It’s Harder Than You Think

Beeline®_fullcolor_h Buzzfeed.jpeg“I already checked the Trademark Office and it’s OK for me to use FELINE as a trademark for legal services.”

Sigh.

Figuring out whether your trademark is available isn’t easy.

Suppose you want to use WAISTED TALENT as a trademark for weight loss services. You go to the Trademark Office website and search for WAISTED and TALENT.

  • False Negative: You find nothing but your search missed the registration for WASTED TALENT for weight loss services, a complete bar to your application and use of WAISTED TALENT.
  • False Positive:: Your search found a registration for WAISTED TALENT for spark plugs so you decide to think up another trademark. Actually,  you’d probably be fine.

“The domain name is available, so I’m good to go.”

Double sigh.

The availability of the domain name (or the name for a legal entity) doesn’t mean anything.

  • False Negative: The domain name waistedtalent.com may be available, but you’re still going to have trouble with WASTED TALENT weight-loss services.
  • False Positive: The entity name Waisted Talent, Inc. is being used by that spark plug company but you’re still probably fine.

The spelling of a trademark also doesn’t matter. The former mayor of New York City can’t use his name to sell soda because some people pronounce KOCH as COKE.

There are no easy answers when it comes to trademark availability. It takes me up to three hours to check for availability. It you did it in 10 minutes, you probably don’t have the full answer.

 

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Smell the Play-Doh®

Hasbro® recently received a registration for “a scent of a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough.”

Yup, the smell of Play-Doh® is now a registered trademark. It wasn’t easy, but Hasbro did it. Here are two of the hurdles Hasbro faced and met:

Prove the Scent Doesn’t Come From Anything Functional

You can register a scent (or other non-traditional) trademark only if it’s non-functional: You can’t register the scent of a perfume because the scent is the product.

Hasbro had to prove that the ingredients that cause the scent didn’t help Play-Doh remain hydrated or improve its texture or pliability. Hasbro had to send in a sample of Play-Doh without the added scent so the examiner could compare Play-Doh’s natural scent and other characteristics to the scented product.

Prove the Scent Is Recognized By Consumers As Play-Doh

Play-Doh Bee.png

Play-Doh is great for modeling your logo.

The examiner also made Hasbro prove that consumers recognize the scent as being particular to Play-Doh. Hasbro responded with facts, figures, and hundreds of pages of evidence about the distinctiveness and recognizability of the scent, including quotes from Fortune magazine, ABC News and the New York Times. Hasbro also submitted evidence of its “Stop and Smell the Play-Doh” ad campaign.

The impressive list of questions Hasbro had to answer and requests Hasbro had to fulfill is below.

It’s totally cool that Hasbro got this registration. It deserves it.

 

 

Big shout out to Eric B. for the idea for this post!

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Here is a list of the questions that the Trademark Office examiner required Hasbro to answer:

(1)        A written statement as to whether the applied-for mark, or any feature(s) thereof, is or has been the subject of a design or utility patent or patent application, including expired patents and abandoned patent applications.  Applicant must also provide copies of the patent and/or patent application documentation.

(2)        Advertising, promotional, and/or materials concerning the applied-for mark, specifically promoting or referencing the applied-for scent in the applied-for mark.

(3)        A written explanation and evidence as to whether there are alternative compositions available for the ingredients in the scent in the applied-for mark, and whether such alternative compositions are equally efficient and/or competitive.  Applicant must also provide a written explanation and documentation concerning similar scents used by competitors.

(4)        A written explanation as to whether the ingredients in the applied-for scent are naturally occurring in the modeling compound or whether applicant has added these ingredients to its product.

(5)        If applicant has added this scent, applicant should describe or submit a sample of what the product smells like without this additive.

(6)        A written explanation as to whether there are any functional advantages to the ingredients in the applied-for scent over other scents.

(7)        A written explanation as to whether the ingredients in scent allows applicant’s modeling compound to remain hydrated longer.

(8)        A written explanation as to whether the ingredients in applicant’s scent allows the modeling compound to be more easily dyed or better hold its color.

(9)        A written explanation as to whether the texture of applicant’s modeling compound is effected by the ingredients in the applied-for scent.

(10)      A written explanation as to whether the pliability of applicant’s modeling compound is effected by the ingredients in the applied-for scent.

(11)      If the applied-for scent allows the modeling compound to remain hydrated longer, be more easily dyed, hold its color better, provides a more consistent texture, affects the pliability of the goods or provides any other benefit to the goods, then applicant must provide a written explanation as to whether another scent would be as effective as the applied-for scent.

(12)      A written explanation as to whether the applied-for scent has any advantage over other scents in applicant’s field.

(13)      A written explanation as to whether applicant is aware of any competitors using a scent in toy modeling compounds.

(14)      A written explanation as to whether the applied-for scent is the result of the use of wheat or winter wheat in the applied-for goods.

(15)      A written explanation as to whether the applied-for goods come in various colors.  If they do, do all the colors have the same scent or do particular colors have specific scents? If the applied-for goods are sold in white, does it also have the same scent?

Trademark Searches Done Right

“Can I use this trademark? I already did a search and didn’t find anything.”

I hear this all the time. My answer is more questions. Did you search for:

You can’t know if a trademark is safe until you’ve done all those searches.

Let’s look at an example of a search done properly.

Pretend you want to use SEIZE THE DULCE for a candy store.[3]  You’d probably search for SEIZE and DULCE together as part of a trademark, like this:

Screen Shot 2018-07-10 at 12.28.15 PM.png

No hits. Good to go?

Not so fast!

To do a proper search, you also have to search for: homophones of SEIZE, truncated form of DULC_; and translations of DULCE:

Screen Shot 2018-07-10 at 12.28.29 PM.png

That’s a lot of hits. You can review them all or narrow the search using descriptive words for your goods and similar goods:

Screen Shot 2018-07-10 at 12.29.03 PM.png

That let’s you find the rather famous SEE’S CANDIES®.

Now you have to apply the du Pont factors and other trademark law principles. Based on my experience, I’d conclude that SEE’S CANDIES is very likely to bar your using or registering SEIZE THE DULCE because SEE’S CANDIES is a famous trademark entitled to very broad protection.

I’d report that to you like this:Screen Shot 2018-07-10 at 12.20.31 PM.png

Now that’s a trademark search done right. It’s a bummer to have to pick a different trademark but not bad as getting a cease and desist letter from the owner of SEE’S CANDIES a year after your launch.

 

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[1] “Truncate” is cutting off the endings of words to get down to the root: If you truncate “frame” you get “fram”. That lets you catch “frame” “framed” “framing” “framer” “frames” and “framers”.

[2] Homophones are words that sound the same, but have different meanings and spellings, like NEW, KNEW, NU, and GNU.

[3] It should really be SEIZE THE DULCI but that ruins the already awful pun.

[4] An asterisk is a wild card in some trademark database searches.

[5] A dollar sign is a different kind of wild card in some trademark database searches.