Round Pizzas

A regular reader sent me these two images. He wondered how they could coexist.

Let’s look at how:

  • two different sellers of pizza
  • can both use concentric circles
  • with the color orange
  • in the same geographic area
  • without either of them infringing on the other.

The more commonplace the imagery in a logo, the more similarity is allowed. If the two logos pictured were both for a clothing store, I’d probably think one was infringing on the other.

But they’re for pizza. Pizzas are often round. Pizzas often have sauce, which is often reddish orange. Using a logo that looks like your product means that lots of people are using similar logos. Just look at all the logos in the featured image.

Let’s look at another example. Here’s just a tiny sampling of trademarks for clothing. They’re all pretty similar to each other but they’re allowed to co-exist because they, like the pizza logos, are basically “merely descriptive” of the goods.

What should you do if you want a rare or unique mark? Don’t have a logo that looks like your product.

That’s why the logo for my law practice isn’t a gavel or a set of scales or some other imagery that’s associated with the practice of law. Using a stylized bee as my logo means that another lawyer couldn’t use anything even remotely similar to my logo without infringing.

Shout out to Bill B. for the email that prompted this post

Even More Hidden Meaning

We’ve seen bears hidden in the Alps, a great ape hidden in the profile of a tree, and chips and salsa hidden in Tostitos. Who’s ready for some more hidden gems?

The logo for the Milwaukee Brewers® baseball team looks like a baseball glove holding a baseball but hidden in the image are the letters M and B. Batter up!

The Cisco® logo has a stylistic representation of the Golden Gate bridge, a shout out to San Francisco, Cisco’s hometown.

Northwest Airlines isn’t around anymore but its logo has a ton of hidden imagery. The little triangle is pointing to northwest but also transforms the N into a W.

NBC® changed its logo from a fairly representational peacock to a much more stylized version but you can still see the peacock’s body and head in front of the tail.

The logo for Beats® headphones is a lower case “b”, looks like one earpiece of the actual headphones, and also looks like a head wearing headphones.

The logo for EIGHTY20 shows the numbers 80 and 20 in binary. The top row is 1010000, which is 80 and the bottom row shows 0010100.

Shout out to Liz B. for noticing the Milwaukee Brewers logo at a recent ball game.

How to Guarantee Your Brand Will Be Stale

First there was NAPSTER. Followed in short order by:

POPSTER CLIPSTER LINKSTER STREAMSTER RIDESTER BLOCKSTER KIDSTER SLOWSTER SCOOPSTER POLLSTER CHUGSTER GRIPSTER EGGSTER KEYSTER TOWELSTER PADSTER BURPSTER SEATSTER SCOOTSTER CLIPSTER BIKESTER etc.

Then came SPOTIFY, which led to:

SUBLIFY CYCLIFY SCENTIFY GAMIFY SKIPIFY SHOPIFY SCOOPIFY RETURNIFY DIGIFY LASHIFY SELECTIFY TASTIFY FADIFY TAWKIFY DREAMIFY YESSIFY SPORTIFY TWINIFY GYMPIFY RAPIDIFY FOXIFY BLISSIFY GOODIFY BULKIFY OPTIFY GETIFY SLOARIFY WRISTIFY etc.

At about the same time there was GRAMMARLY. Soon there was also:

BENEFITLY PARSELY RENTLY ASSISTLY OPTILLY PROFIT.LY PROMPT.LY RINGLY FASTLY JUKELY BRANDLY LOANLY SPICELY SCOPELY E.N.I.DENTLY EXPERT.LY RESTLY PIGEONLY DIRECT.LY MUGGSLY PLANZLY CROSSLY COMMERCELY LEASILY etc.

TUMBLR was one of the first to practice disemvoweling, but there’s also:

MNDFL FLICKR BLENDR LISNR GATHR GRINDR RINGR PUSHRS QZZR SCRIBD TIMR VIEWR WEEKND DNTL DSTLD BHLDN SRSLY UNBXD etc.

Why do people follow these trends when picking a trademark for their business? There are some benefits.

The domain name is likely to be available for made up and misspelled words and, for a business just launching, jumping on one of these bandwagons can make them seem trendy.

But if your brand is fadish, it’s unlikely to age well. Fads fade and pretty soon that hot trademark is going to seem as outdated as Ladies’ Home Journal.

Great branding isn’t about following a trend, it’s about speaking your own specific message to the customers who are right for your product or service.

MCUTO: Marvel® Cinematic Universe Trademark Office

Movies and TV rarely get legal stuff right, which is okay because they’re telling stories not giving legal advice.

Still, you can imagine my excitement when She-Hulk: Attorney at Law nailed trademark law in Episode 5. Here’s how it went down.

Jennifer Walters, She-Hulk’s alter-ego, was not amused when her nemesis, the evilly self-absorbed Tatiana, started selling a “luxurious line of skincare, wellness, and beauty products” under the trademark SHE-HULK. Jen hired Mallory Book, a lawyer who specializes in trademark litigation.

