Wings on Cars

In 1937, Bentley Motors Limited registered this trademark for automobiles.

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In 2017, Hyundai Motor Company registered this trademark for automobiles.

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It isn’t too far-fetched to think that Hyundai’s trademark is infringing on Bentley’s trademark: They’re both for cars and have stylized wings as the dominant feature.

So why is this OK?

It all comes down to the du Pont factors.

Regular readers may recall a case involving E. I. du Pont Nemours & Co. The court in that case set out factors that trademark attorneys use to decide whether two trademarks are confusingly similar. Here are some of them:

  • The similarity of the marks as to appearance, sound, connotation and commercial impression.
  • The relatedness of the goods or services.
  • The number and nature of similar marks in use on similar goods.
  • The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing.

Bentley and Hyundai can each use its stylized-wing trademark because of the last bullet.[1]  A car buyer is unlikely to accidentally buy a Genesis®  instead of a Bentley® because of the similarity of these two trademarks. Car buyers are engaged in “careful, sophisticated purchasing” and unlikely to casually mistake one for the other.

Imagine, though, this type of similarity on bags of potato chips. Someone is likely to grab a bag of chips while simultaneously talking on the phone and popping a Binky® brand pacifier back in his baby’s mouth. In other words, an “impulse” purchase.

Now you know why these trademarks can co-exist.

 

Cody B. gets the shout out for asking the question that sparked this post.

 

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[1] I think the final bullet (care of the purchaser) is the most important du Pont factor in this instance, but the third bullet (number and nature of similar marks in use on similar goods) is also important. There are lots of car companies using similar wing designs.

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Big Ass Trademarks

Delta T is clearly the BIG ASS® trademark leader: It owns twelve trademark registrations* including ones for BIG ASS, most of them for fans and lighting.

Plenty of BIG ASS corpses litter the Trademark Office database. Between May 2016 and December 2017, nine applications died because of the registrations owned by Delta T. Those applications were for a huge variety of goods, most of them having nothing to do with fans and lighting. Here’s the info on those dead applications:

Trademark Goods What happened Date of Death
Big Ass Pizza Clothing Trademark Office refused to register because of Delta T’s registrations. December 2017
Big Ass Bulbs Light bulbs Trademark Office refused to register because of Delta T’s registrations. November 2017
Big Ass Bowl Bowls Delta T opposed the application. Applicant abandoned. July 2017
Big Ass Candles Candles Trademark Office refused to register because of Delta T’s registrations. May 2017
Big Ass Floors Retail store services Applicant abandoned the application before it was ever reviewed. November 2016
Big Ass Bar Soap Soap Delta T opposed the application. Applicant abandoned. December 2016
Big Ass Flask Flasks Trademark Office refused to register because of Delta T’s registrations. October 2016
Big Ass Air Freshener Air freshener dispenser Delta T opposed the application. Applicant lost because he never responded. October 2016
Big Ass LEDs Electronic signs Delta T opposed the application. Applicant abandoned. May 2016

What are the lessons here?

  • You don’t necessarily have to be selling the same or similar stuff to be considered “confusingly similar” to another trademark. It depends on the strength of the other trademark.
  • Delta T’s ability to fight off new applicants is enhanced by the rareness of its mark. Delta T would NOT be having as much success with its oppositions if it had stuck with HVLS Fan Co., its original name.
  • Delta T is committed to protecting its mark and is willing to spend the time and money to fight when necessary.
  • It’s rarely a good idea to go up against a company that’s as committed as Delta T to fighting for its trademark rights.

All excellent lessons.

 

Big shout out to Irv L. for the suggestion that led to this post. Photos courtesy of and © Big Ass Fans.

*Twelve registrations as of August 2018. Several of the registrations are for HAIKU®, the fan in the featured photo for this post and another great trademark. Delta T also has trademark rights in the yellow on the ends of the blades of their industrial fans. This is a company that really understands branding and trademark law.

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Aloha Is a Toothpick

Aloha Poke Holdings, LLC of Chicago sent out a bunch of nastygrams to all sorts of people who were using ALOHA as a trademark. Aloha Poke was called out on social media and apologized, which is entirely appropriate because they seriously overreached.

