It’s Harder Than You Think

Beeline®_fullcolor_h Buzzfeed.jpeg“I already checked the Trademark Office and it’s OK for me to use FELINE as a trademark for legal services.”

Sigh.

Figuring out whether your trademark is available isn’t easy.

Suppose you want to use WAISTED TALENT as a trademark for weight loss services. You go to the Trademark Office website and search for WAISTED and TALENT.

  • False Negative: You find nothing but your search missed the registration for WASTED TALENT for weight loss services, a complete bar to your application and use of WAISTED TALENT.
  • False Positive:: Your search found a registration for WAISTED TALENT for spark plugs so you decide to think up another trademark. Actually,  you’d probably be fine.

“The domain name is available, so I’m good to go.”

Double sigh.

The availability of the domain name (or the name for a legal entity) doesn’t mean anything.

  • False Negative: The domain name waistedtalent.com may be available, but you’re still going to have trouble with WASTED TALENT weight-loss services.
  • False Positive: The entity name Waisted Talent, Inc. is being used by that spark plug company but you’re still probably fine.

The spelling of a trademark also doesn’t matter. The former mayor of New York City can’t use his name to sell soda because some people pronounce KOCH as COKE.

There are no easy answers when it comes to trademark availability. It takes me up to three hours to check for availability. It you did it in 10 minutes, you probably don’t have the full answer.

 

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Smell the Play-Doh®

Hasbro® recently received a registration for “a scent of a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough.”

Yup, the smell of Play-Doh® is now a registered trademark. It wasn’t easy, but Hasbro did it. Here are two of the hurdles Hasbro faced and met:

Prove the Scent Doesn’t Come From Anything Functional

You can register a scent (or other non-traditional) trademark only if it’s non-functional: You can’t register the scent of a perfume because the scent is the product.

Hasbro had to prove that the ingredients that cause the scent didn’t help Play-Doh remain hydrated or improve its texture or pliability. Hasbro had to send in a sample of Play-Doh without the added scent so the examiner could compare Play-Doh’s natural scent and other characteristics to the scented product.

Prove the Scent Is Recognized By Consumers As Play-Doh

Play-Doh Bee.png

Play-Doh is great for modeling your logo.

The examiner also made Hasbro prove that consumers recognize the scent as being particular to Play-Doh. Hasbro responded with facts, figures, and hundreds of pages of evidence about the distinctiveness and recognizability of the scent, including quotes from Fortune magazine, ABC News and the New York Times. Hasbro also submitted evidence of its “Stop and Smell the Play-Doh” ad campaign.

The impressive list of questions Hasbro had to answer and requests Hasbro had to fulfill is below.

It’s totally cool that Hasbro got this registration. It deserves it.

 

 

Big shout out to Eric B. for the idea for this post!

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Here is a list of the questions that the Trademark Office examiner required Hasbro to answer:

(1)        A written statement as to whether the applied-for mark, or any feature(s) thereof, is or has been the subject of a design or utility patent or patent application, including expired patents and abandoned patent applications.  Applicant must also provide copies of the patent and/or patent application documentation.

(2)        Advertising, promotional, and/or materials concerning the applied-for mark, specifically promoting or referencing the applied-for scent in the applied-for mark.

(3)        A written explanation and evidence as to whether there are alternative compositions available for the ingredients in the scent in the applied-for mark, and whether such alternative compositions are equally efficient and/or competitive.  Applicant must also provide a written explanation and documentation concerning similar scents used by competitors.

(4)        A written explanation as to whether the ingredients in the applied-for scent are naturally occurring in the modeling compound or whether applicant has added these ingredients to its product.

(5)        If applicant has added this scent, applicant should describe or submit a sample of what the product smells like without this additive.

(6)        A written explanation as to whether there are any functional advantages to the ingredients in the applied-for scent over other scents.

(7)        A written explanation as to whether the ingredients in scent allows applicant’s modeling compound to remain hydrated longer.

(8)        A written explanation as to whether the ingredients in applicant’s scent allows the modeling compound to be more easily dyed or better hold its color.

(9)        A written explanation as to whether the texture of applicant’s modeling compound is effected by the ingredients in the applied-for scent.

(10)      A written explanation as to whether the pliability of applicant’s modeling compound is effected by the ingredients in the applied-for scent.

(11)      If the applied-for scent allows the modeling compound to remain hydrated longer, be more easily dyed, hold its color better, provides a more consistent texture, affects the pliability of the goods or provides any other benefit to the goods, then applicant must provide a written explanation as to whether another scent would be as effective as the applied-for scent.

