Right and Wrong on Instagram®

“I officially own the trademarks for PUSSYPOP® & BUSSYBOY®. Today is an excellent day,” said Azealia Banks on Instagram®.

RIGHT. Her application for PUSSYPOP faced a problem because “pussy” was considered “scandalous.” Her application eventually went on to registration after the ruling in Iancu v. Brunetti, which is the FUCT gift that keeps on giving to “scandalous” trademarks.

Unfortunately, Ms. Banks also posted some things that are WRONG. Ms. Banks insisted that Iggy Azalea stop using “Pussy Pop” as a song title “before things get ugly.” 

WRONG. Ms. Banks’s trademark registrations are for soap, tampons, lube and probiotic supplements. That doesn’t give her the right to stop someone from naming a song “Pussy Pop.”[1]

Ms. Banks points out that she “Definitely [has] proof of usage prior to [Iggy Azalea’s] song release . . ..”

WRONG. Ms. Banks just flat out doesn’t have the right to stop someone from using “Pussy Pop” as a song title. Who used it first doesn’t matter in this situation.

Ms. Banks says that she has “a slew of disparaging tweets from [Iggy Azalea] about [Ms. Banks’s] company.”

WRONG. Dissing a company isn’t necessarily trademark infringement.

Ms. Banks says people: “Can’t make a song called ‘Doritos’ if the CEO of Doritos does not approve of usage.”

WRONG: You can make a song named “Doritos” and no one can do anything about it. Also, there’s no CEO of Doritos. Frito-Lay North America, Inc. owns the DORITOS brand.

So many teachable moments in a couple of Instagram posts.
Super shout out to Cassandra G. for bringing this to my attention.
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[1] Ms. Banks included a copy of a letter from her lawyer with her post. The letter wasn’t a cease and desist letter. It was just the letter her lawyer sent her with her Certificate of Registration. Ms. Banks redacted her lawyer’s mention of the registration number.
WRONG. The registration number isn’t a secret. Anyone can look it up online. Redacting the number is like taking a photo of your face tattoo and redacting the words in the tattoo.

Eating Your Cake

On May 5, 2020, the United States Supreme Court had its first teleconference oral argument in history.[1] It was a trademark case.[2] Here’s what went down.

Booking.com built a business on owning a domain that’s the generic word for their services. That has earned them a very strong position in their industry but has left them with essentially no trademark rights and no U.S. trademark registration. Booking.com is now trying to change established trademark law so they can eat their cake and have it, too.

Booking.com concedes that BOOKING is generic for what they do but argues that BOOKING.COM is not generic.[3] It’s possible for a domain name to create a different commercial impression than the domain alone. For example, TENNIS.NET for tennis equipment isn’t generic because of the play on words. BOOKING.COM doesn’t meet that standard.

Why do we care if they register BOOKING.COM?

Trademark law prevents companies from monopolizing language: You can’t give exclusive rights to the word “booking” to one booking company because then other booking companies won’t be able to describe what they do.

Booking.com B.V. argued that they don’t plan to use the registration to go after competitors like ebooking.com or hotelbooking.com. They said they need the registration to go after spoofers and cyberscammers.

First, I don’t believe Booking.com won’t use the registration to attack competitors.

More importantly, they have reaped the benefits of choosing a generic word for their brand. There’s no reason we should sacrifice fair competition to save them from the disadvantages inherent in their choice.

 

Thanks to Cassandra for suggesting this post.

 

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[1] The case was United States Patent and Trademark Office v. Booking.com. B.V.  The absence of the august chamber and the physical presence of the justices resulted in one tiny slip in the formality shown by the attorney for the USPTO:

Mr. Chief Justice Roberts: “Ms. Ross, why don’t you take a minute to wrap up.”

Erica Ross: “Sure. Uh. Thank you Mr. Chief Justice.”

[2] The case concerns four applications to register trademarks containing BOOKING.COM filed by Booking.com B.V. The examining attorney at the Trademark Office refused registration because the term “booking” was generic for hotel reservation services and merely adding the generic top-level domain “.com” did not change a generic word to a protectable trademark.

[3] That said, the general rule is included in the Trademark Manual of Examination Procedure Section 1215.05:

“Generally, a mark comprised of a generic term(s) combined with a non-source-identifying gTLD is generic and without trademark or service mark significance. In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682 (Fed. Cir. 2009) (MATTRESS.COM generic for “online retail store services in the field of mattresses, beds, and bedding”); In re Hotels.com, L.P., 573 F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009) (HOTELS.COM generic for “providing information for others about temporary lodging; travel agency services, namely, making reservations and bookings for temporary lodging for others by means of telephone and the global computer network”).”

