Certification Marks

To register a mark in the United States you have to be actually using the mark to sell stuff.[i]

Unless you want to register a certification mark.

Then you have to show the mark being used by other people and companies. Yup, that’s right. Your registration is based on other people using your mark.

You may not realize it, but certification marks are everywhere. You see the UL mark all the time. It was first used in 1937 and certifies that “representative samplings of the goods conform to the requirements” of Underwriters Laboratory Inc.

The oldest surviving registered certification mark was first used in 1911 and certifies that “the work or labor on goods was performed by a member or members of . . . The International Allied Printing Trades Association.”

A more recent example certifies that the goods bearing the mark “comply with the quality and/or interoperability standards established by Bluetooth Sig, Inc.”

This one is owned by the Consorzio Per La Tutela Del Formaggio Percorino and certifies that “the cheese comes from the regions of Latium and Sardinia and the province of Grosseto (Tuscany) in Italy . . . and satisfies certain quality and production standards.”

The “Good Housekeeping seal of approval” was around a lot when I was a kid. More recent certification marks deal with qualities that consumers consider important now. There are 20 live registrations that certify that goods are organic and 12 to certify that the goods are gluten-free.

Have a look around. What certification marks can you see right now?


[i] You can apply to register a trademark without using it first but you won’t get a registration until you show that you’ve started using it. In order to file an application in the U.S. you need to:

  • be using the trademark in commerce [15 USC Section 1051(1)(a)]; or
  • have “a bona fide intention . . . to use a trademark in commerce” [15 USC Section 1051(1)(b)].

Ugg

The UGG store in Soho.

Deckers Outdoor has 29 U.S. trademark registrations that include the word UGG.

Adnan Oygur challenged those registrations claiming that “ugg” is the generic term for sheepskin boots and, therefore, Deckers should never have been granted registrations.

Mr. Oygur’s evidence included:

  • Documents showing “ugg” is the generic word for sheepskin boots in Australia.
  • Testimony of surfers and surf shop owners from southern California who said they understood “ugg” to refer generically to sheepskin boots.

Deckers presented this evidence:

  • Survey results showing 98% of U.S. boot-buyers thought UGG was a brand and not the generic word for a type of boot.
  • Testimony from a linguistics professor who searched dictionaries and databases and failed to find “ugg” as a generic term for sheepskin boots in the U.S.
  • Testimony of a footwear historian who concluded that “ugg” had no meaning in the footwear trade or among American consumers before Deckers started advertising the UGG brand.
  • The Complete Footwear Dictionary, which identifies 110 types of boots but does not mention “uggs.”
  • Articles published in the U.S. using terms like sheepskin, lambskin, lambswool, and shearling to describe similar boots.

When the court considered all the evidence, it concluded that Deckers gets to keep its registrations because the “primary significance” of UGG to boot buyers in the U.S. was as a brand and not a generic term.

Most trademark owners will never have to hire a footwear historian to keep their trademark rights but, with a brand as valuable as UGG, it’s worth it.

Thanks to Cassandra G. and Rebecca M. for bringing this case to my attention.

How NOT To Pick a New Trademark

When Cleveland’s baseball team decided to change its name from an offensive term for Native Americans to GUARDIANS, it should have used this process:

  • Step 1: Quietly check availability
  • Step 2: File applications to register the new name
  • Step 3: Make a public announcement.
Specimen from trademark filing by roller derby team in Cleveland.

If it had taken Step 1, it would have discovered that the CLEVELAND GUARDIANSSM roller derby team has been around since 2013. If it had followed Step 2, it would have beaten the roller derby’s application to register CLEVELAND GUARDIANS for various swag.[1]

It may not be trademark infringement for two teams, playing different sports, to use the same team name, even if they’re in the same city. Unless, of course one of the names is considered “famous.” No one’s going to get away with calling their volleyball team the Lakers® anytime soon.[2]

But, now that the roller derby team is probably going to get a registration for CLEVELAND GUARDIANS for swag, the baseball team has no ideal solutions. It could:

  • Buy out the roller derby team’s rights in the trademark;
  • Come up with yet another name; or
  • Just not sell bumper stickers, clothing, hats, ornamental pins, or patches that are imprinted with the word GUARDIANS.

All of those options involve lost money and at least one is embarrassing. All the cost and embarrassment could have been avoided by taking the right steps in the right order.

Thanks to Irv L. for the heads up on this snafu.


[1] AP reported on the plan to change the baseball team’s name to the Guardians on July 23. The roller derby team filed its application to register CLEVELAND GUARDIANS on July 27.

