Cupcakes and Squiggles

Can a decoration on a cupcake be a trademark?

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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.

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

 

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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?
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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.

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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.

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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.*

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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?

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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.

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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.

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

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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

Flags and National Symbols

Let me tell you about an arcane crevice of the law that covers flags and national symbols as trademarks.

Have I lost you already? Oh, c’mon. It’ll be fun. There are pictures. And a quiz at the end!

Great. Let’s go.

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You can NOT register a trademark that includes the flag of the United States, any state, or any foreign nation.[1]  So the stuff to the left are no-nos.

So far, so good.

Screen Shot 2019-06-10 at 2.50.26 PM.pngThe trademark to the right is OK, because you CAN register a flag if:

  • it’s substantially obscured by words or designs,
  • it’s used to form a letter, number, or design,
  • it’s not in a shape normally seen in flags,
  • it appears in a color different from the national flag, or
  • a significant feature is missing or changed.

You CAN register a trademark that contains a monument, statue, or building associated with a country. So, each of these is OK.

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Still with me?

There are more than 150 statutes that prohibit use of certain other stuff as a trademark, for example: Boy Scouts of America, CIA, F.B.I., Four-H Club, Give a Hoot Don’t Pollute, Little League, Woodsy Owl.[2]

To summarize:

  • You can NOT register a flag of the U.S., state, or foreign country;
  • You CAN register a trademark with a flag as long as it’s hidden or weird somehow;
  • You CAN register a non-flag national symbol;
  • You can NOT register national symbols if there’s a statute that says you can’t.

Quiz time! Which of these can be registered? Answers are below.[3]

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If you didn’t enjoy this, blame Julie W. She suggested I write about it.

 

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[1] 15 U.S.C. §1052 (b)

[2] There’s a non-exhaustive list of these statutes here: https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-Cd1e1.html

[3]  Here are the answers to the quiz.

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Sound and Smell Trademarks

When most people think of trademarks, they think of words like Coke® or logos like the Nike® swoosh but trademarks can be anything that tells you where a product or service came from, like the shape of a bottle or building, or a sound or smell.

We can track the rise of sound and smell trademarks because they are filed under “Mark Drawing Code 6” for “situations for which no drawing is possible.” The first application under Mark Drawing Code 6 was filed in 1947. Here’s how the trademark is described:

The mark comprises the musical notes G, E, C, played on chimes.

Can you figure out what this very familiar trademark is just from the description? If not, try singing or whistling it or you can just check out the answer below.

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There were only two applications for sound and smell trademarks filed in the 1940s.

There was a total of twenty filed from 1950 through 1989, then things really took off.

So far in the 2010s, there have been 308 applications filed for “situations for which no drawing is possible.”

You are immersed in these sounds all day. Can you identify these familiar sound marks? (Answers are below.)

 

How many could you guess? How many others can you think of?

 

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The musical notes played on chimes is the NBC trademark.

The other sound marks are:

  • An Apple® computer booting up.
  • The THX® sound system for theaters.
  • The Pillsbury® Doughboy® giggling.
  • The Tarzan yell.

Ribbons

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In 1982, Nancy Brinker established the Susan G. Komen Breast Cancer Foundation. In 1991, that organization began using a pink ribbon as a symbol of breast cancer awareness.

The Foundation didn’t register the pink ribbon as a trademark, but has registered this particular variation of the pink ribbon.

Would the generic pink ribbon have become as well-known a symbol for breast cancer awareness if the Foundation had registered it and restricted its use? Would the general idea of using a colored ribbon as a symbol for other causes have caught on?

Not registering the pink ribbon may have been the best decision the Foundation could have made if its goal was spreading its message and creating awareness. Sometimes leaving what could be intellectual property in the public domain or granting free and easy licenses to intellectual property can create awareness and a more widespread market. Adobe® was successful with that strategy when it made Acrobat® ubiquitous by giving away the reader.

I searched the U.S. Trademark Office database for ribbons used as trademarks for charitable causes and got 95 hits. That’s pretty cool.

The image at the top shows a sample of what I found. Can you match those trademarks with the causes listed below? The answers are at the bottom of this post.

  • Breast cancer (two of the logos are for this)
  • Pediatric cancer
  • Firefighters
  • Families of war veterans
  • Musculoskeletal diseases and disorders
  • Child abuse
  • Alzheimer’s and related diseases
  • Rare diseases
  • Obesity
  • Prostate cancer
  • Various charitable causes

 

Big shout out to Julie W. for the suggestion for this post.