Trademark Training Wheels

You apply to register your trademark. The U.S. Trademark Office says your trademark can’t be registered because it’s “merely descriptive” but, rather than reject your application, the Trademark Office offers you an alternative: You can have your trademark registered on the “Supplemental Register.”

Should you take that deal?

Unless you have some very strong arguments for why your trademark isn’t “merely descriptive” you should probably take the deal and register on the Supplemental Register. Here’s what that will get you:

  • You’ll be able to use the ® symbol.
  • It’ll deter other people from using a trademark similar to your trademark.
  • It’ll give the Trademark Office a basis for rejecting applications to register trademarks that are similar to yours.
  • After five years on the Supplemental Register, you’ll be able to get a registration on the Principal Register.

There are some things you don’t get,[2] but the stuff above is a pretty good bundle of rights.

The Supplemental Register is like training wheels for a trademark. If gives a “merely descriptive” trademark[1] a chance to prove itself and someday make it to the Principal Register, the major leagues of trademarks in the United States.

If the Trademark Office makes that choice available to you, you should probably take it.

 

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[1] The U.S. Trademark Office will allow a “merely descriptive” trademark to be registered on the Supplement Register. The generic word for your goods or services (APPLE brand apples) can’t be on the Supplemental Register because the generic word can never ever become a trademark.

[2] Here’s what you do NOT get:

  • You can’t use a registration on the Supplemental Register to prevent infringing goods from being imported into the United States. 15 USC 1124
  • You don’t get a bunch of advantages in legal actions that make it much easier to establish that you have exclusive rights to the trademark. 15 USC 1057(b) and 15 USC 1115.
  • You can’t move forward with your application on the basis of “intent to use.” Only an application based on actual use (or one that has become an application based on use by filing an “amendment to allege use”) can be registered on the Supplemental Register. 15 USC 1051(b)
  • Your registration doesn’t count as though you had used the trademark everywhere in the United States. 15 USC 1057(c)
  • Being on the Supplemental Register doesn’t count as “constructive notice” to everyone that you have rights in the trademark. 15 USC 1072
  • Your trademark doesn’t go through publication and possible oppositions as part of the process of being registered on the Principal Register. 15 USC 1062 and 15 USC 1063.
  • Your time on the Supplemental Register doesn’t count toward the time needed to claim “incontestability.” 15 USC 1065

Initial Interest Confusion

Friendly's“Oh, look, there’s a Friendly’s! Let’s go there. I didn’t know they had those in Florida,” I said to my son as we walked along looking for a place to eat.

Freddy's B&WAs we got closer, I saw that it wasn’t a Friendly’s but a Freddy’s. The font, the color (both use the same shade of red) and the overall shape of the word made me think it was a different restaurant than it actually was.

This is a perfect example of what trademark attorneys call “initial interest confusion.”

My “initial interest” in eating there was the result of my “confusion” about what company was about to make my burger. I realized I was mistaken before I went in, but I was initially confused.

Some courts think “initial interest confusion” is enough harm in certain situations to be considered trademark infringement. It’s easy to see how this feels wrong but it’s hard to nail down.

  • Would this FREDDY’s restaurant have gotten my business if I hadn’t started out thinking it was a FRIENDLY’S?
  • How does this harm Friendly’s?
  • Does it matter whether or not there’s a FRIENDLY’S nearby? (They mostly don’t overlap geographically, but that’s changing. Orlando, Florida has both a FRIENDLY’s and a FREDDY’S.)
  • Assuming Friendly’s trademark rights beat out Freddy’s trademark rights[1], do you think Freddy’s is infringing Friendly’s rights?
  • Should Friendly’s should go after Freddy’s?

These are hard questions with complicated answers, which makes it fun to think about, but not if you’re Friendly’s or Freddy’s.

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[1] Friendly’s first registered FRIENDLY’S in that font for restaurant services in 1990. It had been using that trademark since 1967.

Freddy’s first registered FREDDY’S in their font for restaurant services in 2011 with a date of first use in 2009.

Little Trademark Infringement

IMG_2643

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.

LogoThey 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.

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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.

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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.

 

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Backcountry Takes It Back

Customers don’t like trademark bullies.

Jonathan Nielsen, the CEO of Backcountry.com, LLC learned that lesson the hard way.

