The Greatest Trademark On Earth

In 1988, the Utah Division of Travel and Development applied to register THE GREATEST SNOW ON EARTH for “promoting business and tourism.” It claimed to have started using the slogan in 1966.

Ringling Bros. Barnum & Bailey Circus, the owners of THE GREATEST SHOW ON EARTH, were not pleased. In case you think 1966 was a long time ago, Ringling Bros. first used the trademark THE GREATEST SHOW ON EARTH in 1891, and first registered the mark in 1961.

Ringling Bros. didn’t have to prove infringement because THE GREATEST SHOW ON EARTH is a “famous” mark. All Ringling Bros. had to show was that Utah’s use would “dilute” Ringling Bros. mark either by “tarnishing” or “blurring.”

Ringling Bros. opposed Utah’s application by arguing there would be dilution. After almost 6 years, the Trademark Trial and Appeal Board ruled in favor of Utah. Ringling Bros. appealed and still lost.

Since that fateful loss, the Ringling Bros. tagline has been the subject of other trademark riffs. Here are some that made it to registration:

  • THE GREATEST SHOW NEAR SURF
  • THE GREATEST SHOW ON GRASS
  • THE GREATEST SHOW ABOVE THE EARTH
  • THE GREATEST SHOW ON TUNDRA
  • THE GREATEST SHOW ON DIRT

The story of some trademarks goes back a long long way and takes a very twisty route.

Image of Utah license plan (c) 2018 Dick Elbers under Creative Commons License Attribution-ShareAlike 4.0 International. Modified by cropping.

The Super Powers of a House Mark

“House marks do not identify particular goods or services – rather, they identify the provider of a wide variety of goods or services, with such goods or services often themselves identified by a separate trademark or service mark.” 

Trademark Manual of Examination Procedure §1402.03(b)

What’s a house mark? I’ve sprinkled a few into this post to help you grok the concept. After reading this post, you’ll start noticing house marks everywhere.

A house mark’s super power is leveraging brand awareness: If consumers already buy and love your ketchup, they’re more likely to buy your mayonnaise if you use a house mark.

Costco’s adoption of KIRKLAND SIGNATURE® as its house mark is the greatest house mark story of all.

In the early 1990s, Costco sold plenty of its own products but each product used a different trademark: SIMPLY SODA for soft drinks; HEALTH BALANCE for vitamins; ENGINE FORCE for motor oil.

In 1995 Costco adopted a single trademark for all its products: KIRKLAND SIGNATURE®.

Costco had to make a serious effort to adopt a house mark. It had to find a mark that was available for all the goods and services its sells in all the countries where it operates.

That effort really paid off: KIRKLAND SIGNATURE® is now the biggest brand of packaged consumer goods in the U.S. with sales that are larger than much more established brands like Kellogg®.

Thanks to Liz B. for sending me an article that led to this post.

A Book Is Not a Copyright

Owning a book is not the same as owning the copyright to the book.

Obvious, right? You probably own lots of books and you’ve never thought you owned the copyright to those books.

Still, people conflate “book” with “copyright” all the time.

On March 20, 2022, The New York Times continued its reporting[1] on the alleged theft of Ashley Biden’s diary by Robert Kurlander and Aimee Harris. Harris and Kurlander purportedly tried to sell the book to the ironically named, Project Veritas.

The Times reported that the Department of Justice is conducting a criminal investigation of how Ms. Harris came to be in possession of the diary and the role played by Project Veritas and then wrote that:

“Project Veritas finalized a deal with Mr. Kurlander and Ms. Harris to buy the rights to publish the diary for $40,000, wired them the money and signaled that the group planned to soon publish it, according [sic] a person with knowledge of the case.”

What?

If Kurlander and Harris somehow came by the diary without breaking any state or federal laws, they would have the right to sell the physical object to whomever they please but they still don’t have the right to publish the diary and, it should go without saying, they can’t sell or license rights they don’t have.

Ms. Biden wrote the diary. She owns the copyright. Publication without her permission is copyright infringement.


[1] Ashley Biden’s Diary Was Shown at Trump Fund-Raiser. Weeks Later, Project Veritas Called Her. March 20, 2022 The New York Times. https://www.nytimes.com/2022/03/20/us/politics/project-veritas-ashley-biden-diary.html?referringSource=articleShare

Musical Copyright

Singer/songwriters Ed Sheeran and Sami (Switch) Chokri are in court because of similarities between their songs.

How do we tell if one song is similar enough to another song to be considered copyright infringement?

