Death Defying Trademarks II

I just found out that CLAYMATION® is a registered trademark. Originally registered in 1981 by one of the minor deities of animation, Will Vinton, the registrations are now owned by Laika, Inc. Until I learned this fact, I assumed that “claymation” was the generic word for stop-motion animation using clay.

What other film industry words are trademarks instead of the generic word for the thing?

STEADICAM® for hand-held camera stabilizers has been a registered trademark since 1976. Who knew? Not me until I looked it up.

In the past I wrote about other trademarks that manage to avoid genericide: PING PONG®, REALTOR®, and CROCKPOT®. Here are some others I found surprising.

MACE® is a trademark for personal security sprays and is owned by Mace Security International, Inc. While we’re on the subject of self-defense, you should also remember that TASER® is a registered trademark for “less lethal weapons” owned by Axon Enterprises, Inc. Use goes back to 1974 and first registered in 1983.

BUBBLE WRAP® was first used as a trademark by Sealed Air Corporation in 1968. The mark was first registered in 1971 and remains a registered mark. If packaging trademarks are your thing, then remember that STYROFOAM® was first registered by The Dow Chemical Company back in 1948.

Big shout out to Maggie F. for letting me know Claymation® is a registered trademark, which led to this post.

Photo ©2010 Daniel Schwen.  Used under Creative Commons Attribution-Share Alike 4.0 International license.

Generic or Not

APPLE can never be a trademark for apples but you can have APPLE® as a trademark for computers.

The idea that the generic word for a thing can’t be a trademark for that thing is fundamental to what a trademark is:

A trademark is the exclusive right to use a word, phrase, symbol, design, smell, or sound to sell goods or services.

If one person has the exclusive right to use APPLE to sell apples, then what are other people who sell apples supposed to call them? Now you see why generic words can’t ever be trademarks.

Genericide is when a word starts off as a trademark and becomes the generic word. When a trademark becomes generic, the owner’s exclusive rights go POOF: One minute, the Dempster brothers own exclusive rights to DUMPSTER for “containers for receiving, transporting, and dumping materials” and the next minute, everyone’s allowed to use that word for those containers.

Here are some generonyms (words that were trademarks then became generic): Aspirin, granola, escalator, zipper, trampoline.

Other trademarks are vigilantly avoiding genericide: GOOGLE®, ZOOM®, COKE®, KLEENEX®, CROCK POT®, PING PONG®, XEROX®. Owners of those trademarks don’t want to lose the huge value those words have as trademarks.

Can you guess which of these are registered trademarks and which aren’t? Answers are below:

  • Dry ice
  • Allen for wrenches
  • Popsicle
  • Plexiglass
  • Comic-Con
  • Superglue
  • Onesies

Photo modified for use in featured image is CC0 1.0 Public Domain Dedication. Thanks to the photographer, Christian Hart, for placing his photo in the public domain. Mr. Hart does not endorse this blog, this post, or the modified use of his photo.

Dry ice – Dead since 1989. It was first registered by Dryice Corporation in 1925 for “carbon dioxide in solidified forms, mixtures, and compounds.”

ALLEN for wrenches. Allen Manufacturing Company first registered in 1969 based on first use in 1946.

Live applications and registrations owned by
San Diego Comic Convention, Inc.

POPSICLE – Still registered for “frozen confections” based on first use in 1923.

Comic-Con – Still a trademark but it’s complicated. San Diego Comic Convention, Inc. owns multiple registrations and applications for COMIC-CON (see list to the right) but there are others who have managed to get registrations in the same field, including: FLORENCE COMICCON; ROSE CITY COMIC CON; HUDSON VALLEY COMIC CON; LEBANON COMIC CON; BRONX HEROES COMIC CON.

Super Glue – No one has ever owned the exclusive right to SUPER GLUE for adhesives. Woodhill Chemical Sales Corporation had some limited rights between 1974 and 1981. Pacer Technology has a registration for THE ORIGINAL SUPER GLUE for “adhesive bonding agents” but had to disclaim their exclusive rights to SUPER GLUE. Meanwhile, Loctite Corporation owned a registration for “cyanoacrylate adhesives” for SUPER GLUE A DROP WILL DO- with no disclaimer of exclusive rights. Loctite abandoned that registration in 1992. Everyone since has had to disclaim exclusive rights to “super glue”.