Owning a trademark doesn’t give you the right to stop people from using the trademark for stuff that’s sufficiently different from your stuff.

How different is “sufficiently different”? That depends. If your trademark is used by lots of people, then the stuff doesn’t have to be very different at all:

  • If your trademark for cabinets is used in lots of trademarks, then someone could probably get away with using it for furniture.
  • If your trademark for cabinets is really rare, then no one else could use it for most stuff that goes into houses.

How commonplace is ALOHA? There are 1100 applications and registrations that contain the word ALOHA, including these for restaurants and restaurant services:

ALOHA CUP BAP Application
ALOHA SNACKS Application
ALOHA FRESH Application
ALOHA HAWAIIAN BBQ Application
ALOHA MAUI YOGURT Application
ALOHA KITCHEN Application
B ALOHA Application
ALOHA SALADS Registration
ALOHA HAWAIIAN BBQ Registration
ALOHA INSIDE Registration
ONE OHANA SHARING ALOHA Registration
ALOHA WOW WOW HAWAIIAN LEMONADES Registration
TASTE THE ALOHA Registration
ALOHA TABLE Registration
ALOHA GRILL Registration
ALOHA BAGELS Registration
OCEAN ALOHA Registration
HALE ALOHA Registration
ALOHA SERVED DAILY Registration
ALOHA SALADS Registration
ALOHA SPOKEN HERE Registration

Aloha Poke chose to go to bat with a toothpick instead of a baseball bat. How do you make sure your trademark rights are baseball-bat strong? Easy. Don’t pick commonplace words:

  • No names of gods, trees, constellations, familiar animals.
  • No common words in any language: ALOHA, CIAO, SHALOM, ADIOS, SALUD.

Anyone can have a strong trademark. You just have to pick the baseball bat over the toothpick.

 

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No Drawing is Possible

There are over 234 U.S. trademark registrations for “situations for which no drawing is possible” which means just what it says.

Of those, 219 are for sound marks: Mostly human voices singing and speaking and musical instruments, but there are also gongs, buzzes, beeps, big cats growling, little cats meowing, insects chirping, and ducks quacking. Here are the written descriptions of two of my favorite sound marks. Can you guess what they are? (Answers below.[1]):

  1. “Rhythmic mechanical human breathing created by breathing through a scuba tank regulator”
  2. “A crescendo beginning with a snapping sound followed by a hiss sound”

The next biggest category (13 registrations) is for scent marks. Here are some cool ones:[2]

  • A scent of a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough (Play-Doh®)
  • Flower musk scent for retail phone sales.
  • Chocolate scent for retail jewelry sales.
  • Bubble gum scent for shoes.
  • Piña colada scent for ukuleles.

Right now there’s only one visual trademark that falls into the “no drawing possible” category:[3] “A pre-programmed rotating sequence of . . . columns of light projected into the sky” for search lights.

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But the one that really wows me is a touch trademark: A “leather texture wrapping around the middle surface of a bottle of wine” for The David Family Group wine. That’s an amazing way to stand out from the crowd.

Novelty is incredibly important in the world of trademarks. In what unique way can you promote your business?

 

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[1] Here’s what the sound marks are:

  1.   That’s Darth Vader® breathing. The trademark is for toys and costumes.
  2.  That’s the sound of a lightsaber®. The trademark is for a bunch of stuff, including toys.

[2] Here are the rest of the scent marks:

  • Coconut scent for retail sales of beachwear and goods.
  • “High impact fragrance primarily consisting of musk, vanilla, rose, and lavender” for hair care products
  • Rose oil scent for advertising or marketing services.
  • Strawberry scent for toothbrushes.
  • Grape, strawberry and cherry scents for motor lubricants.
  • “Minty scent by mixture of highly concentrated methyl salicylate (10wt%) and menthol (3wt%)” for medicated transdermal patches.

[3] There are other non-traditional trademark where the applicant was able to create a drawing.

  • Amazon’s light sequence on Alexa.
  • Bad Robot production credit sequence.
  • Samsung’s colored light sequence.
  • Fee intake lights on USA Technologies vending machines.
  • Sequence of lights on Zenith vacuum cleaners.

 

Images of David Family Wines used with permission of The David Family Group LLC.

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:

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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:

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

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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:

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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