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.

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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]

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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.

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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?

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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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