WTF P&G?

Procter and Gamble Company[1] has applied to register some interesting trademarks:

  • FOMO
  • TL;DR
  • NSFW
  • FTW
  • FML
  • WTF
  • LOL
  • NBD

Does that mean people can’t use those acronyms anymore?

Common sense tells you it doesn’t mean that.

First, trademark applications and registrations are for particular goods and/or services: Beeline® is a registered trademark for legal services. The P&G applications cover things like soaps, detergents, air fresheners, and fabric softeners.

If P&G has a trademark registration for WTF for detergents it means only that you wouldn’t be allowed to use WTF as a trademark to sell detergent and similar products:

  • You can still say WTF;
  • You can still use WTF in advertising and on packaging for dissimilar products;
  • You can still write an email to your friend saying “WTF is wrong with you? You know I use only Woolite® to wash my sweaters. You ruined my twin set.”

It’s also worth noting that P&G hasn’t received these registrations yet. So far, P&G has only applied. The applications are all based on “intent-to-use.” That means that P&G still has to use each of the acronyms in connection with the goods before they can complete the registrations.  In other words, the existence of the applications means only that P&G was willing to pay to create placeholders because it intends to use each of the acronyms to sell stuff. Sometimes, companies don’t follow through on their intentions.

So, DWAI. IMHO P&G’s applications are NP and worrying about this is a CWOT.

 

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[1] As of August 2018, Procter and Gamble Company owns 1,498 live trademark registrations. Amusingly there are also some live registrations where “Procter” is misspelled as “Proctor.” Not sure what to make of that.

What Are All Those Symbols ®©™?

We see them all the time, everywhere we go. But what do all those symbols mean?

Trademark Symbols[1]

® – The “R in a circle” stands for “registered trademark.” A person or company using this symbol has trademark rights that are registered with either the United States Trademark Office or a trademark office of another country or jurisdiction (like the European Union).

™ – This stands for “trademark.” It means the person or company has trademark rights that may or may not be registered.

SM  – This stands for “servicemark”. It’s basically the same as ™ but for services instead of products.

Copyright Symbol[2]

© – This is the copyright symbol. It means that the person or company is claiming copyright. This symbol is used whether or not the copyright is registered.

Should I Be Using Them?

Yeah, you really should.

You should use the copyright symbol on all copies of copyrighted works. Here’s how I use it:

2019 © Berdinis Law P.C.

cropped-bee-only1You should use a trademark symbol on all your trademarks. If you have an UN-registered trademark, you should use the ™ (or SM). If you have a registered trademark, you should use ®.

SuperDry copy 2

Some companies, like SuperDry® really go all out in featuring the symbol.

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Lately, some companies don’t include the symbol because they feel it interferes with the look and lines of their mark. When you’re as famous as Google®, you’re welcome to lose the ®.

That wasn’t so bad, was it?

 

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[1] A trademark is a word, short phrase, design, etc. used to let people know the source of goods or services. Nike® is a trademark for athletic shoes. Google® is a servicemark for internet search services. A trademark can be one word, a few words or (rarely) lots of words. It can be a design, alone or with words. It can also be a sound or a smell or anything else that identifies a source of goods or services.

Trademark rights allow you to stop other people from using your trademark or a trademark that’s “confusingly similar” to your trademark.

[2] Copyright protects “original works of authorship”. This includes literary, dramatic, musical, and artistic works. The 1976 Copyright Act gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly.

So Much Crazy, It’s Crazy

How much ridiculousness gets filed at the U.S. Trademark Office?

More than you can fathom. Here’s the hilariously crazy stuff I found just by looking at applications to register NIKE.

Luhua Zhao[1] tried to register NIKE for this bizarre combination of goods:

Agricultural machinery; Aquarium pumps; Cheese making machines[2] Clothes washing machines; Cutting machines; can openers; drills; generators; glue guns; Electric hammers; hand-held drills; Electric screwdrivers; vacuum cleaners.

NIKE vacuum cleaner

In support of his application, he literally wrote “Nike” on a piece of paper and taped it to a vacuum cleaner.

