Backcountry Takes It Back

Customers don’t like trademark bullies.

Jonathan Nielsen, the CEO of Backcountry.com, LLC learned that lesson the hard way.

As of this writing,* there are over two dozen registrations that include the word BACKCOUNTRY for various outdoor related goods and services that do NOT belong to Backcountry.com.

When you have a trademark like BACKCOUNTRY for outdoor gear and retail sales of outdoor gear, you have to accept that companies in that space are going to use pretty similar marks for pretty similar goods and services. It’s just not that strong a trademark.

Despite that, Backcountry.com started opposing applications, trying to get registrations cancelled and filing lawsuits against companies they thought were infringing.

The consumers in that market started noticing.

Social media blew up.

Then, miraculously, Mr. Nielsen did the right thing.

He published a letter to the outdoor community acknowledging that his company “took certain actions that . . . were not consistent with [his company’s] values . . ..” Mr. Nielsen pledged to “reexamine our broader approach to trademarks to ensure we are treating others in a way that is consistent with the culture and values envisioned by our founders and embraced by our community.”

Way to go, Mr. Nielsen. We can’t get everything right all the time, but we can apologize, and get things right the second time.

 

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*December 2, 2019.

Where Are They Now?

What happens to a trademark application once it’s been filed?

To find out, I tracked all the applications filed on one day: February 8, 2016.[1]

There were 1,396 applications to register trademarks filed with the U.S. Trademark Office that day.

Screen Shot 2019-12-16 at 12.30.03 PM.pngAs of this writing,[2] only 840, or about 60%, made it all the way to registration.

494 of those applications are dead and gone.

Another handful, 62 applications, are still in process. Some are being opposed and some are still trying to prove use. I estimate that half of those 62 will be dead before it’s over.

How did all those 494 applications die? Screen Shot 2019-12-16 at 12.43.25 PM.png

  • 228 died because the applicant never filed proof it was using the trademark. Maybe that’s because their plans changed or their business died.
  • 221 died because the Trademark Office issued an office action. which is the Trademark Office’s way of saying that the trademark can’t be registered[3].
  • 29 died because the applicant “expressly abandoned” the application, which is code for “someone sent them a cease and desist letter.”
  • 12 died because someone opposed the application and the applicant lost the opposition or chose not to fight.
  • 4 of them actually made it to registration, only to be cancelled soon after by someone else with stronger rights and/or a bigger purse.

There are lots of things that can happen to an application once it’s filed. The best way to avoid a bad outcome is to file an application for a trademark that has a low likelihood of running into problems.

 

Thanks to Max F. for the suggestion that led to this blog.

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[1] I picked that date because it’s relatively recent but far enough in the past to have allowed most things that can happen to happen.

[2] December 17, 2019.

[3] Many of those office actions refused registration because the trademark was “confusingly similar” to another trademark or because it was “merely descriptive” or “generic.”

What’s most interesting to me is how few of the applicants even tried to move ahead after the Trademark Office refused to register their trademark. Of the 221 applications that were refused and are now dead, only a few responded to the Trademark Office with arguments as to why they should be registered. I’m sure many of those had no chance even if they did respond but I suspect that a good size chunk could have made it with a fairly simple response.

Trademark Bullies

Let’s play a guessing game.

There’s a company out there, let’s call it Bully Inc., that’s been accusing other companies of infringing on its trademarks. I’ll describe the “infringements” and let’s see if you can guess the identity of Bully Inc.

Remember, Bully Inc. is claiming that each of these “infringers” is leading consumers to think they’re associated with Bully Inc., so the identity of Bully Inc. should come easily to mind when I tell you about the trademarks the “infringers” are using.

Ready? Let’s go.

Alleged Infringer #1: Thunder Beast LLC owns a registration for the trademark THUNDER BEAST® for “Non-alcoholic beverages, namely, carbonated beverages.” Bully Inc. says that’s likely to confuse consumers and its trying to deregister Thunder Beast’s trademark.

Raptors

Alleged Infringer #2: Bully Inc. also went after the owner of the Toronto Raptors® because their logo (shown to the right) is likely to confuse consumers into thinking that the Raptors are associated with Bully Inc.

Have you figured out who Bully Inc. is yet?

One more hint.

Alleged Infringer #3: Bully Inc. also went after Disney for Disney’s registration of MONSTERS UNIVERSITY® for food products.

. . . .

. . . .

Have you got it? The company bringing all those legal actions (and many more) is Monster Energy Company, makers of Monster Energy® drinks.

If you own a trademark you should defend it against infringers but remember that your trademark rights don’t extend to everyone who uses something vaguely similar to the words or designs in your trademark.