Mallory knew that no one can register a trademark that includes the name of a living person without having the written consent of that person. She also knew that the rule applies to shortened names, pseudonyms, stage names, titles, and nicknames.[1]

Tatiana claimed Jen wasn’t actually known as SHE-HULK and presented as evidence a TV interview where Jen rejected the moniker. Mallory countered with evidence that showed She-Hulk is Jen, including:

  • Recordings of another, later, broadcast where Jen embraced She-Hulk as her pseudonym; and
  • Testimony of people who know Jen as She-Hulk.

Did the show get everything right? Of course not. For example, Mallory should have introduced testimony of Jen’s friend and boss, both of whom were actually confused into thinking Tatiana’s beauty line was associated with Jen.[2]

Watching TV and movies is no place to learn the law but it’s really cool when the writers can get it right and tell the story.

Shout to to Bill B. for letting me know about Episode 5.


[1] Trademark Manual of Examination Procedure Section 1206.01.

[2] Here’s some other stuff they got wrong:

She-Hulk’s friend told her whoever gets there first with trademarks wins. That’s often true but not in this situation.

She-Hulk asks Mallory if Thor or Dr. Strange had trademarks. Mallory says: “You just named two people her use their actual names.” That’s a true statement but irrelevant for trademark law. You couldn’t register DR. STRANGE without his consent either.

The procedural stuff was insanely wrong. The legal action was an argument over summary judgment but the whole thing was based on a factual determination, which is the exact opposite of how summary judgment works.

Also, obviously, Marvel owns all the trademark registrations for SHE-HULK. Apparently, neither Jen nor She-Hulk are real people.

Specimens – Part II

To register your trademark in the U.S., you have to submit a “specimen.”

The Trademark Office is picky about what’s acceptable as a specimen. How picky? Let’s look.

The trademark in your specimen has to be exactly the same as the trademark in your application.

  • The two trademarks in the featured image are not the same
  • JUICY! is not the same as JUICY
  • GOOD & PLENTY is not the same as GOOD AND PLENTY

The specimen must show the trademark “on or in connection with” the goods and services in the application.

  • Specimens for goods should be a picture of the actual goods or the packaging with the trademark clearly visible.
  • For services, you can use website screen shots but it has to include the trademark and have plenty of content that talks about the services.

Merely ornamental

If your application is for T-shirts, hats, or other swag, the specimen can’t have the trademark blazoned across the front like a decoration. That specimen will almost always be rejected as “merely ornamental.

Stuff that NEVER works

Here are some items that will never work as a specimen.

  • Printer’s proof of an advertisement or brochure
  • Digitally created/altered image or mockup of the goods
  • Advertising material for goods
  • Online catalog or web page display for goods without ordering information and pricing
  • Invoices

Submitting an acceptable specimen can be the trickiest part of getting a registration. To get it right, you need to know and follow the rules.

Beyond Belief

Beyond Meat, Inc. applications & registrations

Beyond Meat Inc.’s application to register the trademark GREAT TASTE PLANT-BASED was rejected because it’s confusingly similar to the registered trademark WHERE GREAT TASTE IS PLANT BASED, which is owned by Sonate Corporation.

Sonate’s registration dates back to 2015. Beyond Meat filed its application in 2020. What was Beyond Meat thinking?

That’s not the only trademark problem Beyond Meat has encountered. Its application to register BEYOND BACON was rejected because of a registration owned by Crunchsters, Inc. for BEYOND BACON for plant-based snack foods.

Lots of other applications filed by Beyond Meat have died because they couldn’t show they were actually using the trademarks.

Here’s my Monday-morning-quarterback take on this: Beyond Meat’s trademark BEYOND is widely recognized. They should build their brand around that mark. You don’t need to own BEYOND MEATBALL to sell BEYOND brand plant-based meatball substitute. The packaging in the featured image nails the way Beyond Meat should be doing its branding.

As for a tagline.

Everybody and his brother in the plant-based food industry is using a tagline that rhymes “based” with “taste”. Beyond Meat needs a tagline that captures what’s unique about its products. Trademarks are meant to distinguish you from the competition not make you blend in.

Do better Beyond Meat.

Trademark Infringement Leads to Hospitalized Children

The Washington Post® reports that children are mistakenly consuming products containing THC because the packaging looks like popular brands of snacks.

Real Double Stuf® Oreos®

Trademark law doesn’t exist to protect companies that own trademarks: It exists to protect consumers. Consumers have a right to know what to expect from a product based on the trademark on the package. If someone buys a bag with the Nerds® trademark on it, then that package should contain Nerds® candy and not a product containing THC.

THC product

In one of the cases reported by the Post, products containing THC were “accidentally given to 63 people at the Utah Food Bank” resulting in five children being hospitalized.

THC product

As I said before, it’s time for the marijuana industry to grow up and start respecting the rules that govern other businesses. When I wrote before, the only harm was to companies that own famous marks. Today, it’s leading to actual trademark confusion that results in hospitalizations.

