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.

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.

Trademark Bullies Strike Again

Some trademark owners are bullies:

Other trademark owners are legitimately aggressive in protecting their rights:

Here are some of the logos Apple, Inc. has gone after in one 12-month period.

What do you think? Is Apple, Inc. a bully or legitimately protecting its rights?

To answer that question, we should start with a comparison of the marks themselves and then compare the goods and services sold under the marks we’re comparing.

Here’s Apple Inc.’s logo. Would someone looking at the logos pictured above think of Apple, Inc.?

Here are the goods and services sold under the logos pictured. Which of these are similar to the goods and services sold by Apple, Inc.?

  • Meal planning app
  • Sales of computers and phones
  • Weight loss consulting services
  • Case management services to people with disabilities
  • Test preparation services
  • Sex coaching services
  • Online grocery store services
  • Speech-language pathology services
  • Occupational therapy services
  • Health counseling
  • Psychological counseling
  • Primary and secondary school education

Trademark owners should protect their rights but always with an eye toward whether there’s a genuine likelihood of confusion. So waddaya think, bully or not?

Thank you to Murray L. for the suggestion that led to this post.

Sound and Smell Trademarks

When most people think of trademarks, they think of words like Coke® or logos like the Nike® swoosh but trademarks can be anything that tells you where a product or service came from, like the shape of a bottle or building, or a sound or smell.

We can track the rise of sound and smell trademarks because they are filed under “Mark Drawing Code 6” for “situations for which no drawing is possible.” The first application under Mark Drawing Code 6 was filed in 1947. Here’s how the trademark is described:

The mark comprises the musical notes G, E, C, played on chimes.

Can you figure out what this very familiar trademark is just from the description? If not, try singing or whistling it or you can just check out the answer below.

Screen Shot 2019-04-24 at 9.33.03 AM.png

There were only two applications for sound and smell trademarks filed in the 1940s.

There was a total of twenty filed from 1950 through 1989, then things really took off.

So far in the 2010s, there have been 308 applications filed for “situations for which no drawing is possible.”

You are immersed in these sounds all day. Can you identify these familiar sound marks? (Answers are below.)

 

How many could you guess? How many others can you think of?

 

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The musical notes played on chimes is the NBC trademark.

The other sound marks are:

  • An Apple® computer booting up.
  • The THX® sound system for theaters.
  • The Pillsbury® Doughboy® giggling.
  • The Tarzan yell.

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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The Right to Poke Fun

My Other Bag prints sketched images of iconic handbags onto canvas totes. The bags are brilliant, funny, and flattering.

Louis Vuitton sued My Other Bag for trademark infringement.[1] The courts ruled for My Other Bag.[2]

It’s incredibly hard to properly parody a trademark. For the joke to work, the image of the trademark being parodied has to be recognizable. But, if it’s too convincing, you’re infringing. As the Court of Appeals said, My Other Bag managed to convey “two simultaneous—and contradictory—messages: that it is the original, but also that it is not the original and is instead a parody.”[3]

A few years ago, Louis Vuitton sued Warner Brothers over a joke in a movie. The Hangover: Part II included a scene where a character was established as an uncool wannabe by showing him carrying a knockoff of a Louis Vuitton bag. Louis Vuitton lost that case, too.

If you own a famous trademark, it’s important to protect your rights, but it’s equally important to have a sense of humor so you can tell the difference between infringement and permissible parody.

In both the Warner Brothers and the My Other Bag cases, the viewer had to acknowledge that Louis Vuitton was a highly desirable, iconic, luxury brand and that the thing she was looking at wasn’t an actual Louis Vuitton. That’s the key to the distinction.

If Louis Vuitton had a sense of humor, it could avoid looking like a bully and get free favorable publicity. Sounds like a good outcome for everyone to me.

 

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[1] The suit also included a claim for copyright infringement. I’m not going to discuss that here, except to say that it was shot down by the court, too.

[2] The United States District Court for the Southern District of New York (Jesse M. Furman, Judge) granted My Other Bag a summary judgment on all claims on January 8, 2016. The United States Court of Appeals for the Second Circuit affirmed the judgment as to all claims on December 22, 2016.

[3] Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 503 (2d Cir. 1996) (quoting Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ’g Grp., Inc., 886 F.2d 490, 495 (2d Cir. 1989)).

Photo copyright My Other Bag. Used with permission.

Buildings, Bottles and Pockets

Trade dress can be a trademark and can be registered.

How nice. What the hell is trade dress?

Trade dress is the visual appearance of a product or its packaging that’s not functional.

Great. Clear as my aunt’s cataracts.

Let’s try some examples.

A non-functional aspect of a building can be trade dress. You can’t register the fact that your building has a roof, because buildings need to have roofs, but the blue roof of an IHOP® or the orange roof of Howard Johnson’s® can be (and are) trademarks because roofs don’t have to be a color.

Apple Store

 

My favorite “building marks” are the glass cube Apple® Store and Al Johnson’s Swedish Restaurant and Butik® that registered “goats on a roof of grass.”

 

 

Did you say “goats on a roof of grass”?

Yes. Yes, I did.

Goats on roof

Urban Outfitter door

 

There’s also the door of seemingly broken glass used by Urban Outfitters® in some locations.

What else can be trade dress besides buildings?

Hendricks

The shape of a bottle has been and continues to be important for both beverages and perfumes. Excellent examples are the shape of a Coke® bottle, the shape of a Hendricks® gin bottle, and the iconic shape of the bottle for Chanel No. 5®.

Levi pocket

 

Pockets on pants are functional, so you can’t have trademark rights in pockets, but you can register the shape of pockets, the stitching, and the placement of the label with the pocket. Here’s Levi’s® registered trademark.

Trade dress. Cool stuff, huh?

 

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