 

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The Trademark Whisperer

  • An idea enters the zeitgeist.
  • Everyone uses the idea for their branding.
  • Trademark infringement results.
  • The trend peaks and dies.
  • The trendy trademarks everyone fought so hard over grow stale.
  • Lather rinse repeat.

How bad is it? Guess how many applications have been filed for some form of this:[1]

THE _________ WHISPERER

Go on guess.

I’ll give you a hint: There are three where the blank is “vagina.”[2]

Take your time. I’ll wait.

395.

Three for THE CHICKEN WHISPERER. Three. Horrifyingly, there’s one for THE BRAND WHISPERER. If that’s the best they can do for their own brand, it’s not the company you want to help with your brand.

Screen Shot 2019-09-17 at 9.56.29 AM.png

Why not jump on the bandwagon, ride the wave, and mix your metaphors? Because the trend will fade. Probably rapidly. And you’ll end up looking like yesterday’s soufflé. Like RADIO SHACK and DRESS BARN.

The graph shows applications filed for THE _______ WHISPERER since 1995.  It’s already plateaued or, perhaps, headed into the toilet.

The current trend is for sticking LY or LI at the end of a word. Here’s just a partial list of the if-Johnny-jumped-off-a-bridge trademark choices that companies have made.[3]

Screen Shot 2019-09-17 at 10.46.40 AM.png

The trend for IFY is no better.

  • SHOPIFY
  • CHARGIFY
  • EXPLAINIFY
  • COWORKIFY
  • SCOUTIFY
  • MOBLIFY
  • EXPENSIFY
  • MEDIFY

You want a brand that sets you apart and goes with you no matter where the market takes you. Jumping on the latest trend is good in the short-term, but is not a long-term winning strategy.

 

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[1] All of the statistics in this post are from September 2019.

[2] OK. One of those three is THE VAG WHISPERER, but even so.

[3] There’s an amazing list of over 300 of these ridiculous names on Pinterest®.  https://www.pinterest.com/fritinancy/names-that-end-in-ly/

 

Mr. Proper, International Man of Mystery

Some trademarks are the same everywhere: Pizza Hut® is Pizza Hut from Armenia to Vietnam. (Seriously disappointed there’s no Pizza Hut in Zambia.)

But, sometimes, the trademark used for a product changes depending on where it’s sold. There are a variety of reasons for this decision:

  • There’s already a product using the usual trademark;
  • The product name has negative connotations in the new market;
  • The company selling the product wants to make it feel more local and familiar;
  • The wholesale prices vary by market and the company wants to make it harder to sell across borders.

Proctor & Gamble’s MR. CLEAN® travels under many names for most of those reasons.

Mr. Proper

Mr. Clean in Luxembourg

He’s MR. PROPER in most of Europe. That trademark was registered in the European Union Intellectual Property Office in 1998. “Proper” is an approximation of “clean” in French (“propre”) and Luxembourgish (“propper”).

When in Germany, Mr. Clean snaps his fingers and becomes MEISTER PROPER.

Maestro LimpioHe’s DON LIMPIO in Spain (after an earlier introduction as Mr. Proper). In Mexico, he has gone by MAESTRO LIMPIO since 1981, when he was first registered with the Instituto Mexicano de la Propiedad Industrial.

Mastro LimpioWhen in Rome, he becomes MASTRO LINDO. His appearance under that name dates back to 1998 in the Ufficio Italiano Brevetti e Marchi.

Flash

The same product is sold as FLASH® in the U.K. I presume that’s because there was already a product called MR. CLEEN, a cleaning and polishing preparation sold by Reckitt Benckiser. Or maybe Mr. Clean just wearied of the banal translations and wanted to reinvent himself.

 

 

Thanks to Max F. for opening this can of worms by sending me the photo of Mr. Proper (that’s his thumb in the photo) and also for the suggestion to use the phrase “International Man of Mystery.”

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Personal Brands

Q:  Can a sobriquet be a trademark?

A:  It can, as long as it’s being used as a trademark to sell something: T-shirts, public speaking services, action figures, entertainment services, etc.

1621px-Canis_lupus_baileyi_running

Wile E. Coyote before he struck it big.

  • Shakespeare, if he were alive, could register THE BARD OF AVON for playwrighting services.
  • Wile E. Coyote, if he were real, could register SUPER GENIUS for roadrunner catching services. (I would absolutely do that legal work pro bono.)

Turning from the hypothetical to the real:

  • Harpo, Inc. owns multiple trademark registrations containing OPRAH for, among other things, educational and entertainments services, magazines, and clothing.
  • Curtis J. Jackson III owns trademark registrations for 50 CENT for music recordings but also clothing, books, and audio equipment.
  • RuPaul Charles owns a trademark registration for RUPAUL for prerecorded CDs featuring musical performances by a professional entertainer.

