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”).”

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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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.

Branding by [Pretending to Have] No Brand

You can never ever have trademark rights to the generic name for your product: You can’t have WASTE BASKET brand trashcans.

But what about using words that literally mean “generic” as a trademark?

Back in the early 1980s, a company began selling GENERIC brand products. The idea was that the products weren’t advertised so they would cost less than “brand-name” products, but of course there was a brand and the brand was GENERIC along with a UPC barcode for a logo.

Now there’s a brand called BRANDLESS.

Brandless, Inc. has a trademark registration for BRANDLESS for a metric assload of products from shampoo to paper towels to snack foods and online retail sales. Brandless, Inc. is also trying to register its logo which includes the “TM” symbol.

Brandless.png

The Trademark Office examining attorney is insisting that Brandless remove the “TM” from the logo.

Sharona Katan, Brandless, Inc.’s attorney makes very compelling arguments for including the “TM” as part of the trademark. “TM” is part of the joke. It’s the ironic juxtaposition of the TM and the word BRANDLESS that is recognized by consumers as being from this particular company.

Ms. Katan cites a dazzling array of circumstances when companies have included TM in their registered trademarks. Here are some of them:

Screen Shot 2019-02-27 at 3.33.11 PM.pngScreen Shot 2019-02-27 at 3.32.32 PM.png

       Screen Shot 2019-02-27 at 3.31.41 PM.png                Screen Shot 2019-02-27 at 3.34.07 PM.png

 

Unfortunately, the Trademark Office didn’t agree with Ms. Katan’s arguments. Brandless, Inc. elected to voluntarily remove the TM from the application which, from choose-your-battles point of view, probably makes a great deal of sense.

 

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What Do I Do Now?

You just found out you have to change the brand you use for your business. Maybe you got a cease and desist letter telling you that you’re infringing on someone else’s trademark rights. Maybe your lawyer pointed out that your brand is generic or “merely descriptive” and that you’ll never be able to stop other people from using the same words to sell their stuff.

What now?

Step 1 – Coming Up With Your New Trademark

Rebranding is time-consuming and expensive, so you want to be certain to get it right this time. Learn what mistakes to avoid and what makes a safe, strong trademark.

Beeline®_fullcolor_h BIGGER copy.pngThe most successful entrepreneurs know what they do well and don’t do well and hire someone for stuff they don’t do well. When I started my business, I hired Axio Design to come up with BEELINE and my Happy Bee logo.

Remember not to get attached to anything until you know it’s good to go. You’re probably going to need more than one idea before you find something that’s available.

Step 2 – Transitioning To Your New Brand

There are different approaches to transitioning from your current brand to a new one. You can use do it all at once, like ripping off a Band-Aid® or, if you have the luxury to change gradually, you can transition from the old to the new, in a way that preserves the value you built into the old brand.

Either way, you should make the change an opportunity to create a splash and reconnect with your customers and market. Lemonade from lemons.

 

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A Novel Way to Waste Money

You can’t ever get trademark rights in the generic word for what you’re selling:  No DŌ brand cookie dough.

But what if you really want a registration? Can you just register the trademark for some other product? Can you Register DESK for window screens even though you’re selling desks, just so you have a registration?

Front of box.pngSounds ridiculous, right? But that didn’t stop Jacquelyn De Jesu from registering SHHHOWER CAP for “textile fabric for use as a textile in the manufacture of a noise reducing headpiece.”

Check out the packaging for her product. Is this a “noise reducing headpiece” or a shower cap? I count three times that the product is called a shower cap and only one reference to the fact that it’s less noisy that a traditional shower cap.Back of box.png

There are at lots of reasons not to follow Ms. De Jesu’s example. Let’s just consider two.

It’s a complete waste of time and money.

If she ever decides to go after someone for using the words “shower cap” to sell a shower cap that person will point out that he isn’t selling a “noise reducing headpiece” and go right on using “shower cap.”

Screen Shot 2018-05-24 at 4.35.29 PM.png

Loss of Opportunity

Ms. De Jesu wasted an opportunity to establish a brand. If these “noise reducing headpieces” catch on and she decides to sell bathmats, what’s she gonna do, sell SHHHOWER CAP brand bathmats?