Onesies – Gerber Products Company registered ONESIES in 1984 based on a first use in 1982. There’s still a live registration for ONESIES for “infant’s [sic] and children’s clothing” based on first use in 1982 and registered in 2002. Gerber has also registered ONESIES for “adult clothing . . . ” The record is littered with the corpses of dead applications trying to register ONESIES. The only one that made it through is a registration for ONESIE for beer owned by Lone Pine Brewing Company.

Hidden Meaning – Animal Edition

For today’s post, I scoured the earth (or at least the USPTO database) to bring you some really cool hidden animal imagery.

Do you see all three animals in the green and white logo for the San Diego Zoo Wildlife Alliance?

The Pittsburgh Zoo makes beautiful use of animal profiles to create the form of a tree.

Logos incorporating animals and negative space are used for everything from software to bull semen. Check these out.

The image of the top of this post incorporates the front of a dog really nicely. The registration of this logo was cancelled. I guess there wasn’t that much call for recycled labradors.

I love the colors and shading of this stylized bird logo for a software company. Sadly the application was abandoned.

The ibis head and beak incorporated into the leaf motif is so simple and elegant. It’s owned by Ibis Botanicals for herbal supplements.

How cool is this rendering of a dog head in the negative space of a leaping fish owned by John Griffin for backpacks?

Here’s another one that relies on simplicity. It’s owned by CRV Holdings and is for animal semen and artificial insemination services.

This pelican-head-forming-the-letter-P is owned by Wire Experts Group and is used to sell various types of wire.

This shark and pilot fish combo is used by Pilotfish to sell sunglasses and clothing.

Negative space and hidden imagery in logos is so distinctive and memorable. I never get tired of these. Do you have a favorite hidden imagery logo?

Thanks to Liz B. for bringing some more of these wonderful marks to my attention.

How to Do Everything Wrong

Near the beginning of 2022, a bunch of people who should know better, including indie record label owner Rory Felton, launched a website at hitpiece.com to sell . . . well, that’s not really clear.

Here’s what it said on the website: [1]

HitPiece lets fans collect NFTs of your favorite songs. Each HitPiece NFT is a One of One NFT for each unique song recording. Members build their Hitlist of their favorite songs, get on leaderboards, and receive in real life value such as access and experiences with Artists.

“One of One NFT for each unique song recording . . ..” So HitPiece is selling the only NFT for each song?

No. They aren’t. So they must be selling “real life value such as access and experiences with Artists . . .”

Nope. HitPiece never had a deal with the artists.

When recording artists got wind of what was going on, they were understandably quite a bit less than happy.

Let’s tally up what HitPiece did wrong:

1. Seriously pissed off everyone HitPiece needs to make happy in order for HitPiece’s business to succeed. After taking down the offending material, HitPiece’s website showed only this statement: “We Started The Conversation And We’re Listening.” Something about horses and barn doors comes to mind.

2.  Some of the names of the artists are trademarks so using those names in connection with selling anything related to entertainment is trademark infringement.

3. HitPiece was also probably using imagery from album covers, which would be copyright infringement. (Full images don’t appear on the WayBack Machine® for the site but it looks like they were.)

A hat trick of bad choices!

While it isn’t clear what HitPiece purported to sell, it’s painfully clear it never owned whatever it is. Brilliant.

Shout out to Cassandra G. for letting me know about this fiasco.


[1] Taken from an image of the HitPiece website from the WayBack Machine®.  https://web.archive.org/web/20220201212533/https://www.hitpiece.com/

I ❤️ Trademarks

Image for Reg. 3097782

The New York State Department of Economic Development owns 13 live registrations for I ❤️ NY in a variety of colors and orientations and for a bunch of different services and goods, including promoting tourism and a slew of swag.

The NYDED first used the mark in 1977.

Is it OK for someone to use I ❤️ BURLESQUE?

The answer to that question explains why I can’t know whether a trademark’s available without doing a comprehensive search. I can guess, but my guess isn’t always right.

Before digging into the Trademark Office database, I thought: The NYDED’s trademark is famous so anyone using something similar for any goods or services is going to be in a world of hurt.

Image for Reg 6390592

When I started digging, I was surprised to find there are lots of other registrations using the same design with the same color, orientation and font.

For example, there’s this trademark, which was registered in 2021 for T-shirts and other swag. The Trademark Office didn’t refuse to register this trademark and, even more surprisingly, the NYDED didn’t try to oppose it.

Based on that, I’d guess the I ❤️ ____________ motif is fair game as long as what’s in the blank isn’t already being used by someone else.

But, of course, I’d have to check the specific use for the specific goods just before filing, because it’s easy to be wrong when I guess.

Thanks for another great question from Cassandra G.