 

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Here are the answers to the quiz.

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Trademark Graveyard Part II

Generonyms are words that were once trademarks but became the generic word for the product or service. When a trademark becomes a generic word, its life as a trademark ends. It is said to have committed genericide.

How many of these did you know were once trademarks?

  • zipper
  • aspirin
  • escalator
  • granola
  • yo-yo
  • linoleum
  • trampoline
  • monopoly
  • power bar
  • ace bandage
  • dumpster

Do you ever say “I googled it” or “Do you have a kleenex?” or “I like to rollerblade” or “Someone got magic marker on my sleeve”? If so, you’re contributing to the possible demise of these trademarks, whose owners work very hard to make sure that the words don’t become generonyms.

  • Popsicle
  • Realtor
  • Hi-Liter
  • Kleenex
  • Baggies
  • Xerox
  • Walkman
  • Plexiglas
  • Rollerblade
  • Sharpie
  • Google
  • Crock Pot
  • Rolodex
  • Magic Markers
  • Ping Pong
  • DayGlo
  • Freon
  • Sheetrock

There are also words that people think were once trademarks but never were. I have only two of these on my list. Can you think of any others?

  • Jordan almond
  • PDA

 

Photo modified for use in featured image is CC0 1.0 Public Domain Dedication. Thanks to the photographer, Christian Hart, for placing his photo in the public domain. Mr. Hart does not endorse this blog, this post, or the modified use of his photo.

 

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Acquired Distinctiveness

If your trademark is “merely descriptive,” the Trademark Office will reject your application to register it. You can’t register:*

  • Tears In a Bottle for eyedrops
  • Two Drawers On Wheels for a rolling file cabinet
  • Fresh Brewed & Hot for a coffee shop

But, if you start using that trademark, make sure other people don’t use it, and reach the point where consumers associate what was once just a descriptive word or phrase with you and only you, then you can get a trademark registration.

Trademark lawyers refer to that as “acquired distinctiveness.” Your trademark was “merely descriptive” but it “acquired distinctiveness” and now you can get the exclusive rights to use it.

That happened recently with CHUNKY for soup.

In 2013, CSC Brands LP (Campbells Soup Company) filed two applications to register trademarks that included CHUNKY and in both cases the Trademark Office examiner refused to grant CSC Brands exclusive rights to CHUNKY because it was “merely descriptive” of soup.

In 2018, CSC Brands tried again and were able to get a registration because they were able to show that CHUNKY, once merely descriptive, had acquired distinctiveness: People now associate that word with a particular company for soup and not just any soup that happened to be chunky.

I don’t usually recommend going with a “merely descriptive” trademark but it can sometimes work out.

 

 

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*This isn’t entirely true. Sometimes you can register the trademark on the “Supplemental Register” of the Trademark Office. You get to use the ® symbol and it sets you up to get a registration on the Principal Register later on.

Branding by [Pretending to Have] No Brand

You can never ever have trademark rights to the generic name for your product: You can’t have WASTE BASKET brand trashcans.

But what about using words that literally mean “generic” as a trademark?

Back in the early 1980s, a company began selling GENERIC brand products. The idea was that the products weren’t advertised so they would cost less than “brand-name” products, but of course there was a brand and the brand was GENERIC along with a UPC barcode for a logo.

Now there’s a brand called BRANDLESS.

Brandless, Inc. has a trademark registration for BRANDLESS for a metric assload of products from shampoo to paper towels to snack foods and online retail sales. Brandless, Inc. is also trying to register its logo which includes the “TM” symbol.

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The Trademark Office examining attorney is insisting that Brandless remove the “TM” from the logo.

Sharona Katan, Brandless, Inc.’s attorney makes very compelling arguments for including the “TM” as part of the trademark. “TM” is part of the joke. It’s the ironic juxtaposition of the TM and the word BRANDLESS that is recognized by consumers as being from this particular company.

Ms. Katan cites a dazzling array of circumstances when companies have included TM in their registered trademarks. Here are some of them:

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Unfortunately, the Trademark Office didn’t agree with Ms. Katan’s arguments. Brandless, Inc. elected to voluntarily remove the TM from the application which, from choose-your-battles point of view, probably makes a great deal of sense.

 

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