Candy Candy Candy!

If you’re a candy fan, there’s probably lots of candy brands you can identify just by looking at the candy itself. In other words, a chocolate bar or a piece of candy can be a trademark.

Ritter Sport® has been using this shape for its chocolate bars since the 1930s. It’s been fighting to keep the exclusive rights to the shape in its home in Germany but, so far, its registration in the U.S. is holding steady.

Hershey’s® has been using this shape for its chocolate bars since 1968 but . . .

. . . the even more famous shape of a Hershey’s Kiss® dates back to 1907 and has been registered since 1924.

In 2006, Nestlé® tried to register a trademark for the shape and look of these candies. The U.S. Trademark Office refused Nestlé’s application because the proposed mark was confusing similar to Hershey’s registered trademark. Duh.

James’® and Fralingers® have been battling over the rights to claims about originality of salt water taffy and its shape for over a century. Fralingers started calling itself the “original” salt water taffy in 1894. James’ couldn’t call itself the “original” so it started using CUT TO FIT THE MOUTH to describe the shape of its taffy in 1910.

And, of course, Just Born® has been using this shape for its Peeps® since 1958.

Can you think of any other candy or food product with this kind of trademark?

Shout out to Rebecca W. for the suggestion that led to this blog post.

Cease and Desist

There’s nothing good about getting a letter demanding that you stop infringing on someone else’s trademark. Threats of litigation loom. Thoughts of lost time and money dominate.

Ugh.

It’s bad, but it may not be as bad as it seems.

Houston, we have a problem.

If you really are infringing on the rights of another trademark owner, you’re going to have to rebrand. That’s pretty awful news but you can usually negotiate for a period of time to make the transition from your current trademark to the new trademark. It’s going to cost you money and lost good will, but there are ways to mitigate that.

Just a skosh.

Sometimes you can make your trademark non-infringing without having to completely rebrand. The other owner may agree to allow you to continue using parts of your trademark or to change just your logo or font.

So’s your mom

Sometimes the cease and desist letter is flat out wrong. The letter writer doesn’t know all the facts or screws up the legal analysis. Lots of lawyers don’t know that much about trademark law but that doesn’t stop them from shooting off nastygrams. They’re counting on your being so scared that you agree to whatever they ask. If that happens, you need to convince them to leave you alone by setting out the true facts and making the correct legal analysis.

None of these are as good as never getting a cease and desist letter but all are way better than a lawsuit.

 

 

bl_brandfooter

Taglines

Taglines are the Swiss Army® knife of the trademark world: They do it all.

Using a suggestive trademark like NEST®, an arbitrary trademark like MOO®, or a fanciful trademark like PENTIUM® is great but how are people supposed to know what you’re selling? A tagline can jump in and tell people exactly what you do with a bit of flare:

  • The Uncola
  • The milk chocolate melts in your mouth – not in your hands.®
  • Save money. Live better.®

The one or two words of your principle trademark can’t always capture what sets your product or service apart from the competition. A tagline can drive home a critical differentiator:

  • When it absolutely positively needs to be there overnight.®
  • Nothing runs like a Deere.®
  • Where’s the beef? ®
  • We try harder. ®

A tagline can create a different emotional feel that goes beyond your principle trademark:

  • Reach out and touch someone®
  • Think Different®
  • Open happiness®
  • The happiest place on earth.®

A tagline can be catchy in a way that your primary trademark might not be:

  • The Quicker Picker Upper®
  • M’m! M’m! Good!®
  • Just Do It®

A tagline can change over time to suit new situations and new times while the brand stays the same:

  • Look for the golden arches.
  • TWOALLBEEFPATTIESSPECIALSAUCELETTUCECHEESEPICKLESONIONSONASESAMESEEDBUN®
  • You deserve a break today.®
  • I’m lovin’ it!®

What are some of your favorite taglines?

Thanks to Julie W. for the suggestion that led to this post.