Crocs Or Not?

What brand is the shoe to the left?

What about the shoe on the right?

The shoe to the left is Loeffler Randall® brand.

The shoe to the right is Skecher® brand.

You probably aren’t alone if you thought both these shoes were Crocs® brand. In fact, Crocs, Inc. is suing Loeffler Randall and Skecher for trademark infringement.

Registration 5149328
Registration 5273875

Crocs Inc. owns more than 30 U.S. trademark registrations, including two for the designs on the shoe. Here are the images and the written descriptions that are part of the registrations:

  • “13 round holes on the horizontal portion of the upper of the shoe”
  • “a textured strip along the vertical portion of the upper having a pattern of 7 trapezoidal openings”

Does that mean the Loeffler Randall shoe isn’t infringing because it has 15 holes? And the Skecher shoe isn’t infringing because it doesn’t have 7 trapezoidal openings?

The defendants will make those arguments but, remember, in order to be infringing, the other shoes don’t have to been an exact match, they only have to be “confusingly similar.” If you and other consumers are likely to think the shoes are Crocs brand shoes, Crocs Inc. could win.

It’s going to be expensive for Crocs Inc. to defend its registrations but, with trademarks, it’s either defend it or lose it. With a ruling in hand, Crocs Inc. can have U.S. Customs stop shipments at the border, making it easier for Crocs to keep the design trademarks strong.

Big thank you to Liz B. for the email that led to this post.

Girl Scouts vs. Boy Scouts

Who gets to use SCOUT for activities for girls?

  • In 1916, Congress formed the “Boy Scouts of America” and granted it the exclusive right to use the trademarks it adopts.[1]
  • In 1950, Congress formed the “Girl Scouts” and granted it the exclusive right to use the trademarks it adopts.
  • In 2017, the BSA starting allowing girls to join to stop the hemorrhaging of their membership.[2] Soon after, the BSA ran an ad campaign using SCOUT ME IN and renamed its scouting program SCOUTS BSA so it didn’t include the word “boy.”[3]

The Girl Scouts has asked a court to rule that BSA’s use of SCOUT to market to girls violates the Girl Scouts’ trademark rights.

The BSA and the Girl Scouts can’t both have exclusive rights to SCOUT, so the rights must be divided between them in some way. This isn’t as unusual as it sounds: Mars owns the exclusive rights to DOVE for chocolate and Conopco Inc. owns the exclusive right to DOVE for soap.[4]

So what rights did Congress actually give each organization?

  • The purpose of the BSA is to “promote . . . the ability of boys . . ..”[5]
  • The purpose of the Girl Scouts is to “promote . . . qualities . . . among girls . . ..”[6]

SCOUT for boys belongs to the BSA. SCOUT for girls belongs to the Girl Scouts. The BSA needs to knock it off.

Shout out to Cassandra G. for bringing this story to my attention.

Big thanks to Liz B. who found the information about the history of the statutes.


[1] The trademark rights for BSA and Girl Scouts, while included in the Trademark Office database, actually stem from acts of Congress and it’s there we need to go to look for answers. The statutes that created the corporations for BSA and the Girl Scouts each granted them the “exclusive right to use emblems, badges, descriptive or designating marks, and words or phrases [it] adopts. 36 U.S. Code §30905 for the BSA. 36 U.S. Code §80305 for the Girl Scouts.

[2] Both the Girl Scouts and the BSA are struggling. The number of kids signing up for scouting was dropping before COVID-19 and went into free fall after. The BSA’s problems are compounded by issues stemming from sexual abuse and homophobia.

[3] Much like KENTUCKY FRIED CHICKEN changed to KFC because “fried” became a negative word and they were tired of being thought of as serving only chicken.

[4] The Trademark Office allows companies to share a trademark in the way BSA and Girl Scouts share SCOUT only in very special circumstances. In this instance, the sharing was created, literally, by acts of Congress and we have to make the best of it.

[5] 36 U.S. Code §30902. “The purposes of the [BSA] are to promote, through organization, and cooperation with other agencies, the ability of boys to do things for themselves and others, to train them in scoutcraft, and to teach them patriotism, courage, self-reliance, and kindred virtues, using the methods that were in common use by boy scouts on June 15, 1916.”

[6] 36 U.S. Code §80302: “to promote the qualities of truth, loyalty, helpfulness, friendliness, courtesy, purity, kindness, obedience, cheerfulness, thriftiness, and kindred virtues among girls, as a preparation for their responsibilities in the home and for service to the community . . ..” The comparison of this to the purpose of the BSA makes me physically ill. Boys are taught courage. Girls are taught obedience. Boys are taught scoutcraft. Girls are taught purity. Boys are taught self-reliance. Girls are prepared for their responsibilities in the home.