(12)      A written explanation as to whether the applied-for scent has any advantage over other scents in applicant’s field.

(13)      A written explanation as to whether applicant is aware of any competitors using a scent in toy modeling compounds.

(14)      A written explanation as to whether the applied-for scent is the result of the use of wheat or winter wheat in the applied-for goods.

(15)      A written explanation as to whether the applied-for goods come in various colors.  If they do, do all the colors have the same scent or do particular colors have specific scents? If the applied-for goods are sold in white, does it also have the same scent?

Trademark Searches Done Right

“Can I use this trademark? I already did a search and didn’t find anything.”

I hear this all the time. My answer is more questions. Did you search for:

You can’t know if a trademark is safe until you’ve done all those searches.

Let’s look at an example of a search done properly.

Pretend you want to use SEIZE THE DULCE for a candy store.[3]  You’d probably search for SEIZE and DULCE together as part of a trademark, like this:

Screen Shot 2018-07-10 at 12.28.15 PM.png

No hits. Good to go?

Not so fast!

To do a proper search, you also have to search for: homophones of SEIZE, truncated form of DULC_; and translations of DULCE:

Screen Shot 2018-07-10 at 12.28.29 PM.png

That’s a lot of hits. You can review them all or narrow the search using descriptive words for your goods and similar goods:

Screen Shot 2018-07-10 at 12.29.03 PM.png

That let’s you find the rather famous SEE’S CANDIES®.

Now you have to apply the du Pont factors and other trademark law principles. Based on my experience, I’d conclude that SEE’S CANDIES is very likely to bar your using or registering SEIZE THE DULCE because SEE’S CANDIES is a famous trademark entitled to very broad protection.

I’d report that to you like this:Screen Shot 2018-07-10 at 12.20.31 PM.png

Now that’s a trademark search done right. It’s a bummer to have to pick a different trademark but not bad as getting a cease and desist letter from the owner of SEE’S CANDIES a year after your launch.

 

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[1] “Truncate” is cutting off the endings of words to get down to the root: If you truncate “frame” you get “fram”. That lets you catch “frame” “framed” “framing” “framer” “frames” and “framers”.

[2] Homophones are words that sound the same, but have different meanings and spellings, like NEW, KNEW, NU, and GNU.

[3] It should really be SEIZE THE DULCI but that ruins the already awful pun.

[4] An asterisk is a wild card in some trademark database searches.

[5] A dollar sign is a different kind of wild card in some trademark database searches.

Sneaky Bullies?

The United States Olympic Committee sent a cease and desist letter to Oxbow High School in Vermont asking the school to stop using OLYMPIANS as the name of its sports team.

Greg Fennel of the Valley News thinks “[t]his is a fight Oxbow most definitely should fight” because USOC is a bully picking on a “target[] they consider easiest to harass” and “sneaky” for acting on an “anonymous tip.”[1]

Oxbow Is Infringing

Mr. Fennell says there’s no infringement because the school isn’t “financially profiting from its Olympian nickname [and if it is] it’s only in a minuscule fashion.”

It’s irrelevant whether the school is benefitting financially. Because the mark OLYMPICS® is both famous and distinctive, USOC doesn’t even have to show that there’s a likelihood of confusion in order for the school to be infringing. [2]

USOC Is Not a Bully

USOC isn’t a bully. If USOC gives Oxbow a pass, then the next group that uses OLYMPIANS will be able to point to Oxbow as evidence that OLYMPICS isn’t distinctive. USOC knows it has to protect its rights or risk losing them.

Our Olympians Count on Trademark Protection

Mr. Fennel demonizes USOC because “[t]he bulk of [USOC’s] dough comes from commercial sponsorships”. He thinks USOC should spend its time dealing with its other problems instead of picking on Oxbow high school.

CocaCola® sponsors U.S. teams in exchange for the rare right to use USOC’s trademarks. It’s the exclusivity that creates the value. USOC’s problems won’t be solved by destroying its ability to fund itself.

Trademark owners protecting their rights aren’t sneaky bullies. They’re just doing their duty. I hope the school decides to listen to legal counsel instead of the local sports writer.

 

Thanks to Melissa B. for the heads up on this story.

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[1] All quotes from Mr. Fennel are taken from the article “Oxbow Should Tell USOC to Scram” in the Valley News on July 21, 2018.

[2] “[T]he owner of a famous mark that is distinctive . . . shall be entitled to an injunction against another person who . . . commences use of a mark . . . that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.” The mark is also protected by a separate statute that protects the trademarks of USOC.

