Decades Spent Running in Place

A while back I wrote about a relatively new company that sells raw cookie dough using the brand DŌ. I said that DŌ will never have viable rights to its brand because DŌ (however it’s spelled) is just the generic word for its product.

“But surely,” I hear you say, “Decades from now DŌ will have rights.”

‘Fraid not.

Vitamin Shoppe Procurement Services, Inc. and its predecessor have been using THE VITAMIN SHOPPE as a brand since 1982. At one point, it even managed to get some trademark registrations.*

In February 2016, it filed four new applications to register THE VITAMIN SHOPPE together with its new stylized V design and new font.

The examiner at the Trademark Office says Vitamin Shoppe “must disclaim the wording ‘THE VITAMIN SHOPPE’ because it is a generic designation for applicant’s goods and services and is thus an unregistrable component of the mark.”

That means that the Trademark Office won’t give Vitamin Shoppe the exclusive right to the words THE VITAMIN SHOPPE even after more than 35 years of continuous use.

It makes sense. No one should have the exclusive right to the word “shop” (however it’s spelled) for retail services and no one should have the exclusive right to the word “vitamin” for vitamins.

After 35 years, THE VITAMIN SHOPPE is still barely defensible. An asset that could have acquired significant value during that time has instead languished all because of one bad decision.

 

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*Below is a list of the earlier registrations. The ones from 2001-2003 include “disclaimers,” meaning that the owner isn’t claiming to have exclusive rights to the disclaimed word or words. The two registrations from 2006-2007 don’t have disclaimers. I disagree with the trademark examiner who reviewed those two registrations. You can’t overcome “genericness” with acquired distinctiveness. As the examiner of the recent applications says: “[N]o amount of purported proof that a generic term has acquired secondary meaning can transform that term into a registrable trademark or service mark.”

Words Products & Services Disclaimer Reg. Year
THE VITAMIN SHOPPE SINCE 1977 vitamins

 

(Applicant claimed “acquired distinctiveness”.) 2007
THE VITAMIN SHOPPE SINCE 1977 retail store services (Applicant claimed “acquired distinctiveness.”) 2006
THE VITAMIN SHOPPE SINCE 1977 retail store services No claim is made to the exclusive right to use “vitamin” apart from the mark as shown. 2003
THE VITAMIN SHOPPE SINCE 1977 vitamins No claim is made to the exclusive right to use “vitamin” and “since 1977” apart from the mark as shown. 2003
THE VITAMIN SHOPPE retail store services No claim is made to the exclusive right to use “vitamin” apart from the mark as shown. 2001
THE VITAMIN SHOPPE vitamins No claim is made to the exclusive right to use “vitamin” apart from the mark as shown. 2001

 

 

One Trademark, Two Owners

Since trademarks exist to tell consumers the source of goods, how can it be OK for two companies to use the same trademark?

Sometimes, using the same mark is NOT likely to lead to confusion:

  • Consumers are unlikely to be confused if the companies are in different fields. No one thinks DOVE® soap and DOVE® chocolate come from the same company.
  • Companies can also share a trademark geographically if they’re purely local. Tony’s Cleaners in Concord, NH is probably not the same as Tony’s Cleaners in Seattle, WA.

But what if two companies use:

  • the same trademark
  • for the same stuff
  • in the same market?

We recently saw an example of this: co-ownership of the trademark SUPER HERO by Marvel and DC Comics.

Another example is SWISS ARMY, which was used for decades by both Victorinox AG and Wegner, S.A.[1] That co-use was allowed because of some very specific circumstances:

Consumer confusion was not an issue because the quality was identical.

Wegner and Victorinox both made products to the specifications of the Swiss Army, so both products were of the same quality.

Consumers can know the source through other indicia. [2]

Victorinox pocketknives were sold as THE ORIGINAL SWISS ARMY KNIFE and Wegner’s were sold as THE GENUINE SWISS ARMY KNIFE. Each also used different versions of the Swiss cross on the knives:

Victorinox blow up.png Wenger blow up.png

If you think this is an extremely rare set of circumstances, you’re right. The rule that two companies can’t use the same trademark holds true, but there are occasional exceptions.

 

 

Big shout out to Bill, for suggesting this topic! What do you want to know about?

 

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[1] In 2005 Victorinox acquired Wegner, so the issue is no more.

[2] We saw this with SUPER HERO, too. Both Marvel and DC tended to use their “house brands” together with SUPER HERO.