[2] This isn’t the first time a roller derby team has had another local team adopt the same team name. Angel FC, the women’s soccer team in Los Angeles, used the name ANGEL even though that name was already being used by the local women’s roller derby team. Same story with Gotham FC and the New York City women’s roller derby team.

Merely Ornamental

You sell CONTRAST brand T-shirts. The shirts are in bright colors with contrasting overstitching: Orange shirts with blue overstitching; red shirts with green stitching; purple shirts with yellow thread. Can you get a trademark registration to protect that feature?

Probably not, at least not right away, because it’s “merely . . . an ornamental or decorative feature on the goods.” When people see your T-shirts, they might think, “Oh that looks nice,” but they don’t think “Oh, that’s a CONTRAST brand shirt.”

If your T-shirts catch on, there might come a day when people see the T-shirts with colorful stitching and think of your company. At that point, the stitching becomes a trademark.

Levi Strauss® has a registered trademark for a “double arcuate[i] designs of orange color displayed on the hip pockets . . ..” That stitching was once “merely ornamental” but now it functions as a trademark.

Non-ornamental
Ornamental

A refusal for “merely ornamental” happens a lot when people try to register an image or words on a shirt. The Trademark Office is more likely to accept an application for a trademark on a shirt when it’s a “small, neat, and discrete wording/design located on the pocket or breast portion of a garment” rather than when it’s emblazoned across the front of a shirt.

There’s no bright line between being “merely ornamental” and “creating a commercial impression” but it means the difference between being a trademark and not being a trademark.


[i] I used this example only so I could use the word “arcuate” which is a really wondrous word that means “shaped like a bow.”

Nine Months or Twenty-Eight Years

How long does it take to get a U.S. trademark registration?

The quickest is 9 months. To get to ® that quickly, you need to:

  • Apply based on current use of the trademark in the United States.[i]
  • Get through the Trademark Office review with no problems.[ii]
  • Not have anyone oppose your application.[iii]
  • Not have any outside reason for delay, like a government-wide shut down or a global pandemic. [iv]

What’s the worst case?

Twenty-eight years. And counting.

Yup. As of this writing,[v] there are 15 applications that are still pending that were filed more than 20 years ago and one of those was filed in March of 1993.

How does that happen?

Companies fighting over the rights to a trademark account for most of the really long delays:[vi]

  • Since 1993, three companies have been arguing over the rights to HAVANA.
  • Five companies have been held up by an argument over COHIBA.
  • Two companies are tied up in a slugfest over DUGSTORE.COM.
  • One application was delayed because of a dispute over AGATHA.

Others delays are entirely self-inflicted:

  • One applicant stuck it out through a 12-year suspension but now can’t seem to get around to filing a statement of use.
  • One application has been held up for 13 years because the owner hasn’t paid a $40 fee.

The key is to know before you file if you’re likely to face even a short delay. A good trademark attorney should be able to tell you that.


[i] If you filed based on “intent-to-use”, that adds a step to the application process: Filing a Statement of Use. That will add at least a month to the time to registration. If you keep filing and paying for extensions, you can get up to 3 years to file your Statement of Use.

[ii] There can be one or more office actions issued by the Trademark Office. You can answer them right away, but you have up to 6 months to respond to each one. Even if you answer right away, it can add 2-4 weeks to the process. If the U.S. Trademark Office has just a minor problem, the examiner can call or send an email and then get it resolved within a day or two using an “examiner’s amendment.”

[iii] If someone opposes your application you have to deal with that before your application can move forward. That can take as long as going through a lawsuit.

[iv] After a full year of COVID 19, the shortest time to registration is closer to 11 months. During the government shutdowns a few years back, no time was added to Trademark Office review. Examiners just kept working right through the shut-down.

[v] March 2021. `FD < “2000000” and (live)[ld] and `RN = “0” and (1A 1B)[cb]

[vi]

MarkFiling DateApp #.ApplicantWhat’s going on
HAVANA CLUB6/25/199975751393Bacardi & CompanySuspended pending cancellation of 92024108.
GRAND HAVANA RUM3/5/199374365176  Ricardo ArreguiOpposition #121112 Proceedings are suspended pending final disposition of Cancellation #024108.
RUM HAVANA CLUB
RUM HABANA CLUB ARECHABALA
3/23/199574650678Gloria Marquez-ArechabalaSuspended for 74522925 and 74572667.
HAVANA CLUB9/12/199474572667Bacardi & CompanyCancellation No. 024108 suspended for Civil Action No. 04 CV 00519.
     