Social Media Handles

Chillax Acres was having a problem. Some of its residents had established a Facebook page and were using it to complain about everything from trash collection to HOA fees. Chillax Acres wanted to know if it could use trademark rights to force Facebook to give it control of the page.

The answers to these questions will determine whether Chillax Acres is likely to get help from a social media company.

  • Does Chillax Acres have common law trademark rights only or does it also have a trademark registration?
  • Does the handle or username sound like it’s “official”?
  • Is there a legitimate reason for the current owner to use the username or handle?

Registered Trademarks Only

Many social media companies require a registered trademark before they’ll consider any action.[1]

Twitter®Complaint form doesn’t ask for a trademark registration number.
Facebook® Instagram®Complaint form requires trademark registration number.
LinkedIn®Complaint form asks for registration number.
YouTube®Complaint form asks for registration number.

Chillax Acres Sucks

Social media companies won’t turn over a username or handle when it’s clear that it’s not “official.” For example, no one thinks the Twitter handle @cillaxacresssucks is the official Twitter account for Chillax Acres.[2]

Legitimate Reason

Social media companies won’t turn over a handle or username if the current owner has a legitimate reason to own it. For example, @united belongs to United Airlines® and there’s nothing that United Van Lines® or Manchester United® can do about it.

Bottom Line

If you didn’t snatch up the social media handles for your trademark AND you didn’t get a trademark registration, you’re probably out of luck.


Featured image ©2016 Redi-Rock International used under Attribution 2.0 Generic (CC BY 2.0). Image was modified for use.


[1] The information in the table is as of June 2020. In my experience social media companies require that the trademark registration date (or at least the application filing date) come before the date when the username or handle was assigned, so once you have a problem, it’s probably too late to register.

[2] The best-known “sucks” case was a World Intellectual Property Organization decision in Wal-Mart Stores, Inc. v. Walsucks and Walmart Puerto Rico, case number D2000-0477. WalMart® was trying to get control of the domain name Walmartsucks.com using the Uniform Domain Name Dispute Resolution Policy that was adopted by the Internet Corporation for Assigned Names and Numbers (ICANN). The panel that decided the case ruled in favor of WalMart because the person who had bought walmarksucks.com wasn’t using it for griping. He was using it as a way to get money out of WalMart.

“The Panel stresses that this decision does not address legitimate freedom of expression sites established by parties critical of trademark holders. The Panel is aware that there are numerous websites identified by “-sucks” formative domain names, including “walmartsucks.com”. The Panel anticipates that Respondent (and others) may choose to characterize this decision as seeking to stifle freedom of expression on the Internet by ordering the transfer of “-sucks” formative names. Certain trademark holders might choose to characterize this decision as supporting action against “-sucks” formative domain names in other contexts. The Panel intends this decision to serve neither of these aims. This decision is directed to a blatant case of abuse of the domain name registration process – no more, no less.”

Colors AS Trademarks

Most companies have a palette as part of their branding.

  • The shocking pink of the Barbie® aisle at the toy store.
  • The purple and orange of a FedEx® package.
  • The red and white of a can of Campbell’s® soup.
  • The blue of the Twitter® bird.

Some companies go farther and claim color AS their trademark rather than as a feature of their trademark. How is that different? Let’s looks at an example:

The description of the trademark for the registration for the Twitter® bird reads like this:

“The mark consists of a silhouette of a bird in flight in the color blue.”

The description of the trademark for the registration for Tiffany® blue reads like this:

“The mark consists of a shade of blue that is used on product packaging in the form of jewelry pouches with drawstrings.”

See the difference? The Twitter® trademark consists of the bird that happens to be blue. The Tiffany trademark consists of a shade of blue that happens to appear on product packaging.

It’s subtle, but for a trademark attorney, it’s a pretty big difference. Someone using the same blue as the Twitter bird is much less likely to be infringing than someone using Tiffany blue.

There are more color marks than you think. Here’s a sampling. See if you can identify the companies that own each of these color marks. Answers are below.