As of this writing,* there are over two dozen registrations that include the word BACKCOUNTRY for various outdoor related goods and services that do NOT belong to Backcountry.com.

When you have a trademark like BACKCOUNTRY for outdoor gear and retail sales of outdoor gear, you have to accept that companies in that space are going to use pretty similar marks for pretty similar goods and services. It’s just not that strong a trademark.

Despite that, Backcountry.com started opposing applications, trying to get registrations cancelled and filing lawsuits against companies they thought were infringing.

The consumers in that market started noticing.

Social media blew up.

Then, miraculously, Mr. Nielsen did the right thing.

He published a letter to the outdoor community acknowledging that his company “took certain actions that . . . were not consistent with [his company’s] values . . ..” Mr. Nielsen pledged to “reexamine our broader approach to trademarks to ensure we are treating others in a way that is consistent with the culture and values envisioned by our founders and embraced by our community.”

Way to go, Mr. Nielsen. We can’t get everything right all the time, but we can apologize, and get things right the second time.

 

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*December 2, 2019.

Where Are They Now?

What happens to a trademark application once it’s been filed?

To find out, I tracked all the applications filed on one day: February 8, 2016.[1]

There were 1,396 applications to register trademarks filed with the U.S. Trademark Office that day.

Screen Shot 2019-12-16 at 12.30.03 PM.pngAs of this writing,[2] only 840, or about 60%, made it all the way to registration.

494 of those applications are dead and gone.

Another handful, 62 applications, are still in process. Some are being opposed and some are still trying to prove use. I estimate that half of those 62 will be dead before it’s over.

How did all those 494 applications die? Screen Shot 2019-12-16 at 12.43.25 PM.png

  • 228 died because the applicant never filed proof it was using the trademark. Maybe that’s because their plans changed or their business died.
  • 221 died because the Trademark Office issued an office action. which is the Trademark Office’s way of saying that the trademark can’t be registered[3].
  • 29 died because the applicant “expressly abandoned” the application, which is code for “someone sent them a cease and desist letter.”
  • 12 died because someone opposed the application and the applicant lost the opposition or chose not to fight.
  • 4 of them actually made it to registration, only to be cancelled soon after by someone else with stronger rights and/or a bigger purse.

There are lots of things that can happen to an application once it’s filed. The best way to avoid a bad outcome is to file an application for a trademark that has a low likelihood of running into problems.

 

Thanks to Max F. for the suggestion that led to this blog.

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[1] I picked that date because it’s relatively recent but far enough in the past to have allowed most things that can happen to happen.

[2] December 17, 2019.

[3] Many of those office actions refused registration because the trademark was “confusingly similar” to another trademark or because it was “merely descriptive” or “generic.”

What’s most interesting to me is how few of the applicants even tried to move ahead after the Trademark Office refused to register their trademark. Of the 221 applications that were refused and are now dead, only a few responded to the Trademark Office with arguments as to why they should be registered. I’m sure many of those had no chance even if they did respond but I suspect that a good size chunk could have made it with a fairly simple response.

Trademark Bullies

Let’s play a guessing game.

There’s a company out there, let’s call it Bully Inc., that’s been accusing other companies of infringing on its trademarks. I’ll describe the “infringements” and let’s see if you can guess the identity of Bully Inc.

Remember, Bully Inc. is claiming that each of these “infringers” is leading consumers to think they’re associated with Bully Inc., so the identity of Bully Inc. should come easily to mind when I tell you about the trademarks the “infringers” are using.

Ready? Let’s go.

Alleged Infringer #1: Thunder Beast LLC owns a registration for the trademark THUNDER BEAST® for “Non-alcoholic beverages, namely, carbonated beverages.” Bully Inc. says that’s likely to confuse consumers and its trying to deregister Thunder Beast’s trademark.

Raptors

Alleged Infringer #2: Bully Inc. also went after the owner of the Toronto Raptors® because their logo (shown to the right) is likely to confuse consumers into thinking that the Raptors are associated with Bully Inc.

Have you figured out who Bully Inc. is yet?

One more hint.

Alleged Infringer #3: Bully Inc. also went after Disney for Disney’s registration of MONSTERS UNIVERSITY® for food products.

. . . .

. . . .

Have you got it? The company bringing all those legal actions (and many more) is Monster Energy Company, makers of Monster Energy® drinks.

If you own a trademark you should defend it against infringers but remember that your trademark rights don’t extend to everyone who uses something vaguely similar to the words or designs in your trademark.

 

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