COHIBA CARIBBEAN’S FINEST10/30/199875580119Cohiba Caribbean’s Finest RumSeveral office actions and then a suspension letter in 2000: 75012912 75051706 75116037 75226002.
LAZARO COHIBA6/7/199675116037Becle, S.A.B. de C.V75012912 75051706
COHIBA10/31/199575012912Tequila Cuervo La Rojena S.A. de C.V.Opposition proceeding suspended pending outcome of Cancellation #92025859.
COHIBA1/21/199775228225Cohiba Clothing Co.Suspended in 1998. Remains suspended. 74686067 75051706
COHIBA2/1/199675051706General Cigar Co., Inc.Suspended in 1997 for 75012912. Opposition #117311
     
DRUGSTORE.COM2/9/199975640001Walgreens Co.Suspended because of 75566403. Amended to the Supplemental Register; and office action based on merely descriptive. 2014 Final refusal on merely descriptive. Requested reconsideration. Now suspended because of 75566403, 75890295, 77823181, 78725602, 85434188
DRUGSTORE.COM2/9/199975640001Walgreens Co. 
DRUGS.STORE8/12/199975755139Peter H. Proctor 
     
EINSTEIN7/16/199875519755The Hebrew University of JerusalemSuspended and then an opposition. Finally got NOA in 2019 and has now filed 3 requests for extensions of time to file SOU.
     
WWW.FREEE.COM11/12/199975847196Saeid YomtobianOffice actions and Statement of Use held things up for 4 years. Then applicant filed an assignment but didn’t pay the fee to have the assignment processed. It’s been suspended for 13 years for the failure to pay $40.
MYSTERY OF AGATHA8/16/199975755566Agatha BrownSuspended because of 75649188, which was finally registered in 12/2020. Agatha Brown owned two prior registrations. Agatha Diffusion Société à Responsabilité Limitée had a registration going back to 1992 but they had to cancel Ms. Brown’s applications before they went through.

Trademark As a Trademark

Sometimes I imagine monks sitting silently in their cells pondering whether the word “trademark” can, itself, be a trademark

Their contemplation serves little purpose because that question has already been answered.

There are two meanings to the word “trademark”:

  • Lawyer’s definition: A word, symbol, or device used to identify the source of goods or services; and
  • Non-legal definition: A distinctive characteristic or object, as in “They were wearing their trademark leather jacket.”

Most trademarks that include TRADEMARK use it in the non-legal sense.

The example to the right and in the featured image is my favorite because it uses TRADEMARK in the lawyer-definition sense: TRADEMARK is the name of a restaurant around the corner from the U.S. Patent and Trademark Office in Alexandria, VA.

There are plenty of trademark registrations at the U.S. Trademark Office that include TRADEMARK in the non-legal sense.[i]

The most well-known is undoubtedly TRADEMARK COLLECTION owned by Wyndham Hotels and Resorts.

I especially like the logo that’s part of this trademark for plastics. It’s cool to look at and suggests plasticity without coming right out and saying it.

Use of TRADEMARK as a trademark is popular for foods and food services. There are registrations for pizza, coffee, beer, restaurant services, and burgers. Here are some of my favorites.

It’s fun to tell the stories that lurk behind the trademarks we experience every day. What trademark have you seen lately that you’d like to hear about?


[i] Here’s a list of the goods and services that are covered by registrations that include the word TRADEMARK, where that word isn’t used to refer to a trademark in the legal sense:

  • Video production services
  • Music CDs
  • Website design
  • Credit union services
  • Housewares
  • Swag
  • Art prints
  • Hotel services
  • Hardware
  • Veterinary medicine
  • Plastics
  • Anatomical models
  • Soundproofing products
  • Automobile dealerships
  • Beer
  • Construction services
  • Fonts and typefaces
  • Pizza
  • Restaurant services
  • Online retail services
  • Leather goods
  • Toys
  • Tours operations
  • Gaming equipment
  • Clothing
  • Jewelry
  • Banking and financial services
  • Event planning
  • Warehousing and trucking
  • Scrap metal recycling
  • Steel cabinets
  • Coffee
  • Window shutters

Confusingly Similar Explained

If you take Exit 208 will you be able to have lunch at PANERA?

Did you have to look again to be sure?

Here’s a close up.

In this case, it’s not infringement because Panera Bread Co. started off as Saint Louis Bread Co. JAB Holding Company changed the name to PANERA but has left the original name on some locations in and around St. Louis, MO.

Let’s pretend Saint Louis Bread Co. wasn’t legit, would the sign be OK?

