Little Trademark Infringement

A Little Free Library® in Jacksonville Beach, Florida

Tod Bol and Rick Brooks had a brilliant idea: Build a little box, fill it with books, put it somewhere public, and invite people to take a book and leave a book. They called it all:

LITTLE FREE LIBRARY.

They took care to protect what they were creating.

They registered their trademark rights in LITTLE FREE LIBRARY and the logo that went with it.

They formed a non-profit, Little Free Library, Ltd., to run the operation.

When Tod Bol died in 2018, everything was in place to assure that what he and Mr. Brooks had created would continue to grow and serve individuals and communities.

In 2019, Tod’s younger brother, Tony, started selling wooden book boxes. Nothing wrong with that. No one has an exclusive right to make or sell wooden book boxes but Tony started calling his wooden book boxes:  “Little Libraries.”

Unsurprisingly, Little Free Library, Ltd. objected to that use.

The Washington Post quotes Tony as saying that Little Free Library, Ltd.’s actions are “akin to some organization wanting to own all bird houses by applying to have trademark control over ‘wooden boxes with a nesting area for birds.’ ”

No, Tony, no one’s doing that!

Tony can sell wooden book boxes today, tomorrow, and forever because trademarks give the owner exclusive rights in the brand, not in the product.

In other words, making and selling book boxes is fine, just stop implying they’re coming from Little Free Library, Ltd.

 

 

Thanks to Liz B. for sending me the Washington post article that inspired this post.

Generic Much?

Imagine using a brand for your business for nearly 35 years and still having almost zero trademark rights.

The Tile Shop, LLC first used THE TILE SHOP for retail sales of, well, tiles, in 1985, the same year that Michael Jordan was named Rookie of the Year. The Tile Shop is still working on securing exclusive rights to that brand.

1988: It tried to register but didn’t get exclusive rights to the words THE TILE SHOP because other people who sell tiles in shops need to use the words “tile” and “shop.”

1995: Undaunted, it tried again. And failed.

1997: Yet another try. Yet another failure.

2003: And again. Failure.

2004: Again? Yes. And failed? Yes.

2016: Tried again and actually managed to argue its way into a registration that includes exclusive rights to the word “tile.” Good luck enforcing that.

2019: As of this writing, it’s on its way to getting a second registration that includes exclusive rights to “tile.”

Thirty plus years and seven tries later, it has managed to acquire some feeble rights but The Tile Shop, LLC is never going to be able to stop stores that sell tile from using the word “shop” or the word “tile.”

The brand started weak. It remains weak. It could have spent the last 35 years building value into an actual trademark instead of trying to get rights to the generic words for its goods and services. This happens all too often.

 

Thanks for regular reader Liz B. for the suggestion and the photo.

THE

In August 2019, The Ohio State University filed to register THE as a trademark for T-shirts & hats.

The pundits went wild. “How can someone own the word THE?” they asked. Actually, there’s no reason why someone can’t have THE as a registered trademark. If The Ohio State University has THE as a trademark, that doesn’t mean people can’t use the word “the” or have the word “the” as part of another trademark.

In September 2019 one of those pundits gloated when the Trademark Office rejected the application filed by The Ohio State University. “Ha, ha, Ohio State. We told you you can’t do that!”

But the Trademark Office’s objections had nothing to do with the issues raised by the snickering hoards and, in fact, it kinda shows that the snickering hoards are 100% wrong.

The big issue raised by the Trademark Office is the fact that Marc Jacobs already has a pending application for THE for clothing. So it’s not that The Ohio State University can’t register THE for hats and T-shits, it’s that Marc Jacobs is ahead in line.

I predict that the Marc Jacobs application won’t make it to registration because the specimens submitted by Marc Jacobs aren’t acceptable. I also predict The Ohio State University’s application will register.

UPDATE April 28, 2021: Marc Jacobs’s application to register THE was able to move forward. The Ohio State University filed an opposition to the MJ application. The opposition is suspended while Ohio State and MJ try to work things out. On April 14, MJ amended its application to include this phrase: “all of the foregoing being promoted, distributed, and sold through channels customary to the field of contemporary fashion.” That sounds like Ohio State and MJ are working on a deal that limits the use of THE on clothing to certain channels of trade.

UPDATE May 31, 2022: Both sides ended up opposing the other’s application. Both oppositions have now been dismissed, presumably because the two sides settled based on a limitation of the type of goods being sold. Marc Jacobs’s application to register THE will become a registration as soon as they can show actual use on the goods. Ohio State has completed all the steps to getting its registration and it’s now just a matter of time.