Real Cheetos®

One step that could help is to allow manufacturers of THC-infused products to register their own trademarks. A manufacturer of consistently high-quality edibles would want to start building brand awareness and customer loyalty in its own brand. That would be easier if they were permitted to register their trademarks like other businesses. That won’t happen until marijuana is decriminalized at the federal level.*

*When the sale or transportation of any product for which registration of a trademark is sought is regulated under an Act of Congress, the Patent and Trademark Office may make appropriate inquiry as to compliance with such Act for the sole purpose of determining lawfulness of the commerce recited in the application.” [30 FR 13193, Oct. 16, 1965, as amended at 54 FR 37592, Sept. 11, 1989]

The Greatest Trademark On Earth

In 1988, the Utah Division of Travel and Development applied to register THE GREATEST SNOW ON EARTH for “promoting business and tourism.” It claimed to have started using the slogan in 1966.

Ringling Bros. Barnum & Bailey Circus, the owners of THE GREATEST SHOW ON EARTH, were not pleased. In case you think 1966 was a long time ago, Ringling Bros. first used the trademark THE GREATEST SHOW ON EARTH in 1891, and first registered the mark in 1961.

Ringling Bros. didn’t have to prove infringement because THE GREATEST SHOW ON EARTH is a “famous” mark. All Ringling Bros. had to show was that Utah’s use would “dilute” Ringling Bros. mark either by “tarnishing” or “blurring.”

Ringling Bros. opposed Utah’s application by arguing there would be dilution. After almost 6 years, the Trademark Trial and Appeal Board ruled in favor of Utah. Ringling Bros. appealed and still lost.

Since that fateful loss, the Ringling Bros. tagline has been the subject of other trademark riffs. Here are some that made it to registration:

  • THE GREATEST SHOW NEAR SURF
  • THE GREATEST SHOW ON GRASS
  • THE GREATEST SHOW ABOVE THE EARTH
  • THE GREATEST SHOW ON TUNDRA
  • THE GREATEST SHOW ON DIRT

The story of some trademarks goes back a long long way and takes a very twisty route.

Image of Utah license plan (c) 2018 Dick Elbers under Creative Commons License Attribution-ShareAlike 4.0 International. Modified by cropping.

The Super Powers of a House Mark

“House marks do not identify particular goods or services – rather, they identify the provider of a wide variety of goods or services, with such goods or services often themselves identified by a separate trademark or service mark.” 

Trademark Manual of Examination Procedure §1402.03(b)

What’s a house mark? I’ve sprinkled a few into this post to help you grok the concept. After reading this post, you’ll start noticing house marks everywhere.

A house mark’s super power is leveraging brand awareness: If consumers already buy and love your ketchup, they’re more likely to buy your mayonnaise if you use a house mark.

Costco’s adoption of KIRKLAND SIGNATURE® as its house mark is the greatest house mark story of all.

In the early 1990s, Costco sold plenty of its own products but each product used a different trademark: SIMPLY SODA for soft drinks; HEALTH BALANCE for vitamins; ENGINE FORCE for motor oil.

In 1995 Costco adopted a single trademark for all its products: KIRKLAND SIGNATURE®.

Costco had to make a serious effort to adopt a house mark. It had to find a mark that was available for all the goods and services its sells in all the countries where it operates.

That effort really paid off: KIRKLAND SIGNATURE® is now the biggest brand of packaged consumer goods in the U.S. with sales that are larger than much more established brands like Kellogg®.

Thanks to Liz B. for sending me an article that led to this post.

A Book Is Not a Copyright

Owning a book is not the same as owning the copyright to the book.

Obvious, right? You probably own lots of books and you’ve never thought you owned the copyright to those books.

Still, people conflate “book” with “copyright” all the time.

On March 20, 2022, The New York Times continued its reporting[1] on the alleged theft of Ashley Biden’s diary by Robert Kurlander and Aimee Harris. Harris and Kurlander purportedly tried to sell the book to the ironically named, Project Veritas.

The Times reported that the Department of Justice is conducting a criminal investigation of how Ms. Harris came to be in possession of the diary and the role played by Project Veritas and then wrote that:

“Project Veritas finalized a deal with Mr. Kurlander and Ms. Harris to buy the rights to publish the diary for $40,000, wired them the money and signaled that the group planned to soon publish it, according [sic] a person with knowledge of the case.”

What?

If Kurlander and Harris somehow came by the diary without breaking any state or federal laws, they would have the right to sell the physical object to whomever they please but they still don’t have the right to publish the diary and, it should go without saying, they can’t sell or license rights they don’t have.

Ms. Biden wrote the diary. She owns the copyright. Publication without her permission is copyright infringement.


[1] Ashley Biden’s Diary Was Shown at Trump Fund-Raiser. Weeks Later, Project Veritas Called Her. March 20, 2022 The New York Times. https://www.nytimes.com/2022/03/20/us/politics/project-veritas-ashley-biden-diary.html?referringSource=articleShare