Trademarks don’t have to be identical for there to be a problem, they just have to be “confusingly similar.” You might think Saint Louis Bread Co. would be in the clear because SAINT LOUIS BREAD CO. is completely different from PANERA but that’s not how it works:

  • The logo is identical: Stylized woman holding a loaf of bread.
  • The fonts used are the same: Look at the “a” and the “n” in each sign.
  • It’s hard to tell because of the lighting, but the colors are also the same.

It also matters that potential customers are whizzing by at 65 miles per hour. They catch a glimpse of the sign and think, “I could do with a Napa almond chicken salad sandwich right about now.” They take Exit 208 and, instead of finding PANERA, they find SAINT LOUIS BREAD CO. But, what the hell, they’ve already left the freeway and their stomachs are grumbling. This is “initial interest confusion” and it counts as infringement.

Big shout out to Cassandra G. for seeing this road sign, catching a photo, and sending it to me.

Panera Bread image (C) 2015 Dannyhouk, CC BY-SA 4.0 https://creativecommons.org/licenses/by-sa/4.0, via Wikimedia Commons.

Photo of road sign (C) 2021 Cassandra Glaser. Used with permission.

Secret Boston vs. Secret Boston

People in Boston are confused and it’s easy to see why:

Secret BostonTM is promoting an exhibit called “Imagine Van Gogh” through its website SecretBoston.net. (I’ll call this company “McCormack” because it was founded by Michelle McCormack.)

Meanwhile, a different Secret Boston is promoting an exhibit called “Van Gogh: The Immersive Experience” through its website SecretBoston.com. (I’ll call this company “Fever” because the website’s owned by Fever Labs, Inc.)

This sucks for customers. McCormack’s been getting calls from people who thought they were buying a ticket to her event but were actually buying a ticket to Fever’s event.

It’s also bad for the companies involved: They lose business and end up with pissed off customers.

Who’s in the wrong here? Based on the facts I can find, I’d say McCormack’s company has rights to SECRET BOSTON and Fever is infringing.

McCormack says she started using SECRET BOSTON in 2011. There are at least three facts pointing to a later use by Fiver.

  • As of August 2019, Fever’s secretboston.com website had nothing but a broken redirect.
  • Fever’s trademark registration for SECRET NYC claims first use in 2016. It’s hard to imagine its first use of SECRET BOSTON was 5 years earlier.
  • McCormack claims Fever tried to buy her trademark rights to SECRET BOSTON in 2016 and she refused to sell.

As of this writing McCormack and Fever are duking it out. Unless there are some key facts I don’t know about, Fever needs to find a way forward that respects McCormack’s clear prior rights.

Shout out to Bill B. who brought this to my attention.

Madea and Captain Kangaroo

We recently explored whether a person’s name can be a trademark. Today we’ll look at whether these can be trademarks:

  • Characters from a TV or movie franchise: MADEA®, CAPTAIN KANGAROO®
  • Singer/songwriters: MEGAN THEE STALLION®, 50 CENT®
  • Comedic alter egos[i]: MOMS MABLY, MR BEAN®
  • Burlesque dancers and drag queens: DITA VON TEESE®, THE WORLD FAMOUS *BOB*SM

The name of a character in a book or movie isn’t automatically a trademark. Amanda Wallace, Viola Davis’s highly memorable character in Suicide Squad®, isn’t a trademark and is very unlikely ever to become one. KATNISS EVERDEEN® is a registered trademark but not as a character in books and movies but for merchandise like action figures and backpacks.[ii]

Stage names of singer/songwriters are trademarks and are often registered for some type of entertainment services. MEGAN THEE STALLION® is a registered trademark for merchandise but also for “entertainment in the nature of live performances by a musical artist or entertainer.” Curtis J. Jackson III has six live registrations for 50 CENT® for entertainment services and lots of products, too.

Comedic alter egos, burlesque dancers, and drag queens are trademarks and are often registered for entertainment services and/or swag. BORAT® is a registered trademark but only for shirts. DITA VON TEESE® is registered for entertainment services but also retail store service, candles, apparel, perfume, and lipstick.

There are so many of these types of names that are also trademarks. Which ones can you think of?


[i] I’m fascinated by the trademark conundrum of STEPHEN COLBERT. Not the “real” Stephen Colbert, but the Stephen Colbert who Stephen Colbert played for so many years on the Colbert Report. Is this just one trademark that changed its branding message or is there STEPHEN COLBERT as a character and STEPHEN COLBERT as an actual person?

[ii] Wonderfully, the name of the company that owns the trademark rights is District 12 LLC.

Am I a Trademark?