  • Do we let the judge or jury listen to the songs and decide whether they think they’re similar?
  • Do we bring in music theorists to analyze the similarities of the songs?
  • What if there are only a few measures that are same and everything else is different? Can that still be infringement?
  • Does it matter if the accompanying lyric is also similar?

The dispute between Switch and Sheeran is largely based on a measure and a half with the same three pairs of notes rising a half-step each time. The measures are repeated throughout both songs.

Listen at 1:10 of this recording of Sheeran’s The Shape of You. The accompanying lyric is “Oh, I.”

Listen to Chokri’s Oh Why at 0:52 of this video. The accompanying lyric is “Oh, why.”

If you’re a prolific songwriter, what are the chances you’ll go through your entire career without using a riff that’s similar to a riff in a different song? Does it matter if the songwriter was conscious of the similarity?

If you find this as fascinating as I do, you should check out the Music Copyright Infringement Resource sponsored by George Washington University Law School and Columbia Law School. It has links to hear the songs from major copyright lawsuits together with analyses of the rulings.

Oppose, Cancel, or Make a Deal – Part 3 Consent and Concurrent Use Agreements

You sell GRINS brand candy bars. You want to register GRINS as a trademark but, whoops, another company already has a registration for GRINS for cookies.

You’re probably going to have to rebrand but, maybe not.

I look at getting my client a trademark registration in terms of developing a strategy and then using just the right tactics to accomplish my client’s goal.

Candy bars and cookies are similar enough that your application’s probably not going to get through the Trademark Office review but, you might be able to make a deal with the cookie company:

  • You agree to use GRINS only for candy. They agree to use GRINS only for baked goods.

You can also divide up the trademark rights in other ways. For example:

  • You agree to use GRINS only west of the Mississippi. They agree to use GRINS only east of the Mississippi.
  • You agree to always use GRINS CANDY. They agree to use only GRINS COOKIES.

Without some kind of leverage, the cookie company has no reason to make a deal with you. We might get some leverage if there was something not entirely above-board about their application. Sometimes the other company agrees to enter into an agreement in exchange for a payment.

Most of the time, there’s nothing anyone can do about another application or registration that’s in the way of the trademark you want to use but, every once in a while, there is a way forward.

Oppose, Cancel, or Make a Deal – Part 2 Cancellations

You’ve been selling GRINS brand candy bars. You want to register GRINS as a trademark but another company already has a registration for GRINS for candy

Usually, that’s it. Game over.

In Oppose, Cancel, or Make a Deal – Part 1, we looked at one way to move forward. This post looks at “cancellations.”

I think of getting a registration as a problem to solve with the tools I have at hand. Sometimes the tools are what I need. Sometimes they aren’t.

There are at least 27 different reasons[1] for a cancellation. The three I see most are: Prior Common Law Rights; Abandonment; and Fraud. If I have the tools for one of those three, I might be able to cancel the other registration so your application can move forward.

Prior Common Law Rights

  • You were using GRINS before the other company started using GRINS[2]; and
  • Your earlier use of GRINS was throughout the United States; and
  • The other company’s registration is less than 5 years-old.

Abandonment

  • The other company isn’t using GRINS anymore; and
  • The other company isn’t ever going to start using GRINS again.

Fraud

Faked specimen
Faked specimen

It’s hard to know if the owner committed fraud unless it’s obvious from the documents at the Trademark Office. Faked “specimens” are the easiest fraud to find. Here are two hilarious examples of fakes from the Trademark Office.

If you can’t oppose the application and you can’t cancel the registration, you can try to make a deal. We’ll cover that in Part 3.


[1] (1) Trademark Act § 2(d), 15 U.S.C. § 1052(d): That defendant’s mark so resembles a mark registered in the Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods or services of the defendant, to cause confusion, or to cause mistake, or to deceive.

(2) Trademark Act § 2(e), 15 U.S.C. § 1052(e): For example, that defendant’s mark, when used on or in connection with the goods or services of the defendant, is merely descriptive or deceptively misdescriptive of them, or that defendant’s mark is primarily geographically descriptive or primarily geographically deceptively misdescriptive of them; or that defendant’s mark is primarily merely a surname; or that defendant’s mark comprises any matter that, as a whole, is functional.

(3) Trademark Act § 2(a),15 U.S.C. § 1052(a): For example, that defendant’s mark is geographically deceptive, that defendant’s mark falsely suggests a connection with plaintiff’s name or identity or that defendant’s mark is a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and was first used on or in connection with wines or spirits by the applicant on or after January 1, 1996.

