Famous Joe’s Original Carmine Street Pizza of New York

If you’re planning on opening a pizza parlor, for the love of mozzarella, please don’t name it JOE’S.

Or FAMOUS JOE’S PIZZA.

Or FAMOUS JOE’S ORIGINAL PIZZA.

Or FAMOUS JOE’S ORIGINAL CARMINE STREET PIZZA.

Or anything else with JOE. Or any other Italian or quasi-Italian name. Or Heinrich, for that matter. Just no names. Whether it’s your name or not.

Because ORIGINAL is unoriginal. And FAMOUS . . . do I really have to explain why that should never appear in a trademark?*

And because there are already plenty of people fighting over the rights to those names and banal words. Presumably, you’re opening a pizza place because you want to make pizza and/or money. If you use those words, all you’re gonna make are trips to the courthouse and payments to your lawyer.

I’ve said it before and I’ll say it again:

• Don’t use your name (or any other name) as your trademark.
• Don’t use lame words like WONDERFUL or TASTY or EXPRESS or BEST or FRESH or HOT or PRIME or GREATEST. No matter how you spell it.
• Don’t use the name of the street you’re on, or the neighborhood, or the city or BIG APPLE or PIKES PEAK or BAY AREA.

The whole point of a trademark is to distinguish your business from other businesses so your customers will remember you and be able to tell their friends.** If you pick words that everyone else is using, that will NOT work.

Thanks for listening. I feel better now.

*Because places that are famous don’t put that in their name.

**I found this great pizza place. It’s called Joe’s. No not that Joe’s. This one’s on Spring between Mott and Elizabeth. No, not that one either. That one’s on Prince between Broadway and Mulberry. Yeah, that one. Oh, it closed already. I wonder why?

Wings on Cars

In 1937, Bentley Motors Limited registered this trademark for automobiles.

In 2017, Hyundai Motor Company registered this trademark for automobiles.

It isn’t too far-fetched to think that Hyundai’s trademark is infringing on Bentley’s trademark: They’re both for cars and have stylized wings as the dominant feature.

So why is this OK?

It all comes down to the du Pont factors.

Regular readers may recall a case involving E. I. du Pont Nemours & Co. The court in that case set out factors that trademark attorneys use to decide whether two trademarks are confusingly similar. Here are some of them:

• The similarity of the marks as to appearance, sound, connotation and commercial impression.
• The relatedness of the goods or services.
• The number and nature of similar marks in use on similar goods.
• The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing.

Bentley and Hyundai can each use its stylized-wing trademark because of the last bullet.[1]  A car buyer is unlikely to accidentally buy a Genesis®  instead of a Bentley® because of the similarity of these two trademarks. Car buyers are engaged in “careful, sophisticated purchasing” and unlikely to casually mistake one for the other.

Imagine, though, this type of similarity on bags of potato chips. Someone is likely to grab a bag of chips while simultaneously talking on the phone and popping a Binky® brand pacifier back in his baby’s mouth. In other words, an “impulse” purchase.

Now you know why these trademarks can co-exist.

 

Cody B. gets the shout out for asking the question that sparked this post.

 

 

[1] I think the final bullet (care of the purchaser) is the most important du Pont factor in this instance, but the third bullet (number and nature of similar marks in use on similar goods) is also important. There are lots of car companies using similar wing designs.