Big Ass Trademarks

Delta T is clearly the BIG ASS® trademark leader: It owns twelve trademark registrations* including ones for BIG ASS, most of them for fans and lighting.

Plenty of BIG ASS corpses litter the Trademark Office database. Between May 2016 and December 2017, nine applications died because of the registrations owned by Delta T. Those applications were for a huge variety of goods, most of them having nothing to do with fans and lighting. Here’s the info on those dead applications:

Trademark Goods What happened Date of Death
Big Ass Pizza Clothing Trademark Office refused to register because of Delta T’s registrations. December 2017
Big Ass Bulbs Light bulbs Trademark Office refused to register because of Delta T’s registrations. November 2017
Big Ass Bowl Bowls Delta T opposed the application. Applicant abandoned. July 2017
Big Ass Candles Candles Trademark Office refused to register because of Delta T’s registrations. May 2017
Big Ass Floors Retail store services Applicant abandoned the application before it was ever reviewed. November 2016
Big Ass Bar Soap Soap Delta T opposed the application. Applicant abandoned. December 2016
Big Ass Flask Flasks Trademark Office refused to register because of Delta T’s registrations. October 2016
Big Ass Air Freshener Air freshener dispenser Delta T opposed the application. Applicant lost because he never responded. October 2016
Big Ass LEDs Electronic signs Delta T opposed the application. Applicant abandoned. May 2016

What are the lessons here?

  • You don’t necessarily have to be selling the same or similar stuff to be considered “confusingly similar” to another trademark. It depends on the strength of the other trademark.
  • Delta T’s ability to fight off new applicants is enhanced by the rareness of its mark. Delta T would NOT be having as much success with its oppositions if it had stuck with HVLS Fan Co., its original name.
  • Delta T is committed to protecting its mark and is willing to spend the time and money to fight when necessary.
  • It’s rarely a good idea to go up against a company that’s as committed as Delta T to fighting for its trademark rights.

All excellent lessons.

 

Big shout out to Irv L. for the suggestion that led to this post. Photos courtesy of and © Big Ass Fans.

*Twelve registrations as of August 2018. Several of the registrations are for HAIKU®, the fan in the featured photo for this post and another great trademark. Delta T also has trademark rights in the yellow on the ends of the blades of their industrial fans. This is a company that really understands branding and trademark law.

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Aloha Is a Toothpick

Aloha Poke Holdings, LLC of Chicago sent out a bunch of nastygrams to all sorts of people who were using ALOHA as a trademark. Aloha Poke was called out on social media and apologized, which is entirely appropriate because they seriously overreached.

Owning a trademark doesn’t give you the right to stop people from using the trademark for stuff that’s sufficiently different from your stuff.

How different is “sufficiently different”? That depends. If your trademark is used by lots of people, then the stuff doesn’t have to be very different at all:

  • If your trademark for cabinets is used in lots of trademarks, then someone could probably get away with using it for furniture.
  • If your trademark for cabinets is really rare, then no one else could use it for most stuff that goes into houses.

How commonplace is ALOHA? There are 1100 applications and registrations that contain the word ALOHA, including these for restaurants and restaurant services:

ALOHA CUP BAP Application
ALOHA SNACKS Application
ALOHA FRESH Application
ALOHA HAWAIIAN BBQ Application
ALOHA MAUI YOGURT Application
ALOHA KITCHEN Application
B ALOHA Application
ALOHA SALADS Registration
ALOHA HAWAIIAN BBQ Registration
ALOHA INSIDE Registration
ONE OHANA SHARING ALOHA Registration
ALOHA WOW WOW HAWAIIAN LEMONADES Registration
TASTE THE ALOHA Registration
ALOHA TABLE Registration
ALOHA GRILL Registration
ALOHA BAGELS Registration
OCEAN ALOHA Registration
HALE ALOHA Registration
ALOHA SERVED DAILY Registration
ALOHA SALADS Registration
ALOHA SPOKEN HERE Registration

Aloha Poke chose to go to bat with a toothpick instead of a baseball bat. How do you make sure your trademark rights are baseball-bat strong? Easy. Don’t pick commonplace words:

  • No names of gods, trees, constellations, familiar animals.
  • No common words in any language: ALOHA, CIAO, SHALOM, ADIOS, SALUD.

Anyone can have a strong trademark. You just have to pick the baseball bat over the toothpick.

 

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No Drawing is Possible

There are over 234 U.S. trademark registrations for “situations for which no drawing is possible” which means just what it says.

Of those, 219 are for sound marks: Mostly human voices singing and speaking and musical instruments, but there are also gongs, buzzes, beeps, big cats growling, little cats meowing, insects chirping, and ducks quacking. Here are the written descriptions of two of my favorite sound marks. Can you guess what they are? (Answers below.[1]):

  1. “Rhythmic mechanical human breathing created by breathing through a scuba tank regulator”
  2. “A crescendo beginning with a snapping sound followed by a hiss sound”

The next biggest category (13 registrations) is for scent marks. Here are some cool ones:[2]

  • A scent of a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough (Play-Doh®)
  • Flower musk scent for retail phone sales.
  • Chocolate scent for retail jewelry sales.
  • Bubble gum scent for shoes.
  • Piña colada scent for ukuleles.

Right now there’s only one visual trademark that falls into the “no drawing possible” category:[3] “A pre-programmed rotating sequence of . . . columns of light projected into the sky” for search lights.

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But the one that really wows me is a touch trademark: A “leather texture wrapping around the middle surface of a bottle of wine” for The David Family Group wine. That’s an amazing way to stand out from the crowd.

Novelty is incredibly important in the world of trademarks. In what unique way can you promote your business?

 

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[1] Here’s what the sound marks are:

  1.   That’s Darth Vader® breathing. The trademark is for toys and costumes.
  2.  That’s the sound of a lightsaber®. The trademark is for a bunch of stuff, including toys.

[2] Here are the rest of the scent marks:

  • Coconut scent for retail sales of beachwear and goods.
  • “High impact fragrance primarily consisting of musk, vanilla, rose, and lavender” for hair care products
  • Rose oil scent for advertising or marketing services.
  • Strawberry scent for toothbrushes.
  • Grape, strawberry and cherry scents for motor lubricants.
  • “Minty scent by mixture of highly concentrated methyl salicylate (10wt%) and menthol (3wt%)” for medicated transdermal patches.

[3] There are other non-traditional trademark where the applicant was able to create a drawing.

  • Amazon’s light sequence on Alexa.
  • Bad Robot production credit sequence.
  • Samsung’s colored light sequence.
  • Fee intake lights on USA Technologies vending machines.
  • Sequence of lights on Zenith vacuum cleaners.

 

Images of David Family Wines used with permission of The David Family Group LLC.