One Trademark, Two Owners

Since trademarks exist to tell consumers the source of goods, how can it be OK for two companies to use the same trademark?

Sometimes, using the same mark is NOT likely to lead to confusion:

  • Consumers are unlikely to be confused if the companies are in different fields. No one thinks DOVE® soap and DOVE® chocolate come from the same company.
  • Companies can also share a trademark geographically if they’re purely local. Tony’s Cleaners in Concord, NH is probably not the same as Tony’s Cleaners in Seattle, WA.

But what if two companies use:

  • the same trademark
  • for the same stuff
  • in the same market?

We recently saw an example of this: co-ownership of the trademark SUPER HERO by Marvel and DC Comics.

Another example is SWISS ARMY, which was used for decades by both Victorinox AG and Wegner, S.A.[1] That co-use was allowed because of some very specific circumstances:

Consumer confusion was not an issue because the quality was identical.

Wegner and Victorinox both made products to the specifications of the Swiss Army, so both products were of the same quality.

Consumers can know the source through other indicia. [2]

Victorinox pocketknives were sold as THE ORIGINAL SWISS ARMY KNIFE and Wegner’s were sold as THE GENUINE SWISS ARMY KNIFE. Each also used different versions of the Swiss cross on the knives:

Victorinox blow up.png Wenger blow up.png

If you think this is an extremely rare set of circumstances, you’re right. The rule that two companies can’t use the same trademark holds true, but there are occasional exceptions.

 

 

Big shout out to Bill, for suggesting this topic! What do you want to know about?

 

bl_brandfooter

 

[1] In 2005 Victorinox acquired Wegner, so the issue is no more.

[2] We saw this with SUPER HERO, too. Both Marvel and DC tended to use their “house brands” together with SUPER HERO.

If I Can’t Be a Superhero, Can I Use It As a Trademark?

Brooklyn. 1967. Ben Cooper, Inc. registers SUPER HERO for masquerade costumes.[1]

Meanwhile, in neighboring Manhattan . . .

Mego Corporation tries to register WORLD’S GREATEST SUPER HEROES for dolls.

Kablam!!!!!!

Ben Cooper leaps into action to oppose Mego’s application.

Weakened and unable to fend off Ben Cooper, Mego transfers its application to Marvel Comics Group.

Kerpow!!!!!!

Marvel emerges victorious and receives a registration.

Chicago. September 1982. Someone laces Tylenol tablets with potassium cyanide. Seven people die. With Halloween approaching, parents across the country fear tampering with treats and keep their kids home. Ben Cooper suffers as sales of costumes plummet. Weakened and close to death, Ben Cooper assigns its SUPER HERO registration to Marvel and DC Comics.

Recognizing that they are stronger sharing their SUPER HERO trademark rights, Marvel and DC transfer registrations they each own for SUPER HERO to joint ownership.[2]

Today, they continue to jointly own six live registrations for SUPERHERO for T-shirts, comic books, production services, and toy figures.[3]

The Trademark Office is strewn with the corpses of 200+ SUPER HERO applications and registrations for everything from slot machines and legal services to explosives and insecticides.

It seems nothing can stop the combined might of Marvel and DC.

But wait . . .

More recently, applications have been slipping through without even an opposition from Marvel and DC. There are now registrations for marks containing SUPER HERO for chiropractic services, fortunetelling, and even one for capes and T-shirts.

Have Marvel and DC lost their will to fight? Will Marvel and DC ever again rule the SUPERHERO trademark world? Tune in next time . . .

 

Big shout out to Bill B., for suggesting this topic! What do you want to know about?

 

bl_brandfooter

 

 

[1] Even if you’ve never heard of Ben Cooper, Inc. you’ve probably worn one of its costumes. In its heyday, Ben Cooper, Inc. produced kids’ Halloween costumes under licenses from companies like DC Comics, Mattel, The Children’s Television Workshop, and Disney.

[2] How can competitors co-own a registration? How does that work? Stand by for a post on that crazy issue coming soon to a blog near you.

Here are the SUPER HERO trademarks that DC and Marvel transferred to each other at the end of 1986:

Mark App Date Goods & Services Original Owner Status
SUPER HEROES 1982 Entertainment services DC Dead
SUPER HEROES 1982 Cookies Marvel Dead
SUPER HEROES 1981 Soap DC Dead
SUPER HERO 1980 Cake pans Marvel Dead
SUPER HEROES 1980 Games Marvel Dead
SUPER HEROES 1980 Linens DC Dead
SUPER HEROES 1980 Tote bags DC Dead
SUPER HEROES 1979 Comic books Marvel Live
SUPER HEROES 1976 Belts DC Dead
SUPER HEROES 1974 Toys Marvel Live
WORLD’S GREATEST SUPER HEROES 1972 Dolls Marvel Live

[3] Marvel and DC also co-own an application for SUPERHERO for entertainment services, but that application has been suspended since 2010 pending the disposition of an application for SUPERHEROE for entertainment services owned by Raynaldo Garza, which itself is subject to several office actions that refuse to register, in part because of registrations owned by Marvel and DC.

