mouse when Disney® stops using Mickey Mouse and then all the kids who were alive when Disney was using Mickey Mouse have grown old and died. And their kids, too. And maybe their grandkids.

But why?: At some point the copyright will run out, won’t it?

Hahaha: Yeah, someday the copyright will run out on Steamboat Willie, but that has nothing to do with what you asked.

But: Why not?

Because: Copyrights run out but trademarks never die, unless the trademark owner stops using the trademark and it fades from the public’s memory as a trademark. Hence, my comment about grandkids.

Hmmm: My ad is very funny. Maybe it will pass as parody.

Fat chance: Parody’s allowed only when the interests of free speech outweigh the interests of the trademark owner. That’s almost never true with advertising, which traditionally has very low free-speech interests.

But: That doesn’t seem fair to me.

OK: Think about it this way. Disney has spent decades and millions of dollars promoting its goods and services using the mouse. Why shouldn’t they get the full benefit of their investment? Why should you be allowed to piggy-back on their brand recognition to sell your stuff?

Well: When you put it that way . . .