NIKE vacuum cleaner copy.png

Rodney Hamilton submitted two applications to register WWW.NIKE.COM and NIKE.COM for marketing services. Maybe Doug Lehocky got his idea to throw away $50,000 in trademark office fees from Mr. Hamilton, because the specimens are almost as convincing as what Mr. Lehocky used. Check out these totally legit business cards:

Online marketing services copy.pngScreen Shot 2018-06-15 at 12.51.57 PM.png

When faced with failure, Nike Securities, L.P. believes in doubling down. Here’s the timeline for their clever strategy for beating Nike, Inc. in the trademark game:

  • 1991. Nike Securities applies to register NIKE for financial services.
  • 1992. Nike, Inc. opposes the application.
  • 1996. While the opposition to their first application is still going on, Nike Securities files three more applications to register a logo with NIKE SECURITIES L.P.[3]
  • 1998. Still unbowed, Nike Securities then filed an application to register NY-KEE.

Not content to rest on the mere foolishness of trying to register NIKE, Mr. Zhao, Mr. Hamilton, and Nike Securities set a new low for their innovative specimens, whacked-out goods descriptions, and weird strategies.

 

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[1] Eight years earlier, the same dude also tried to register IHOP for “jacket, pants, sweaters, suit, hat, cap, shirt, T-shirt, casual wears, socks, sport shoes, hiking shoes.”

[2] What the hell is a cheese-making machine?

[3] All three are for identical logos but each is for a slightly different type of financial services. Why waste $300 when you can just as easily waste $900?

Duct Tape

Because I was first introduced to duct tape while sealing ducts in the attic of my childhood home, I never misheard the name of this do-it-all wonder as “duck tape” the way many people do.[1]

Even so, I was surprised to learn that DUCK was a registered trademark for duct tape.

Surtech Brands, LLC owns these live registrations:[2]

  • DUCK BRAND with and without design for duct tape.
  • DUCK with and without design for duct tape and related goods.

I don’t understood how this stands up as a trademark.

When I say “duct tape” it sounds exactly like “duck tape” unless I’m obsessive about creating two alveolar consonants with a slight pause between them: Making the “t” sound twice to create a break between the words.

The Trademark Manual of Examining Procedure says[3] that a “slight misspelling of a word will not turn a . . . generic word into” a trademark:

  • PERSON2PERSON PAYMENT is generic for direct electronic funds transfers
  • URBANHOUZING is the equivalent of URBAN HOUSING
  • MINERAL LYX is generic for mineral licks for feeding livestock

Screen Shot 2018-07-31 at 2.21.01 PM.png

The only argument I could make is that the marks don’t include the word TAPE, and DUCK, standing alone, might be sufficiently distinguishable from DUCT.

If that’s the argument Surtech’s depending on, it’s not that strong and someone might want to tell Surtech’s webmaster.

 

 

Many thanks to Max F. for suggesting this topic and for introducing me to KAPTON® tape, which is the duct tape of aerospace engineers.

Thanks also to Liz B. for help with the phonetic terms.

 

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[1] There’s actually no evidence that soldiers in WWII started using “duck tape” to refer a waterproof tape used to seal ammunition boxes. There was a product called “duck tape” well before WWII that was just non-adhesive strips of cotton duck, which is a light canvas fabric.

[2] The use of DUCK as a trademark for duct tape starts with Manco Tape, Inc., winds its way through a bunch of companies with “Henkel” in its name and finally ends up with Surtech Brands. Early registrations containing DUCK were transferred through some or all of these companies.

[3] A slight misspelling of a word will not turn a descriptive or generic word into a non-descriptive mark. See In re Calphalon Corp., 122 USPQ2d 1153, 1164 (TTAB 2017) (holding SHARPIN, the phonetic equivalent of “sharpen,” merely descriptive of knife blocks with built-in sharpeners); In re ING Direct Bancorp, 100 USPQ2d 1681, 1690 (TTAB 2011) (holding PERSON2PERSON PAYMENT generic for direct electronic funds transfers including electronic payment services between individuals); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (holding URBANHOUZING, in standard character form, would be perceived by consumers as the equivalent of the descriptive term URBAN HOUSING, rather than as including the separate word ZING); In re Ginc UK Ltd., 90 USPQ2d 1472, 1475 (TTAB 2007) (“The generic meaning of “togs” not overcome by the misspelling of the term as TOGGS. . .”); In re Hubbard Milling Co., 6 USPQ2d 1239 (TTAB 1987) (holding MINERAL-LYX generic for mineral licks for feeding livestock); C-Thru Ruler Co. v. Needleman, 190 USPQ 93 (E.D. Pa. 1976) (holding C-THRU to be the equivalent of “see-through” and, therefore, merely descriptive of transparent rulers and drafting aids). Trademark Manual of Examining Procedure Section 1209.03(j) Phonetic Equivalent.