The Good Old Days

In the decade of the 1880s there were 36 applications filed to register trademarks.

In the decade of the 1980s there were 592,301 applications.

In the first decade of the 21st century there were 2,612,184 applications.

Those are some pretty astonishing numbers. In fact, there has been an increase in the applications filed every decade since 1880, except for the 1930s when there was a slight decrease, presumably because of the Great Depression.

But while the number of applications has been increasing, the percentage of those applications reaching registration has been decreasing.

Every last one of the 36 applications filed in the 1880s reached registration. Wonderfully, four of them are still alive today.*

For the 1980s, only 77% of them reached registration.

And for the first decade of the 21st century, only 54% of them reached registration. Here are the data:

Screen Shot 2018-05-01 at 3.26.24 PM.png

So, what’s going on here?

I believe there are two factors at work. First, because there are so many trademark registrations, the likelihood that a new trademark is confusingly similar to an existing trademark is much higher. It’s just a lot more likely your new trademark is similar to one of the 2,366,194 live registrations now than to one of the 36 live registrations back in 1889.

Second, there are a larger percentage of applications being filed without the use of an attorney. As a result, applicants are more likely to file applications that never stood a chance.

Bottom line: It’s hard to find a trademark that’s available. Don’t waste your money** filing an application unless you think you have a good shot.

 

 

Photo of USPTO © 2018 S. Elizabeth Birnbaum, used with permission.

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*SAMSON®; WASHBURN’S GOLD MEDAL®; one of the registrations for BUDWEISER®; and a logo mark for beer consisting of a triangle.

**There were 1.2 million rejected applications in the first decade of the 21st century. That’s about $361 million in wasted Trademark Office fees.

Decades Spent Running in Place

A while back I wrote about a relatively new company that sells raw cookie dough using the brand DŌ. I said that DŌ will never have viable rights to its brand because DŌ (however it’s spelled) is just the generic word for its product.

“But surely,” I hear you say, “Decades from now DŌ will have rights.”

‘Fraid not.

Vitamin Shoppe Procurement Services, Inc. and its predecessor have been using THE VITAMIN SHOPPE as a brand since 1982. At one point, it even managed to get some trademark registrations.*

In February 2016, it filed four new applications to register THE VITAMIN SHOPPE together with its new stylized V design and new font.

The examiner at the Trademark Office says Vitamin Shoppe “must disclaim the wording ‘THE VITAMIN SHOPPE’ because it is a generic designation for applicant’s goods and services and is thus an unregistrable component of the mark.”

That means that the Trademark Office won’t give Vitamin Shoppe the exclusive right to the words THE VITAMIN SHOPPE even after more than 35 years of continuous use.

It makes sense. No one should have the exclusive right to the word “shop” (however it’s spelled) for retail services and no one should have the exclusive right to the word “vitamin” for vitamins.

After 35 years, THE VITAMIN SHOPPE is still barely defensible. An asset that could have acquired significant value during that time has instead languished all because of one bad decision.

 

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*Below is a list of the earlier registrations. The ones from 2001-2003 include “disclaimers,” meaning that the owner isn’t claiming to have exclusive rights to the disclaimed word or words. The two registrations from 2006-2007 don’t have disclaimers. I disagree with the trademark examiner who reviewed those two registrations. You can’t overcome “genericness” with acquired distinctiveness. As the examiner of the recent applications says: “[N]o amount of purported proof that a generic term has acquired secondary meaning can transform that term into a registrable trademark or service mark.”

Words Products & Services Disclaimer Reg. Year
THE VITAMIN SHOPPE SINCE 1977 vitamins

 

(Applicant claimed “acquired distinctiveness”.) 2007
THE VITAMIN SHOPPE SINCE 1977 retail store services (Applicant claimed “acquired distinctiveness.”) 2006
THE VITAMIN SHOPPE SINCE 1977 retail store services No claim is made to the exclusive right to use “vitamin” apart from the mark as shown. 2003
THE VITAMIN SHOPPE SINCE 1977 vitamins No claim is made to the exclusive right to use “vitamin” and “since 1977” apart from the mark as shown. 2003
THE VITAMIN SHOPPE retail store services No claim is made to the exclusive right to use “vitamin” apart from the mark as shown. 2001
THE VITAMIN SHOPPE vitamins No claim is made to the exclusive right to use “vitamin” apart from the mark as shown. 2001

 

 

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?

 

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[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?

 

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[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.

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*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.