The mark consists of the color chocolate brown, which is the approximate equivalent of Pantone Matching System 462C, as applied to the entire surface of vehicles and uniforms.

Hint: Delivery services

The mark consists of an orange-colored background covering the entirety of the packaging for the goods. The orange color is approximately equivalent to pantone 165C. The mark consists of color alone.

Hint: Candy

The mark consists of the color canary yellow used over the entire surface of the goods.

Hint: Stationary notes

The mark consists of the color pink as applied to the entirety of the goods.

Hint: Building insulation

The mark consists of the color combination green and yellow in which green is applied to an exterior surface of the machine and a yellow stripe is applied to a portion of the exterior surface.

Hint: Riding mowers

Thanks to Sarah C. for the suggestion that led to this blog post.


A Tale of Two Trademarks

In 2013, Randy Goldberg and David Heath started a company to sell socks. In 2019, they added other items of apparel to their lineup.

In 2017, Shopify launched an app that allows you to track all your package deliveries. In 2020, they added the ability to use the app to shop from your favorite stores.

Two stories of companies growing and changing, much the same, except for one detail:

  • Randy and David chose the brand BOMBAS for their socks allowing them to easily leverage the brand to cover their new products.[1]
  • Shopify used ARRIVAL for the app they launched in 2017. The descriptiveness of ARRIVAL meant that Shopify had to change the name of the app when they added new features.

Even worse, Shopify didn’t learn its lesson: They named the new app SHOP, which is the worst trademark I’ve heard so far this year because it both downplays the feature that 16 million users are already using while also limiting the new features they can add without having to re-rebrand.

 

Big shout out to Julie and Cassandra for the tips that led to this post.

bl_brandfooter

[1] I would still think the BOMBAS branding is still brilliant even if they didn’t have a bee as part of their logo.

Keggy the Keg

Keggy the KegTM was created in 2003 by Dartmouth College humor magazine, The Jack-O-Lantern. The Jack’O periodically trots Keggy out to the amusement of all.

Said another way: The Jack-O-Lantern created Keggy the Keg. It has been using the words KEGGY THE KEG and various incarnations of the costumed mascot for about 17 years. Sounds a lot like trademark rights to me.

But the folks at Dirtymouth would like you to know that preventing them from using Keggy the Keg to sell their merchandise is a “hindrance to [their] expression as Dartmouth students.” Also that Dirtymouth’s use of Keggy the Keg is a “parody” and their “apparel and accessories” are being sold to “spread awareness of their political message.”[1]

Let’s take those claims one at a time:

  • Selling merch to make money is NOT “expression.” It’s commerce and using someone else’s trademark in commerce is infringement.
  • Parody and political commentary each has some pretty specific requirements. I don’t see where Dirtymouth is meeting any of them.
  • How, exactly, is stealing someone else’s trademark rights for profit a “political message” and what exactly is that message? It’s OK to steal?

Dirtymouth has no original ideas that interest anybody so they use someone else’s but call it free expression, parody, and a political act so they can pretend it’s OK.

Even that isn’t original.

Shout out to Max F. for calling this to my attention.

Shout out to Kane5187 at English Wikipedia for taking the sweet picture and releasing it into the public domain.


[1] Taken from the description of the Keggy the Keg throw pillow. Here’s the full description:

“Where is Keggy? The answer is, Keggy is dead. Since 2003, an organization has claimed that they have the sole copyright claims on Keggy the Keg. ⁣

“We disagree. ⁣

“Keggy has taken on a life of its own as the mascot of Dartmouth College, it’s students, alumni, and the culture of the university. Preventing and isolating the use of Keggy is a hindrance to our expression as Dartmouth students. The Keggy as we know it is dead. Now, Dirtymouth presents to you our own parody of this absurd copyright claim: Keggy is Dead.⁣

Any associated Keggy is Dead apparel and accessories are to spread awareness of our political message.”

A Trademark Nightmare

There are lots of steps involved in bringing a trademark application through to registration. As a trademark attorney, I’m used to ticking off each of those steps knowing that my client is getting ever closer to a registration.