There are some limitations to what can be registered. First, no one can register a trademark that includes the name, stage name, or nickname of a live person unless they are that person or they have that person’s permission.

The rules about generic and “merely descriptive” trademarks still hold. Julia Child had a registered trademark for THE FRENCH CHEF for entertainment services. I doubt that she would have been able to register THE FRENCH CHEF for cooking services.

 

Shout out to Aubrey B. for the question that led to this blog post.

Shout out to photographer, Jim Clark of the U.S. Fish and Wildlife Service, for the amazing coyote photo.

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Cupcakes and Squiggles

Can a decoration on a cupcake be a trademark?

Screen Shot 2019-07-16 at 3.08.43 PM

The cupcake pictured to the right is the “9:30 Cupcake” from the Buzz Bakeshop in Alexandria, Virginia. No doubt the bakeshop is frequented by examiners from the U.S. Trademark Office just a few miles up the street. This particular cupcake was photographed a moment before it was eaten by Liz, a long-time reader of the Bee Blog. She wanted to know whether this cupcake is infringing on the trade dress of Hostess®.

IMG_2345It does look suspiciously like a Hostess® cupcake, because it has white loop-de-loops of icing on top of chocolate frosting.

Hostess originally produced its chocolate cupcake in 1919 and the squiggle was added in 1950.

Hostess Brands, LLC doesn’t have a trademark registration for the trade dress consisting of white loops on a chocolate cupcake. It does have a trademark registration for the words THE ORIGINAL SQUIGGLE.

IMG_2343

Entenmann’s® also sells chocolate cupcakes with white squiggles.
Rubicon cropped

 

 

Rubicon Bakers® takes a much more impressionistic turn on the white squiggle.

 

Here’s my theory: You can distinguish among the brands of chocolate cupcake by the number of loops on white frosting.

  • If it has 7 loops, it’s a Hostess brand cupcake.
  • If it has 6 loops, it’s a Buzz Bakeshop brand chocolate cupcake.
  • If it has 4 loops, it’s definitely from Entenmann’s.
  • If it’s open to interpretation, it’s from Rubicon Bakers.

The marketplace is wide open for a 5 loop brand. Any takers?*

 

Liz B. does it again with a great question and featured photo to boot. Thanks, Liz!

 

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*Then there are Pop-Tarts® frosted chocolate cupcake toaster pastries, which frighten me more than I care to admit.

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Hidden Meaning – European Version

We’ve already seen the cool hidden messages in the logos for Cisco®, FedEx®, and Amazon® and for Baskin Robbins®, Formula One®, Goodwill®, Tostitos®, and the Washington Capitals®, but there are also some really cool logos of European brands with hidden symbols and meanings.

Trademark imageThis is the logo owned by Société du Tour de France. Can you see the cyclist? The “O” of “Tour” is the back wheel. The grey circle is the front wheel. The “R” is the cyclist’s body and the small black dot is the cyclist’s head. The logo is always tilted so that the cyclist appears to be riding up hill.

 

IMG_2340.jpg

The mountain on the Toblerone package is the Matterhorn in Bern, Switzerland. Bern is where this candy was first manufactured. Have you ever noticed the bear that’s part of the image?
IMG_2340 copy.jpgScreen Shot 2019-07-12 at 11.04.52 AM.png

The bear is a part of the coat of arms for Bern, so together, the bear image inside the Matterhorn is as “Bern” as you can get.

 

 

This is the logo for the Museum of London. The different color blobs shows the growth of the city over time.

Screen Shot 2019-07-12 at 11.55.52 AM.png

The zoo in Cologne, Germany uses this awesome image of an elephant. Hidden in the negative space of the elephant are the relatively obvious rhinoceros and giraffe, but there’s also the spire of the Cathedral of Cologne.

Screen Shot 2019-07-12 at 12.00.31 PM.png

The London Symphony Orchestra logo includes the letters “LSO” while also hinting at an image of an orchestra conductor with her arms raised and a baton in her hand.

Pretty cool how much can be communicated with a logo, huh?

 

Many thanks to Liz B. for her suggestion for this post.

 

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Less is More

Every U.S. trademark registration includes a description of the stuff sold using the trademark. Some people think more is better. That’s not always true.

You’re covered for related stuff even if you don’t include it.

If you register COFFEE BEAN for:

Clothing, namely, shirts, pants, and skirts

no one’s going to be able to register or use COFFEE BEAN for coats, socks, hoodies, or belts, so don’t obsess over listing every single item of attire.

Your application is less likely to be successful.

Let’s say you sell a VISIONBOARD brand app for:

Downloadable software in the nature of a mobile application for tracking and reporting business expenses.