(4) That there was no bona fide use of defendant’s mark in commerce prior to the filing of the use-based application for its registration under Trademark Act § 1(a), 15 U.S.C. § 1051(a), or for a Trademark Act § 1(b), 15 U.S.C. § 1051(b) application, within the expiration of the time for filing a statement of use.

(5) That defendant did not have a bona fide intent to use the mark in connection with the identified goods/services as of the filing date of the application under Trademark Act § 1(b), 15 U.S.C. § 1051(b). A plaintiff need not allege and prove that the defendant acted in bad faith and intended to deceive the USPTO. The requirements for pleading and proving a lack of a bona fide intent to use a mark do not equate to the requirements for pleading and proving fraud.

(6) That defendant’s mark is a mere background design that does not function as a mark separate and apart from the words displayed thereon.

(7) That defendant is not (and was not, at the time of the filing of its application for registration) the rightful owner of the registered mark.

(8) That defendant’s mark, consisting of a particular color combination applied to its goods, is ornamental and has not become distinctive as an indication of the source of defendant’s goods.

(9) That defendant’s mark, consisting of a particular sound applied to its goods, is not inherently distinctive and has not acquired distinctiveness.

(10) That defendant’s mark, consisting of trade dress, product design or packaging, is not inherently distinctive and has not acquired distinctiveness.

(11) That the term for which registration is sought or for which registration has been obtained has not been used as a trademark or service mark.

(12) That defendant’s mark represents multiple marks in a single application (or registration) (“phantom mark”).

(13) That defendant’s mark has been abandoned due to nonuse with intent not to resume use, and nonuse for three consecutive years shall be prima facie evidence of abandonment; or due to a course of conduct that has caused the mark to lose significance as an indication of source.

(14) That defendant’s mark consists of or comprises the name of a particular living individual without the individual’s consent. Trademark Act § 2(c), 15 U.S.C. § 1052(c).

(15) That defendant’s product design is generic.

(16) That defendant’s mark would dilute the distinctive quality of plaintiff’s famous mark.

(17) That defendant has used its mark so as to misrepresent the source of its goods or services.

(18) That defendant has misused the federal registration symbol with intent to deceive the purchasing public or others in the trade into believing that the mark is registered.

(19) That defendant committed fraud in the procurement of its registration or during the prosecution of its application for registration.

(20) That defendant’s registered mark interferes with the registration of a foreign owner’s mark under Article 8 of the General Inter-American Convention for Trademark and Commercial Protection of Washington, 1929 (“Pan American Convention”), 46 Stat. 2907.

(21) That defendant’s application is barred from registration by claim or issue preclusion.

(22) That defendant’s mark is the title of a single creative work and not considered a trademark.

(23) Trademark Act § 2(b), 15 U.S.C. § 1052(b): Registration of a mark which is “the flag or coat of arms or other insignia of the United States, or of any State or municipality” is prohibited.

(24) That defendant has not established a commercial presence in the country from which its underlying foreign registration issued where such foreign registration forms the basis of the U.S. registration or application for registration. Trademark Act § 44(e); 15 U.S.C. § 1126(e).

(25) That the intent-to-use application was assigned or transferred in contravention of Trademark Act § 10; 15 U.S.C. § 1060.

(26) That the mark is generis. A mark registered on the Supplemental Register is subject to cancellation on the basis that it is generic.

(27) That the mark is not in lawful use in commerce where the provision of the identified goods and/or services is unlawful under federal law.

[2] Check out Oppose, Cancel, or Make a Deal Part 1 to see how to figure this out

Oppose, Cancel, Make a Deal – Part 1 Oppositions

You’ve been selling GRINS brand candy bars. You think it’s about time to register GRINS as a trademark but, whoops, another company has already applied to register GRINS for candy.

Most of the time, your only choice is to completely rebrand but, sometimes, there’s a way forward.

I see getting a trademark registration like a game of chess. There are rules and pieces that can move certain ways. If the pieces are lined up the right way, I can move them to get what my client wants.

One of those tactics is called an “opposition.”

Here’s how the chess board has to look for an opposition to work:

Priority date and filing date

You were using GRINS before the other company’s “priority date”.

Date of first use
Publication date

You were also using GRINS before the other company’s “first use” of GRINS.

The other company’s application to register GRINS hasn’t been “published for opposition” yet or was published within the last 30 days.

If the application was published for opposition more than 30 days ago, you’ve lost the chance to oppose. If you still want to try for GRINS, you can wait until the trademark is registered and then try to cancel it.