Each also individually owns registrations that include SUPERHERO. For example, Marvel owns MARVEL SUPER-HEROES.

Over the years, they have also jointly taken ownership of these applications and registrations following disputes:

COMPUTER SUPER HEROES Computer services Onetech Computer Consulting, Inc. Live
SUPERHEROES OF SERVICE Telecom services Glenwood Telecom Live
SUPERHERO Ice cream Driggs Farms Dead
SUPERHERO SCHOOL Educational services Philip and Noah Margo Dead

 

Skeletons in the Closet

It’s recently become legal to register a disparaging trademark but that doesn’t mean disparaging trademarks are new. Whether it’s the Washington Redskins®, Aunt Jemima®, or the Land O’Lakes® logo, lots of troubling marks have been around for a while* and are still blithely swimming in the deep end of the offensive pool.

IMG_1916.jpgScotch® was first registered for tape in 1948. The name originated from the offensive idea that people of Scottish descent are all thrifty

3M’s advertising even included comic strips featuring the embarrassing and creepy Scotty McTape who assured us that “It’s ‘Scotch’ brand! That’s the very tops — in thrift and quality.”

Darlie_toothpaste_over_the_year.jpg

Colgate Palmolive currently sells DARLIE brand toothpaste in Asia but, in 1985 when it acquired the brand from Hawley and Hazel, it was DARKIE brand and the picture on the box depicted an image inspired by Al Jolson in black face.

While the change to DARLIE and the new image on the box is an improvement, the Chinese characters on the box still translate to “black person.”

IMG_1933.jpgNestlé® has updated the mascot to make it a bit less offensive, but maybe they should think about getting rid of it altogether along with word mark ESKIMO PIE, which some natives of Alaska, Canada and Greenland find offensive.

Companies find it hard to give up what they perceive as a valuable brand but I wonder it they aren’t clinging too long to offensive words and imagery at the risk of losing customers.

 

Big shout out to Max F. for suggesting this topic.

bl_brandfooter

*Some disparaging marks predated the prohibition against registering them under the Lanham Act in 1946. Others simply weren’t considered disparaging at the time.

The image of “Darlie toothpaste over the year” is used under Creative Commons Attribution-Share Alike 4.0 International license from Thomaschiou.

Bad Decisions Part One

Pick a great trademark. Register it.

Sounds easy but people get it wrong all the time. Today, we’ll focus on mistakes people make when they pick a trademark. The next post will focus on mistakes people make when they try to register their trademark.

I’m picking a trademark so that everyone will know what we sell right away.

There are so many problems with this:

  • At best your trademark will be incredibly weak and virtually indefensible. At worst, it won’t have any rights at all. Like FLAT FIX.
  • Everyone will confuse you with everyone else. Which of these is the most memorable: Staples® OfficeMax® or Office Depot®?
  • You’ll be locking yourself into whatever you describe so that your brand can’t grow and change as your business does.

I’m naming it after myself.

Trademarks that are proper names are weak, both legally and from a marketing perspective. They also involve risks that other trademarks don’t have:

If those ideas are bad, what should you do?

Pick a trademark that tells your customers how they’ll feel or what they’ll experience when they use your product or service: Nest®; Sir Kensington’s®; Roomba®. A suggestive trademark is easy to defend and a marketer’s dream. Go suggestive. You’ll never regret it.

 

 

Big shout out to the members of Pilotworks in Brooklyn, for suggesting this topic! What do you want to know about?

 

bl_brandfooter

Wild Flower and du Pont

I hand you a box of WILD FLOWER brand gumdrops and a box of WILD FLOWER brand donuts.

Do you think the gumdrops and the donuts came from the same company?

You’re probably thinking something like this:

Candy and donuts are sort of related and it’s not hard to imagine a candy company also selling donuts but, off hand, I can’t think of a company that sells both under the same brand.

Would your answer have been different if I had given you a box of candy and a bag of cement mix? What if I had handed you a box of gumdrops and a box of jelly beans?

You’ve just done an analysis similar to what trademark attorneys do all the time. You considered the “relatedness of the goods and services” to figure out whether trademarks are “confusingly similar.”[1]

  • Do the goods/services feel related? Would you find them in the same type of store, like handbags and jewelry? Would you find them in the same department of a store like pants and belts?
  • Can you think of a company that sells both under the same brand?