Boozemarks

Can you identify your favorite brand of gin just by seeing the bottle from across the bar?

Trademarks exist to help consumers find their favorite brand.

If a consumer’s likely to see your product lined up against competitors on the shelf of a liquor store or bar, you need to find a way to stand out and be visible and memorable in that setting.

The images to the left are just a few of the more than 400 registered trademarks for booze bottle shapes at the U.S. Trademark Office.

Do you recognize Hendricks® and Tanqueray® gin among these bottles?

Other companies use a distinctive cap or stopper to make their product memorable in the milieu where booze regularly competes.

Still others use unusual wrappings or labelings. The red wax that coats the lid and neck of a bottle of Maker’s Mark® is one of the most famous marks in the U.S. Basil Hayden’s® distinctive packaging isn’t quite as famous but easily recognized by its fans.

Finally, there are two, count ’em, two touch marks for alcoholic beverages.

The David Family Group has a registration for the “leather texture wrapping around the middle surface of a bottle of wine.”

Kiku-Masamune Sake Brewing Co., Ltd. has a registered trademark for a highly-memorable “rough wood-like texture and green smooth, bamboo-like texture on a label surrounding a bottle of sake in the shape of a small wooden barrel.”

How does your branding help you stand out where it counts?

Shout out to Rebecca M. for sending me an article that led to this blog post.

Bootlegging and Trademark Infringement

Between 2017 and 2020, Washington DC’s Fraternal Order of Police Lodge bought over 3,000 bottles of Jack Daniel’s® whiskey, engraved the bottles with the Lodge’s logo, and resold them at a mark-up.

A Washington Post article correctly points out that the police were running an illegal interstate liquor sales operation, which is certainly newsworthy, but . . .

What about the trademark infringement!!!!!!!!!!!!

Logo used by the Lodge in ads.

Infringement 1: I’ve written about after-market additions to goods and packaging before. Engraving the Lodge’s logo on the Jack Daniel’s bottles falls on the wrong side of that line and is probably infringing.

Infringement 2: The Lodge ran Facebook® ads featuring the stylized version of the JACK DANIEL’S trademark at the top of the ads. A non-infringing use would just have mentioned that the whiskey is Jack Daniel’s brand in the same size and style of font used for the rest of the ad copy.

Infringement 3: The ads read:

“The Fraternal Order of Police D.C. Lodge #1 has partnered with The Jack Daniel’s Distillery in Lynchberg, TN to create very limited edition bottles . . ..”

Any reasonable consumer would think Jack Daniel’s was officially participating in the illegal sale of alcoholic beverages. It’s hard to imagine a more clear-cut case of tarnishing.

Way to go, D.C. police lodge: Illegal interstate sales of alcohol and trademark infringement.

Shout out to Liz B. for the heads up on the WaPo article.

A Box of Toys

Pretend you own a box of toys that contains:

  • A baseball
  • An Etch-A-Sketch®
  • A Barbie® doll
  • Some Lego® bricks
  • A jump rope

I decide I want some of your toys. We write up a contract that says I get the baseball, the jump rope, the Barbie doll, and the Lego bricks. The contract says you get to keep the Etch-A-Sketch.

Many years later, we realize there was also a baseball mitt in the toy box that neither of us knew was there.

Who owns the baseball mitt? Me or you?

That’s what’s happening in the dispute between Miramax and Quentin Tarantino. They have a contract that says which Pulp Fiction stuff Tarantino kept and which he transferred to Miramax. Tarantino’s now selling NFTs relating to Pulp Fiction. The contract didn’t say anything about NFTs because NFTs didn’t exist.

Who gets the NFT rights?

It depends how you look at it.

Miramax says NFT rights are like copyright and the copyrights were transferred to Miramax, so Miramax owns the right to create and sell NFTs.

Toy box translation: The contract says Miramax got the baseball, so surely the mitt goes with it.

Tarantino says anything not specifically mentioned to be transferred stays with him.

Toy box translation: The contract didn’t say anything about a mitt, so it belongs to Tarantino.

This isn’t the first time this issue is being raised and it won’t be the last. How do you think the issue should be resolved?

Shout out to Cassandra G. for yet another great question.

Featured image credit: © 2019 NFT MCH+ used under Creative Commons Attribution-Share Alike 4.0 International license via Wikimedia Commons.