Decades Spent Running in Place

A while back I wrote about a relatively new company that sells raw cookie dough using the brand DŌ. I said that DŌ will never have viable rights to its brand because DŌ (however it’s spelled) is just the generic word for its product.

“But surely,” I hear you say, “Decades from now DŌ will have rights.”

‘Fraid not.

Vitamin Shoppe Procurement Services, Inc. and its predecessor have been using THE VITAMIN SHOPPE as a brand since 1982. At one point, it even managed to get some trademark registrations.*

In February 2016, it filed four new applications to register THE VITAMIN SHOPPE together with its new stylized V design and new font.

The examiner at the Trademark Office says Vitamin Shoppe “must disclaim the wording ‘THE VITAMIN SHOPPE’ because it is a generic designation for applicant’s goods and services and is thus an unregistrable component of the mark.”

That means that the Trademark Office won’t give Vitamin Shoppe the exclusive right to the words THE VITAMIN SHOPPE even after more than 35 years of continuous use.

It makes sense. No one should have the exclusive right to the word “shop” (however it’s spelled) for retail services and no one should have the exclusive right to the word “vitamin” for vitamins.

After 35 years, THE VITAMIN SHOPPE is still barely defensible. An asset that could have acquired significant value during that time has instead languished all because of one bad decision.

 

bl_brandfooter

 

 

*Below is a list of the earlier registrations. The ones from 2001-2003 include “disclaimers,” meaning that the owner isn’t claiming to have exclusive rights to the disclaimed word or words. The two registrations from 2006-2007 don’t have disclaimers. I disagree with the trademark examiner who reviewed those two registrations. You can’t overcome “genericness” with acquired distinctiveness. As the examiner of the recent applications says: “[N]o amount of purported proof that a generic term has acquired secondary meaning can transform that term into a registrable trademark or service mark.”

Words Products & Services Disclaimer Reg. Year
THE VITAMIN SHOPPE SINCE 1977 vitamins

 

(Applicant claimed “acquired distinctiveness”.) 2007
THE VITAMIN SHOPPE SINCE 1977 retail store services (Applicant claimed “acquired distinctiveness.”) 2006
THE VITAMIN SHOPPE SINCE 1977 retail store services No claim is made to the exclusive right to use “vitamin” apart from the mark as shown. 2003
THE VITAMIN SHOPPE SINCE 1977 vitamins No claim is made to the exclusive right to use “vitamin” and “since 1977” apart from the mark as shown. 2003
THE VITAMIN SHOPPE retail store services No claim is made to the exclusive right to use “vitamin” apart from the mark as shown. 2001
THE VITAMIN SHOPPE vitamins No claim is made to the exclusive right to use “vitamin” apart from the mark as shown. 2001

 

 

Oh No, DŌ!

There’s a really long line outside a shop that just opened in my neighborhood. And there should be, because the product is super yummy and everything about the packaging and delivery is spectacular, except . . .

Oh no, DŌ.

The owner of the shop, Cookie Dough, Inc., filed two applications with the Trademark Office to register DŌ for:

“Cookie dough; Cookies; Bakery goods and dessert items, namely, cakes, cookies, pastries, candies, and frozen confections for retail and wholesale distribution and consumption on or off the premises; Edible cookie dough not intended for baking; Frozen cookie dough.”

Unsurprisingly, the Trademark Office is refusing to register DŌ on a variety of grounds, including that “the applied-for mark appears to be generic in connection with the identified goods and, therefore, incapable of functioning as a source-identifier for applicant’s goods.”

In other words, Cookie Dough, Inc. can’t have exclusive use of the word “dough” for selling dough because people who sell dough, need to be able to say “dough” when selling dough. And in the world of trademarks “dough” and “DŌ” are the same thing.

DOThis is such a terrible shame, because they’re going gangbusters and I suspect they’re getting a lot of buzz. It’s just so sad to have to deal with a risk that could have been avoided, especially when everything else about the business idea and execution are so awesome.

 

bl_brandfooter