Women March . . . And Also Oppose

What do you call it when a group of women get together to protest and advocate? A women’s march?

That’s the big question before the Trademark Trial and Appeal Board.

After the 2016 presidential election in the United States, women began organizing protests. Two of those groups filed to register the trademark WOMEN’S MARCH:

  • Women’s March, Inc. in Brooklyn (WMI) filed first in March 2017.[1]
  • Women’s March Los Angeles Foundation filed two applications in April 2018.[2]

The Trademark Office examiner approved the WMI applications. After an application is approved by the Trademark Office, it’s “published for opposition.” That means anyone who thinks the trademark shouldn’t be registered can oppose the application.

And oppose they did. Fourteen different organizations expressed an interest in opposing the WMI applications.[3] Of those, four actually opposed:

  • We March On Chicago
  • March On
  • Women’s March Alliance
  • Women’s March Los Angeles Foundation

The oppositions all say the same thing: Lots of people started using this phrase right after the election so it doesn’t refer to one specific group. Here’s how you say that in legalese:

  • WOMEN’S MARCH is “merely descriptive.”
  • It fails to function as a trademark.
  • It was independently adopted by numerous grassroots organizers so it’s incapable of distinguishing one group from another.

What do you think? Before you read this, did you think there was only one organization using WOMEN’S MARCH? Now that you know there are a bunch of different groups, do you think just one of them should be allowed to prevent the others from using that phrase?

 

 

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[1] Both WMI applications were filed on March 1, 2017. The first one is for WOMEN’S MARCH based on use dating back to November 2016. The second one is for WM WOMEN’S MARCH and is based on intent-to-use. Both include these goods and services:

“T-shirts; shirts; sweatshirts; hoodies; one-piece infant wear.”

“Promoting public awareness of the need for protecting women’s social, economic and political rights; promoting public awareness of the need for racial equality, LGBTQ rights, economic and reproductive rights; public advocacy to promote awareness of the need for protecting women’s social, economic and political rights; lobbying services, namely, promoting the interests of women in the fields of legislation and regulation concerning reproductive rights, equal pay, paid family leave, and to the end of violence against women.”

[2]WMLA filed its applications on April 12, 2018 and both were based on use dating back to November 2016. Both of the WMLA applications are on hold until the WMI applications either go away or reach registration.

The first WMLA application is for: “Educational services, namely, conducting conferences and workshops in the field of civic engagement and community initiatives; Providing a website featuring non-downloadable publications in the nature of photos in the field of community cultural events; Providing information regarding current and cultural events via a website; Organizing community cultural events; Providing information and news regarding community outreach services.”

The second WMLA application is for: “Providing a website featuring information about social justice, human rights, and political issues; Providing information regarding political issues, knowing how to vote, and knowing how to register to vote; Promoting public awareness of the uniqueness and diversity of humanity through a national annual day event; Promoting public awareness of LGBTQIA rights; Promoting public awareness of police brutality, gender and racial inequities within the criminal justice system; Public advocacy to promote awareness of gender, racial, social, and economic justice; Public advocacy to promote awareness of the need to protect women’s social, economic and political rights; Online retail store services in the field of clothing, books, and buttons; Retail store services in the field of clothing, books, and buttons.”

[3] Women’s March DC; March Forward Massachusetts Educational Fund; Women’s March Alliance; Women’s March Los Angeles Foundation; Women’s March SLO; Women’s March Contra Costa, Inc.; March On; Santa Cruz Women’s March; March On Arkansas; We March On Chicago NFP dba Women’s March Chicago NFP; March On Hudson Valley; March on Maryland, Inc.; Women’s March San Diego, Inc.; and Women’s March Colorado.

A Novel Way to Waste Money

You can’t ever get trademark rights in the generic word for what you’re selling:  No DŌ brand cookie dough.

But what if you really want a registration? Can you just register the trademark for some other product? Can you Register DESK for window screens even though you’re selling desks, just so you have a registration?

Front of box.pngSounds ridiculous, right? But that didn’t stop Jacquelyn De Jesu from registering SHHHOWER CAP for “textile fabric for use as a textile in the manufacture of a noise reducing headpiece.”