What if your app also exports reports to spreadsheets? Should you add that?

Downloadable software in the nature of a mobile application for tracking and reporting business expenses and exporting information as a spreadsheet.

You just took a pretty solid application and made it likely to be rejected. There’s an existing registration for VISIONBOARD for spreadsheet software. The examiner might see “software” and “spreadsheet” and decide to reject your application. If you had stuck with the accurate and more limited description, you wouldn’t have had a problem.

Sometimes being short and sweet is best.

My registration for BEELINE is for “legal services.” That’s it. I don’t mention my online platform or trademark law or anything else, because that would unnecessarily limit my rights. Sometimes the trademark offices requires you to be more specific and that’s fine, but don’t limit unless you have to.

Unnecessary expense.

Including more stuff can cost more money. The Trademark Office’s fees are based on the number of “International Classes.” If you’re selling a downloadable app (class 009) and there’s no SaaS version of the software (class 042) then don’t include that because it will cost more and it’s also not actually true.

Perjury doesn’t help.

When you file your application you affirm, under oath, that you’re using the trademark for the goods and services in the application. If you include stuff you aren’t selling, you’ve committed perjury and your trademark could be deregistered.

There’s an art to knowing when to limit and when to expand, knowing when to be specific and when to be broad. More is not always better.

 

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Specimens

To register your trademark with the U.S. Trademark Office, you have to submit a “specimen” showing:

  • the trademark
  • used on or in connection with
  • the goods or services.

Lots of people find specimens confusing. Let’s see if I can help with that.

Specimens of things you can touch are pretty straightforward: You submit a picture of the thing or the thing’s package. The picture above has images that could work as specimens for 34 different trademarks.*

78912690 copy.png

But what kind of specimen does the Trademark Office want for something you can’t photograph, like computer software?

We used to submit pictures of the disc. Here’s the specimen submitted by AOL for software in 2006.

Today, most software is either downloaded or SaaS, so what do we use now?

Screen Shot 2019-06-20 at 9.07.34 AM.png

To the right is an excellent specimen for the trademark QUICKBOOKS for SaaS:

  • QUICKBOOKS is clearly visible.
  • It’s a sign-in page so it shows “use.”
  • It’s clear that QUICKBOOKS is a trademark for SaaS.

IMG_2322.PNG

Here’s an excellent specimen for ZYNGA for downloadable software:

  • The word ZYNGA is clearly visible.
  • It’s an actual screen shot from a phone so it shows “use.”
  • It’s clear this is a mobile software app.

Image-1.jpg

This is NOT an acceptable specimen for KISI for software. The trademark KISI doesn’t appear anywhere.

Screen Shot 2019-06-24 at 10.54.35 AM.png

This is NOT an acceptable specimen for MINECRAFT for software:

  • It’s not clearly in “use”. This could just be an ad for a game that’s going to be released next month.
  • It’s not clear it’s software. This could be a board game.

You gotta have all three: The trademark; in use; for the goods and services in your application. If you’re missing any one of those requirements, it won’t work as a specimen.

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*Here’s the list.

  • Revlon® for hairbrushes
  • Aveeno® in plain font for skin lotion
  • Aveeno® in stylized font for skin lotion
  • Active Naturals® for skin lotion
  • Scotch® for tape
  • The tartan pattern used by Scotch brand
  • Magic™ used by Scotch brand
  • 3M® (on the Scotch brand tape dispenser)
  • KleenEARTH® in plain font for scissors
  • KleenEARTH® in stylized font for scissors
  • The “W with an arrow through it” logo for scissors
  • iPhone® for mobile phones
  • Semikolon® for paper products
  • Amarelli® in plain font for candy
  • Amarelli® in stylized font for candy
  • Amarelli® in a different stylized font for candy
  • Quartet® for markers
  • Artgum® in plain font for erasers
  • Artgum® in stylized font for erasers
  • Prismacolor® for erasers
  • Expo® in plain font for markers
  • Expo® in stylized font for markers
  • Pentel® in plain font for erasers
  • Pentel® in stylized font for erasers
  • Hi-Polymer® for erasers
  • Mead® for envelopes
  • Paperpro® for staplers
  • Bobino® for cord holders
  • Swingline® in plain font for hole-punchers
  • Swingline® in stylized font for hole-punchers
  • Krazy® for adhesives
  • Gold® for batteries
  • Leatherman® for tools
  • Quartet® for erasers

If I had been more careful with way I oriented the stuff, there would have been 6 more:

  • Bic® in plain font for markers
  • Bic® in stylized font for markers
  • Quartet® for markers
  • Enduraglide® for markers
  • Twinings®  in plain font for tea
  • Twinings® in stylized font for tea