It’s rare for an application to go backward but it can happen. When it does, it’s usually some minor and hyper-technical issue. We get it fixed and the application gets back on track.

Recently, I saw a nightmare that was being foisted on a company in my co-working space: Their trademark registration was issued and then . . . immediately canceled.

  • The Trademark Office examiner checked the application and approved it for publication.
  • The application was published for opposition.
  • The applicant received a Notice of Allowance.
  • The applicant filed a Statement of Use.
  • The Statement of Use was reviewed by the Trademark Office and accepted.
  • The Trademark Office printed a Certificate of Registration and then
  • Canceled the registration the instant it was completed.

It’s like that moment when they announced best picture at the 2017 Oscars®. It’s been giving me nightmares ever since.

 

bl_brandfooter

Washington Football Team

In 2017, Simon Tam won a First Amendment U.S. Supreme Court victory that allowed him to register a disparaging trademark. A side effect of that ruling allowed the Washington Redskins football team to keep their trademark registrations without having to fight any more legal battles.

Fast forward 3 years. The Redskins have been renamed, not because a court ordered them to, but because sponsors have pressured the team’s owners to finally do the right thing. Everyone expects the Cleveland Indians, the Cincinnati Reds, and the Atlanta Braves to follow.

Much has already been written and will be written on this topic. What I see is a wealth of evidence that societal and market pressure can be valuable tools in the fight against racist branding.

Most of the applicants who rushed to register disparaging and scandalous trademarks after the Tam ruling didn’t have existing brands. They were people who thought they saw a financial opportunity where none actually existed. They applied to register a trademark but never got a registration because they could never show they were actually using the trademark to sell the stuff covered by the application. Check out these numbers:

 All
applications
Applications with disparaging or
scandalous words[1]
Number applications filed451,920249
% that have reached registration as of 7/202059%14%

If you break it down by each disparaging and scandalous word, the differences become much more stark. For example, none of the applications to register the n-word filed in 2017 have become registrations as of July 2020.

I’d like to think these numbers show that hate doesn’t sell.

Here’s the full data set. What do you see that’s interesting in these numbers?


[1] The scandalous words included were “fuck”, “shit”, and “asshole”. The disparaging words included were the n-word, “redneck”, “pansy”, and “dyke”. There was a longer list of disparaging words that I checked but there had zero applications filed in 2017.

Hickies Design Trademark

Hickies, Inc. has a metric assload of trademarks registered with the U.S. Trademark Office. Words, taglines, and, most interestingly, this design trademark:

Hickies 1

As of this writing,[1] the U.S. Trademark Office has refused to register the Hickies design trademark shown below because the Trademark Office believes the design in the trademark is functional[2] and you can’t register a trademark that consists of functional elements.

Hickies 2

What does it mean for a design to be functional? Play-Doh® CAN get a trademark registration for its smell because its smell has nothing to do with how Play-Doh works as modeling clay but Chanel® can NOT get a registration for the smell of No. 5® because the smell is the product.

Hickie’s attorney has provided arguments and, literally, thousands of pages of evidence to support a finding that the elements of the design of its fastener aren’t functional. So far the Trademark Office isn’t having it.

“Why don’t they just get a design patent?”, I pretend to hear you ask. Hickies’s did get a design patent but they also want a design trademark. Why? There are lots of reasons. Here are some that may or may not be theirs:

  • Patents expire. Trademark registrations can be renewed forever.
  • Trademark infringement is easier to prove and defend than patent infringement.
  • Two forms of protection are better than one, especially with a product that’s relatively easy to knock-off.

It’s great that Hickies is using all the tools available to it to protect its product and brand. I’ll be watching to see how this all plays out.

 

bl_brandfooter

 

[1] March 2020.

[2] The European Union Intellectual Property Office feels the same way. Hickies applied for a to register the design in the EUIPO in 2017. The application was rejected by the examiner at EUIPO and the Board of Appeal of EUIPO. Hickies has appealed that decision.