Check out the packaging for her product. Is this a “noise reducing headpiece” or a shower cap? I count three times that the product is called a shower cap and only one reference to the fact that it’s less noisy that a traditional shower cap.Back of box.png

There are at lots of reasons not to follow Ms. De Jesu’s example. Let’s just consider two.

It’s a complete waste of time and money.

If she ever decides to go after someone for using the words “shower cap” to sell a shower cap that person will point out that he isn’t selling a “noise reducing headpiece” and go right on using “shower cap.”

Screen Shot 2018-05-24 at 4.35.29 PM.png

Loss of Opportunity

Ms. De Jesu wasted an opportunity to establish a brand. If these “noise reducing headpieces” catch on and she decides to sell bathmats, what’s she gonna do, sell SHHHOWER CAP brand bathmats?

So, yeah, you can get the registration and maybe trick a few people into thinking you have rights, but the only person you’re cheating is yourself.

 

 

 

 

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FUCT, Reprise

This is a special edition of the Bee Blog to convey some breaking news.

There’s a statute that says which trademarks can’t be registered. Here’s what part of it says:

“No trademark . . .  shall be refused registration . . . unless it— . . . [c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage . . .  persons . . .”

Back in 2017, the United States Supreme Court ruled that it was unconstitutional to refuse to register a trademark because it’s disparaging. Because of that ruling Simon Tam was allowed to register THE SLANTS for an Asian rock band.46051501_01

The U.S. Court of Appeals for the Federal Circuit recently used the Tam decision to support it’s ruling that it’s also unconstitutional to refuse to register a trademark because it’s immoral or scandalous. That a victory for Erik Brunetti and his trademark FUCT.

That means lots and lots of applications to register will be moving forward. The Queen Bee will definitely be following their progress.

 

 

You Aren’t Clever Enough to Get Our Trademark

Radios were once all the rage. Shacks were once a cool place to shop, but in the 21st century no one wants to shop at RADIO SHACK®.

Meet the “Radio Shack Problem“: A descriptive trademark that holds you back when markets and social trends move on.

Dress barn.jpg

This ad campaign by DRESS BARN® attempted to overcome a self-inflicted marketing wound by claiming that it’s really the customers who are too dense to get it.

OVERSTOCK.COM® is spending tons on advertising to convince customers that the word “overstock” in their name is just a great big misunderstanding and customers certainly shouldn’t think of them as an “overstock” company.

Rice Krispies

2-pound Rice Krispie Treat®

A recent trip to my local IT’SUGAR® showed they’re on track to become a Radio Shack Problem. IT’SUGAR sells candy bars the size of coffee tables. They also sell tchotchkes that aren’t made of sugar. Pretty soon they’ll be running ads to let everyone know they sell both edible and non-edible chazerei.

Non-sugar Chazerai

Tchotchkes

Don’t be a Radio Shack Problem. Pick a trademark that’s suggestive so it will stand the test of time: NEST®, ROOMBA®, APPLE®, GOOGLE®, AMAZON®. Those brands will go anywhere, anytime and do anything you need them to do.

The owners of those trademarks never have to berate customers for not understanding their brand because those companies didn’t mislead their customers in the first place.

 

Thanks to Liz B. and Max F. for sending stuff that suggested this post.

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Trademark’s Cousin: Copyright

Trademarks are my passion, but when cool stuff happens in copyright, I just have to write about it. [1]

What Happened?

Robert Davidson is the creator of the Lady Liberty statue at the New York-New York Hotel & Casino in Las Vegas.

In 2010 the United States Postal Service inadvertently selected a photograph of Davidson’s statue to use on its Forever® stamp. The Postal Service thought it was a picture of the actual Statue of Liberty.[2]

Davidson sued the Postal Service for infringing his copyright.

Everyone agreed that the image on the postage stamp was of Davidson’s statue but the Postal Service argued its use wasn’t infringing because:

  • Davidson’s statue isn’t entitled to copyright protection; and
  • The Postal Service’s use was “fair use” under the Copyright Act. [3]

The Statue is Entitled to Copyright Protection

The Copyright Act protects sculptural work derived from another work as long as its original and contains “nontrivial expressive variation.” [4] Davidson testified at length about how he had given the statue’s face a fresh look, modeling it on his mother-in-law.

The court found that the Postal Service used the image of Davidson’s statute specifically because of the differences Davidson made to the statue’s face.