Both of the bulleted question-types are important. Sometimes goods are closely related even if there’s no company that does both. Other times, there can be one brand used for lots of really different stuff: Yamaha Corporation uses the YAMAHA® trademark to sell everything from motorcycles to trumpets and lots of stuff in between.[2]

“Confusingly similar” is both a difficult and complicated concept and pure common sense.

 

bl_brandfooter

[1] There are a bunch of these question tools. Trademark attorneys call them the “du Pont Factors” because they come from a case involving E. I. du Pont de Nemours & Co. Here are the most important ones:

  • The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
  • The relatedness of the goods or services.
  • The similarity or dissimilarity of established, likely-to-continue trade channels.
  • The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing.

[2] Here’s a partial list of the stuff Yamaha Corporation sells under its YAMAHA brand: Musical instruments, skis and ski bindings, motorcycles, motorboats, eyeglasses, golf clubs, badminton rackets, robots, semiconductors.

Immorality and Scandal

What’s been happening at the Trademark Office since the floodgates to immorality and scandal were opened?

You may remember that the United States Supreme Court ruled that it was unconstitutional to refuse to register trademarks that include disparaging words. Soon after, the Circuit Court of Appeals for the Federal Circuit applied the reasoning in the Supreme Court decision to shitcan rejecting trademarks with immoral or scandalous words.

Here’s a rundown of applications filed in the first year following the Supreme Court’s decision that have a least one of the Seven Words You Can’t Say On Television:

SHIT: 80 applications filed. My favorite: EAU SHIT for cologne.

PISS: Not a popular choice. Only 3 applications. Fave: PISSPERFECT for “artificial penises that release fluid.”

FUCK: 82 applications. I’m sorry to report that most of them are boring AF but I do rather like NAMASTE AS FUCK.

CUNT: Only 2 applications and both filed a full year after oral argument.

COCKSUCKER: 0. Zip. Nada. Zilch. I’m sure there are some missed branding opportunities here.

MOTHERFUCKER: Only 2, but you gotta love Y’ALL MOTHERFUCKERS NEED JESUS for clothing. The applicant has been using the trademark since 2011. A real groundbreaker.

TITS: Only 8 applications, including CHECK YOUR TITS AND PITS for “charitable projects . . . to promote breast cancer detection.”

I also checked on filings of applications containing disparaging words. There were only a handful. Several were filed by Snowflake Enterprises, LLC with an address on King Street in Alexandria, VA, just a short walk from the Trademark Office. Cool.

 

Big shoutout to Cody B., who asked me a question that led to this post. What do you want to know about?

 

bl_brandfooter

Can I Use This Logo?

I’ve written a ton of blogs on how to figure out whether a word is available for use as a trademark, but how do you know if a logo is safe to use?

Each registered trademark that includes a logo has a description of the logo as part of the registration. For example, here’s the description of Happy Bee that Beeline uses:

Bee only.pngThe mark consists of a stylized side view of a bee comprised of: a semi-circle outlined in grey, filled with a gradient of color ranging from orange to yellow with three vertical grey lines depicting stripes and a grey circle depicting the eye; emerging from the semi-circle are two curved grey lines depicting the antennae and a small grey triangle depicting the stinger; and above the semicircle are two overlaid blue stylized wings.

Yup. I actually get paid to write stuff like that.

Every registered trademark with a logo also has design codes assigned to it by the Trademark Office. Here are the design codes for Happy Bee:

03.23.06 – Bees; Hornets; Wasp; Yellowjackets
26.01.06 – Circles, semi; Semi-circles
26.17.01 – Bands, straight; Bars, straight; Lines, straight; Straight lines, bands or bars
26.17.04 – Bands, vertical; Bars, vertical; Lines, vertical; Vertical lines, bands or bars

The process for searching for “confusingly similar” logos is something like this:

  • Search for key words in logo descriptions.
  • Search for relevant codes in design codes.
  • Look at the actual pictures that the search brings up.
  • Apply judgment using the DuPont factors. Two logos might use similar words to describe them and yet be totally distinctive.

Twitter bird.pngBird in flight.png

Each of these trademarks uses the phrase “bird in flight” in the description, but they are not similar in appearance.

 

Can you guess these incredibly famous trademarks from their descriptions? Scroll down for answers.

  • The mark consists of a circular seal with the design of a siren (a two-tailed mermaid) wearing a crown.
  • The mark consists of a red circle and a yellow circle that interlock to create the color orange.
  • The mark consists of lower case letter “B” in a circle.

Next you’ll want to know how to check the availability of a sound mark. Yikes!

 

Big shout out to Ava, for suggesting this topic! What do you want to know about?

 

 

bl_brandfooter

 

The three trademarks described are:

  • The Starbucks® siren.
  • The Mastercard® logo.
  • Beats® headphones logo.

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.

 

bl_brandfooter

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.

bl_brandfooter

 

*Trademark Manual of Examination Procedure Section 1209.01(a)