We’ll cover cancellations in Part 2.

Gorilla Glue and Girl Scout Cookies

Weed is now legal in all but six states[i] in the U.S. It’s time for the industry to start behaving like grownups.

That includes respecting the trademark rights of other companies. Here are just a few of the registered trademarks owned by other companies that are being used as the name for strains of marijuana and/or THC or CBD products:

  • Gorilla Glue®
  • Girl Scout Cookies®
  • Thin Mints®
  • Candyland®
  • Tropicana®

“But, wait,” I hear you cry, “Isn’t it okay to name a cannabis strain GORILLA GLUE because no consumer would ever confuse a company that makes glue with a company that makes cannabis products?”

That’s true, but famous trademarks have broader rights. Someone can be infringing on a famous mark even if there’s no “likelihood of confusion.” The owner of the famous mark can sue on the basis of dilution[ii] by showing:

  • it owns a famous trademark;
  • the use by the other party started after the mark became famous; and
  • the use of the trademark;

I don’t see the Girl Scouts of America having any problem proving that: 1) THIN MINTS is famous, and 2) associating THIN MINTS with weed harms its reputation. In fact, Wrigley is already suing the user of “Zkittlez” as infringing on Wrigley’s famous mark SKITTLES. It’ll be interesting to see how this pans out.

Shout out to Michael O. who brought the Skittles lawsuit to my attention.

Featured image ©2014 Mike Mozart used under Creative Commons Attribution License 2.0. Image was cropped for size.


[i] It’s actually still illegal everywhere in the U.S. because of federal law but, as of May 2021, every state has decriminalized or legalized at least some uses of marijuana except: South Carolina, Georgia, Tennessee, Kansas, Wyoming and Idaho.

[ii] 15 U.S. Code § 1125(c).

The Great British Bake Off

Bringing a British television show to the U.S. can be complicated.

How complicated?

Really complicated.

Pillsbury owns two registrations that include BAKE-OFF for “arranging and conducting cooking and baking contests.” The earliest registration dates from 1972 and Pillsbury’s first use of the BAKE-OFF trademark was in 1950. In other words, Pillsbury has a deadlock on BAKE-OFF for baking contests.

In order to air the THE GREAT BRITISH BAKE OFF in the U.S., the show had to change its name to THE GREAT BRITISH BAKING SHOW. That wasn’t just a matter of changing the opening credits.

For episodes from earlier seasons, the show’s producers had to edit out mentions of the show’s name during introductions and when awarding prizes.

For later episodes, the hosts did separate takes, first calling the show THE GREAT BRITISH BAKE OFF (for airing in the U.K.) and then calling the show THE GREAT BRITISH BAKING SHOW (for the U.S. market).

But the crazy didn’t stop there. At the end of each contest, the winner is awarded a glass cake dish engraved with the name of the show. Footage showing winners holding the trophies had to be visually modified to make it appear that the cake stands say THE GREAT BRITISH BAKING SHOW.

At 2:28 of this video is an explanation of the visual artistry that went into making the change on the glass cake stand.

Doesn’t knowing this just flat out make your day?

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

Death Defying Trademarks II

I just found out that CLAYMATION® is a registered trademark. Originally registered in 1981 by one of the minor deities of animation, Will Vinton, the registrations are now owned by Laika, Inc. Until I learned this fact, I assumed that “claymation” was the generic word for stop-motion animation using clay.

What other film industry words are trademarks instead of the generic word for the thing?

STEADICAM® for hand-held camera stabilizers has been a registered trademark since 1976. Who knew? Not me until I looked it up.

In the past I wrote about other trademarks that manage to avoid genericide: PING PONG®, REALTOR®, and CROCKPOT®. Here are some others I found surprising.

MACE® is a trademark for personal security sprays and is owned by Mace Security International, Inc. While we’re on the subject of self-defense, you should also remember that TASER® is a registered trademark for “less lethal weapons” owned by Axon Enterprises, Inc. Use goes back to 1974 and first registered in 1983.

BUBBLE WRAP® was first used as a trademark by Sealed Air Corporation in 1968. The mark was first registered in 1971 and remains a registered mark. If packaging trademarks are your thing, then remember that STYROFOAM® was first registered by The Dow Chemical Company back in 1948.

Big shout out to Maggie F. for letting me know Claymation® is a registered trademark, which led to this post.

Photo ©2010 Daniel Schwen.  Used under Creative Commons Attribution-Share Alike 4.0 International license.