Women March . . . And Also Oppose

What do you call it when a group of women get together to protest and advocate? A women’s march?

That’s the big question before the Trademark Trial and Appeal Board.

After the 2016 presidential election in the United States, women began organizing protests. Two of those groups filed to register the trademark WOMEN’S MARCH:

  • Women’s March, Inc. in Brooklyn (WMI) filed first in March 2017.[1]
  • Women’s March Los Angeles Foundation filed two applications in April 2018.[2]

The Trademark Office examiner approved the WMI applications. After an application is approved by the Trademark Office, it’s “published for opposition.” That means anyone who thinks the trademark shouldn’t be registered can oppose the application.

And oppose they did. Fourteen different organizations expressed an interest in opposing the WMI applications.[3] Of those, four actually opposed:

  • We March On Chicago
  • March On
  • Women’s March Alliance
  • Women’s March Los Angeles Foundation

The oppositions all say the same thing: Lots of people started using this phrase right after the election so it doesn’t refer to one specific group. Here’s how you say that in legalese:

  • WOMEN’S MARCH is “merely descriptive.”
  • It fails to function as a trademark.
  • It was independently adopted by numerous grassroots organizers so it’s incapable of distinguishing one group from another.

What do you think? Before you read this, did you think there was only one organization using WOMEN’S MARCH? Now that you know there are a bunch of different groups, do you think just one of them should be allowed to prevent the others from using that phrase?

 

 

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[1] Both WMI applications were filed on March 1, 2017. The first one is for WOMEN’S MARCH based on use dating back to November 2016. The second one is for WM WOMEN’S MARCH and is based on intent-to-use. Both include these goods and services:

“T-shirts; shirts; sweatshirts; hoodies; one-piece infant wear.”

“Promoting public awareness of the need for protecting women’s social, economic and political rights; promoting public awareness of the need for racial equality, LGBTQ rights, economic and reproductive rights; public advocacy to promote awareness of the need for protecting women’s social, economic and political rights; lobbying services, namely, promoting the interests of women in the fields of legislation and regulation concerning reproductive rights, equal pay, paid family leave, and to the end of violence against women.”

[2]WMLA filed its applications on April 12, 2018 and both were based on use dating back to November 2016. Both of the WMLA applications are on hold until the WMI applications either go away or reach registration.

The first WMLA application is for: “Educational services, namely, conducting conferences and workshops in the field of civic engagement and community initiatives; Providing a website featuring non-downloadable publications in the nature of photos in the field of community cultural events; Providing information regarding current and cultural events via a website; Organizing community cultural events; Providing information and news regarding community outreach services.”

The second WMLA application is for: “Providing a website featuring information about social justice, human rights, and political issues; Providing information regarding political issues, knowing how to vote, and knowing how to register to vote; Promoting public awareness of the uniqueness and diversity of humanity through a national annual day event; Promoting public awareness of LGBTQIA rights; Promoting public awareness of police brutality, gender and racial inequities within the criminal justice system; Public advocacy to promote awareness of gender, racial, social, and economic justice; Public advocacy to promote awareness of the need to protect women’s social, economic and political rights; Online retail store services in the field of clothing, books, and buttons; Retail store services in the field of clothing, books, and buttons.”

[3] Women’s March DC; March Forward Massachusetts Educational Fund; Women’s March Alliance; Women’s March Los Angeles Foundation; Women’s March SLO; Women’s March Contra Costa, Inc.; March On; Santa Cruz Women’s March; March On Arkansas; We March On Chicago NFP dba Women’s March Chicago NFP; March On Hudson Valley; March on Maryland, Inc.; Women’s March San Diego, Inc.; and Women’s March Colorado.

A Novel Way to Waste Money

You can’t ever get trademark rights in the generic word for what you’re selling:  No DŌ brand cookie dough.

But what if you really want a registration? Can you just register the trademark for some other product? Can you Register DESK for window screens even though you’re selling desks, just so you have a registration?

Front of box.pngSounds ridiculous, right? But that didn’t stop Jacquelyn De Jesu from registering SHHHOWER CAP for “textile fabric for use as a textile in the manufacture of a noise reducing headpiece.”

Check out the packaging for her product. Is this a “noise reducing headpiece” or a shower cap? I count three times that the product is called a shower cap and only one reference to the fact that it’s less noisy that a traditional shower cap.Back of box.png

There are at lots of reasons not to follow Ms. De Jesu’s example. Let’s just consider two.

It’s a complete waste of time and money.

If she ever decides to go after someone for using the words “shower cap” to sell a shower cap that person will point out that he isn’t selling a “noise reducing headpiece” and go right on using “shower cap.”

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Loss of Opportunity

Ms. De Jesu wasted an opportunity to establish a brand. If these “noise reducing headpieces” catch on and she decides to sell bathmats, what’s she gonna do, sell SHHHOWER CAP brand bathmats?

So, yeah, you can get the registration and maybe trick a few people into thinking you have rights, but the only person you’re cheating is yourself.

 

 

 

 

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FUCT, Reprise

This is a special edition of the Bee Blog to convey some breaking news.

There’s a statute that says which trademarks can’t be registered. Here’s what part of it says:

“No trademark . . .  shall be refused registration . . . unless it— . . . [c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage . . .  persons . . .”

Back in 2017, the United States Supreme Court ruled that it was unconstitutional to refuse to register a trademark because it’s disparaging. Because of that ruling Simon Tam was allowed to register THE SLANTS for an Asian rock band.46051501_01

The U.S. Court of Appeals for the Federal Circuit recently used the Tam decision to support it’s ruling that it’s also unconstitutional to refuse to register a trademark because it’s immoral or scandalous. That a victory for Erik Brunetti and his trademark FUCT.

That means lots and lots of applications to register will be moving forward. The Queen Bee will definitely be following their progress.

 

 

You Aren’t Clever Enough to Get Our Trademark

Radios were once all the rage. Shacks were once a cool place to shop, but in the 21st century no one wants to shop at RADIO SHACK®.

Meet the “Radio Shack Problem“: A descriptive trademark that holds you back when markets and social trends move on.

Dress barn.jpg

This ad campaign by DRESS BARN® attempted to overcome a self-inflicted marketing wound by claiming that it’s really the customers who are too dense to get it.

OVERSTOCK.COM® is spending tons on advertising to convince customers that the word “overstock” in their name is just a great big misunderstanding and customers certainly shouldn’t think of them as an “overstock” company.

Rice Krispies

2-pound Rice Krispie Treat®

A recent trip to my local IT’SUGAR® showed they’re on track to become a Radio Shack Problem. IT’SUGAR sells candy bars the size of coffee tables. They also sell tchotchkes that aren’t made of sugar. Pretty soon they’ll be running ads to let everyone know they sell both edible and non-edible chazerei.

Non-sugar Chazerai

Tchotchkes

Don’t be a Radio Shack Problem. Pick a trademark that’s suggestive so it will stand the test of time: NEST®, ROOMBA®, APPLE®, GOOGLE®, AMAZON®. Those brands will go anywhere, anytime and do anything you need them to do.

The owners of those trademarks never have to berate customers for not understanding their brand because those companies didn’t mislead their customers in the first place.

 

Thanks to Liz B. and Max F. for sending stuff that suggested this post.

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