In 2012, Beyonce and Jay-Z[i], applied to register the name of their baby, Blue Ivy Carter, as a trademark for a whole bunch of stuff.[ii] That application died in 2016 because they never showed the name was being used as a trademark. They filed a second application which is alive as of this writing but still requires them to show use of the name as a trademark before getting a registration. At this point Blue Ivy Carter is still just a name of a person and not a trademark.

At what point does someone’s name become a trademark?[iii] What’s the difference between trademark rights and fame, popularity, and influence?

To oversimplify, it’s whether you can fill in this blank:

Janelle just had some [insert your name] brand ________________!

If you can’t fill in the blank line with something, your name isn’t a trademark.

If you can get a registration, should you? It probably isn’t necessary but some people do it anyway:

  • Harpo, Inc. has lots of registered trademarks for OPRAH® and a bunch more applications pending.
  • Morgan Freeman registered MORGAN FREEMAN® for “Entertainment services . . . ” in 2004.
  • DENZEL WASHINGTON is not a registered trademark.
  • There was only one registration for MICHAEL JACKSON® before his death: “sound recordings . . . and motion picture films featuring music and entertainment”
  • Eddie Murphy registered EDDIE MURPHY in 2002 but let the registration die in 2013.

Names can be trademarks but you need more than just fame to get there.

Thanks to Aaron A. for asking the question that led to this post.


[i] The owner of the application was actually BGK Trademark Holdings, LLC.

[ii] Fragrances, cosmetics, skin care products, namely, non-medicated skin care preparations, non-medicated skin care creams and lotions, namely, body cream, hand cream, skin lotion, body lotions, skin moisturizers, skin emollient, skin cleansing creams, skin cleansing lotions, all for adults and infants; hair care products, namely, non-medicated hair care preparations, non-medicated hair gel, shampoo, conditioner, hair mousse, hair oils, hair pomades, hair spray; Metal key chains and metal key rings; DVDs, CDs, and audio and visual sound recordings featuring musical performances; musical sound recordings; computer application software for mobile phones, portable media players, and handheld computers for use in downloading music, ring tones and video games; handheld and mobile digital electronic devices, namely, tablet PCs, cellular phones, laptops, portable media players, handheld computers; cases and covers for mobile phones and mobile digital electronic devices, namely, laptops, cell phones, radio pagers, mobile computers; downloadable web-based application software in the nature of a mobile application downloadable to handheld and mobile digital electronic devices for use in downloading music, ring tones and video games; decorative magnets, eyewear, eyeglass cases; computer bags; graduated glassware; Baby teething rings; Baby carriages, baby strollers; Books in the field of music, motion pictures, musical performers; photographs; posters; baby books; stickers; print materials, namely, art prints, color prints, concert programs, calendars, pens, post cards; gift bags; paper flags; trading cards; paper baby bibs; Bags, namely, tote bags, beach bags, handbags, diaper bags, baby carriers worn on the body, pouch baby carriers, luggage; small leather goods, namely, leather cases, leather bags and wallets, leather purses, leather billfolds, leather key chains, leather key cases; Plastic key chains and plastic key rings; small leather goods, namely, leather picture frames, leather key fobs, and leather key holders; plastic flags; vinyl banners, baby bouncers, baby changing mats, baby changing tables, high chairs for babies, playpens for babies; Mugs; beverage glassware; plastic water bottles sold empty; hair accessories, namely, hair combs; baby bathtubs; drinking cups for babies; Banners of cloth, nylon; flags, namely, cloth flags, nylon flags; towels; baby bedding, namely, bundle bags, swaddling blankets, crib bumpers, fitted crib sheets, crib skirts, crib blankets; baby blankets; Hair accessories, namely, hair ties, hair scrunchies, barrettes, hair bands, hair bows, hair clips, hair pins, hair ribbons, ponytail holders; novelty button; ; hair accessories, namely, electric hair-curlers, other than hand implements; Playing cards, balls, namely, basketballs, baseballs, footballs, kick balls, rubber balls, beach balls, golf balls, hand balls, tennis balls, racquet balls, soccer balls, sport balls; dolls, baby multiple activity toys, baby rattles, baby teething rings, baby swings; Product merchandising; online retail store services featuring music, musical recordings, motion pictures, clothing and clothing accessories, novelty items; Entertainment marketing services, namely, marketing, promotion and advertising for recording and performing artists; Entertainment services, namely, providing online video games, dance events by a recording artist, multimedia production services; Entertainment services in the nature of live musical performances; production of motion picture films, fan clubs.

[iii] This post is dealing with names of actual people, as opposed to names of characters people play. There was a post a few weeks ago on names like CAPTAIN KANGAROO.