The Postal Service’s Use is Not Fair Use

The Postal Service’s “use of the image on its . . . workhorse stamp, printing billions of copies and selling them to the public as part of a business enterprise . . . so overwhelmingly favors a finding of infringement that no fair use can be found.”[5]

This little mistake cost the Postal Service $3,554,946.95 + interest + legal fees.

Bottom line: Using someone else’s intellectual property is a really big no-no.

 

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[1] Trademark rights protect your brand. Copyright protects original works of authorship.

[2] Judge Eric G. Bruggink of the U.S. Court of Federal Claims described the selection process like this: Terry McCaffrey, the manager of stamp development at the time, “initially narrowed his selection to . . . three images . . ., one of which was of plaintiff’s statue, a photograph of the [statue’s] face taken by Raimund Linke. Mr. McCaffrey . . . did the subsequent culling by himself over the course of a single afternoon. He then . . . obtain[ed] digital image files that he could work with to make his final selection. The photograph of plaintiff’s sculpture came from Getty Images (“Getty”). Mr. McCaffrey did not realize that it was not of the New York statue. The other two pictures, from other vendors, were of the original statue.” Opinion of the U.S. Court of Federal Claim, Case No. 13-942C at page 10 (July 29, 2018).

[3] 17 USC §107. Here’s a great way to understand “fair use”: Everyone always thinks their use is fair use but it almost never is. Literally, not once has it been fair use when one of my clients has used copyrighted materials thinking it was “fair use.”

[4] 17 USC §102(a)(5). Shrock v. Learning Curve Int’l, Inc., 586 F.3d 513, 521 (7th Cir. 2009).

[5] Here are the reasons the court gave for finding that the Postal Service’s use was not “fair use.”

  • The “purpose and character” of the Post Office’s use was commercial.
  • The “nature” of the copyrighted work as a “replica” favors neither party.
  • The “portion used” was only the face of the entire statue but that was the part that was most original.
  • The “effect of the use” did not result in any revenue lost to Mr. Davidson because there was no ready market for images of the statue’s face. For the Post Office.

Opinion at pages 21-24.

 

Featured image By user: Flicka [GFDL or CC BY-SA 3.0 ], from Wikimedia Commons

Battle of the Bottles

There are hundreds of registered trademarks for bottle shapes, but using a bottle shape as a trademark is subject to all the same issues as word trademarks: If other companies are using something the same or similar, then it’s not a trademark because it can’t serve to identify a single source of goods.

For example, these bottle design trademarks are distinctive:

Screen Shot 2018-06-05 at 12.05.24 PM.pngScreen Shot 2018-06-05 at 12.03.08 PM.pngScreen Shot 2018-06-05 at 12.04.11 PM.png

Drawing for bottlw

S’well’s bottle.

Contrast those distinctive designs with the registered bottle design of Can’t Live Without It, LLC, dba S’well Bottle, which is more pedestrian.

S’well has had some success enforcing its bottle-design trademark rights, but it recently lost a case. Here’s what went down.

S’well sued ETS Express, Inc. for infringing S’well’s bottle design. The jury found that ETS was not liable on any of S’well’s claims. It’s likely that ETS submitted evidence that it was able to purchase “S’well-like bottles from various stores and websites . . .”* which helped the jury conclude that S’well’s design is not distinctive enough to serve as a trademark.

In May 2017, ETS filed to have S’well’s registration for the bottle design cancelled. Now that the lawsuit is over, the cancellation proceeding can move forward. I’ll keep an eye on it and let you know how it turns out.

MVIMG_20180601_203923

Not S’well’s bottle.

The moral of the story: If you want people to know you by your trade dress, pick something that really sets you apart. For long-time readers, you’ll no doubt recognize this as the same advice as I give for word marks and logos.

 

 

Thanks, Cody B. for another great sighting and for letting me use his photo!

 

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*I’m quoting an Opinion and Order of District Judge Rakoff from January 2018, in which Judge Rakoff granted ETS’s motion for summary judgment on some of the claims brought by S’well and denied the motion for summary judgment on other claims.

Judge Rakoff denied ETS’s motion for summary judgment in connection with claims that would have required him to conclude that the shape of S’well’s bottle is generic. Those claims were then argued in front of a jury as part of the trial. I’m assuming that ETS submitted evidence at trial that was similar to the evidence ETS submitted in support of its motion for summary judgment.