If only Amazon® had called itself “BooksOnline” I’m sure it would be the world’s biggest retailer by now, second only to Radio Shack.
That’s the gist of what people tell me all the time. They understandably believe a trademark that describes their product is awesome because then everyone will know what they’re selling.
I have a different way of looking at it.
An awesome trademark lets you move into new markets that might not even exist today. A non-descriptive trademark is an asset to be leveraged. A descriptive mark is a liability that makes you as nimble as Mosha, the three-legged elephant.
Radio Shack has always been my go-to-crappy-trademark. I’m not saying a different brand could have saved the company, but “Radio Shack” contributed to, and is evidence of, a company without a coherent vision. The laundry list of Radio Shack’s abandoned strategies is extraordinary in its length, breadth, and depth.
I could talk about how the legal rights of descriptive marks are weak, like trying to defend your castle with a cardboard sword. In a rainstorm. I could explain how customers won’t remember you well enough to distinguish you from your competitors (“I can’t quite remember. It was bakery-something”). I could tell you that the value your mark has today is all it will ever have, an almost-ran from the day it was stillborn.
But I don’t have to tell you those things. I can just ask you when you last shopped at Radio Shack.
Behold the Trademark King. On Thanksgiving week of 2014, Mr. Lehocky, president of Trademark King, filed about 150 applications to register some interesting trademarks:
- ELTON JOHN
- THE ROLLING STONES
Mr. Lehocky filed his applications based on use: He actually created a public record in which he swore under penalty of perjury that he had already infringed on some of the world’s most famous brands. Way to go Mr. Lehocky.
Mr. Lehocky also tried to claim exclusive rights to a bunch of public-domain phrases:
- BLACK FRIDAY EVENT
- TOP 10 LIST
- FACTORY INVOICE
Every application Mr. Lehocky filed that fateful week is walking steadily and surely to death: The examiner issues an office action explaining the many fatal problems with each application. Mr. Lehocky files something he imagines to be responsive. The examiner issues another office action, explaining how Mr. Lehocky’s “response” is not responsive. Mr. LeHocky “responds.” The examiner issues a final refusal.
In the next few weeks, we’ll see whether Mr. LeHocky appeals the final refusals. It’ll cost him another $100 per application. For the sake of the Trademark Trial and Appeal Board, we can only hope Mr. LeHocky will get some advice before deciding to waste more time and money on applications that were dead the day they were filed.
What did you do last Thanksgiving? I flushed $50,000 down the toilet.
What are you doing next Thanksgiving? Flushing another $15,000 after it.
The Tiffany mothership.
Let’s pretend your parents, Mr. and Mrs. Gold, made the same choice as 1% of all parents of girls born in the US in 1982: They named you Tiffany.
And now you design jewelry and want to sell it under your name: TIFFANY GOLD.
Just like Tiffany Blake and Tiffany Jazelle, each of whom applied to register her name as a trademark for her jewelry. Tiffany & Co., wisely and inevitably, opposed both of those applications.
Ms. Jazelle lost the opposition by default because she didn’t file an answer. Her application is dead. Ms. Blake’s opposition appears to have settled. She voluntarily abandoned trying to get a registration for her name for jewelry and handbags. She’s still hanging in there for women’s clothing.
So, if your name is Tiffany and you plan to sell jewelry, you should probably find a different brand. Is it fair that you can’t use the name your parents gave you to sell your stuff?
I’m going to ask you to stop worrying about what’s fair and make a business decision. Do you really want to spend the time and money fighting Tiffany & Co.?
I know it hurts and you feel like it’s a matter of principle. But you’re running a business, so I’m going to ask you, very kindly and gently, to get over it. Ms. Blake and Ms. Jazelle learned their lessons the hard way. Maybe you should learn that same lesson from their very expensive examples.