So, yeah, you can get the registration and maybe trick a few people into thinking you have rights, but the only person you’re cheating is yourself.

 

 

 

 

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Bad Decisions Part One

Pick a great trademark. Register it.

Sounds easy but people get it wrong all the time. Today, we’ll focus on mistakes people make when they pick a trademark. The next post will focus on mistakes people make when they try to register their trademark.

I’m picking a trademark so that everyone will know what we sell right away.

There are so many problems with this:

  • At best your trademark will be incredibly weak and virtually indefensible. At worst, it won’t have any rights at all. Like FLAT FIX.
  • Everyone will confuse you with everyone else. Which of these is the most memorable: Staples® OfficeMax® or Office Depot®?
  • You’ll be locking yourself into whatever you describe so that your brand can’t grow and change as your business does.

I’m naming it after myself.

Trademarks that are proper names are weak, both legally and from a marketing perspective. They also involve risks that other trademarks don’t have:

If those ideas are bad, what should you do?

Pick a trademark that tells your customers how they’ll feel or what they’ll experience when they use your product or service: Nest®; Sir Kensington’s®; Roomba®. A suggestive trademark is easy to defend and a marketer’s dream. Go suggestive. You’ll never regret it.

 

 

Big shout out to the members of Pilotworks in Brooklyn, for suggesting this topic! What do you want to know about?

 

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A World Without Trademarks

We almost never personally know the person who makes the things we buy and, yet, we blithely go into the world and buy stuff.

That would be insanely more difficult without trademarks.

Imagine a trip to the grocery store where the packages identify the contents with generic names but nothing else.

You liked the IPA you bought last week. Is the bottle that says “IPA” from the same brewery? That TP was soft and yet strong. I wonder if this package labeled “toilet paper” is the same stuff?

Maybe you fall back on knowing the grocer personally and that she stocks stuff only from reputable suppliers, but last week you bought three cans of tomato soup. They were all good, but one was creamier, just the way you like it. Here you are facing a shelf of cans marked “tomato soup.” Which have the soup you like?

It’s hard enough to imagine traditional commerce existing without trademarks, but how would e-commerce ever work? What good is a product review without branding? How much confidence would you have in the goods you’d receive from Amazon® or PeaPod® without being able to order by brand?

We sort of know how it would be. Not many people are comfortable ordering produce online because the brand doesn’t really tell you whether the item is overripe or has been mishandled.

Now imagine that every purchase was as involved as finding that perfect peach.

Trademarks are awesome.

 

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Grow or Go to Zero

What business doesn’t want its assets to grow over time?

The choice you make at the start can have a huge impact on whether the value of your trademark will grow or wither.

Chart

If you start with a wonderful trademark like Nest®, Staples®, Google® or Moo®, the sky is the limit for trademark value. Whether the mark actually attains that value depends on lots of things, but at least there’s nothing about the trademark itself that will hold you back.

If you start with a trademark that:

  • Consists of words that everyone and her brother are using, like Office Depot® or United®; or
  • Merely describes what you sell, like Radio Shack® or Century Theatres®; or
  • Is already owned by someone else;

then you’re starting with two strikes against you. Your trademark will be at best neutral and at worst a liability.

Coming up with a clever trademark is hard. Coming up with a trademark that is clever and that no one else is using is even harder but, isn’t it worth it so you don’t have to worry about its holding you back? Isn’t it worth the effort and the cost to get this one thing right at the beginning?

 

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Google Genericide

In 2012, Chris Gillespie registered 763 domain names that included the word “google.”[1]

A few months later, Google took ownership of all of them using a special rule called “UDRP,” which is available only to registered trademark owners.[2]

Gillespie then tried to deregister two Google trademark registrations, claiming that GOOGLE had become generic.[3]

As we’ve already seen, if your product name becomes the generic word for the product you’re selling, you can lose your rights and your registration: linoleum, yoyo, cellophane.

Gillespie submitted the results of a Thermos survey[4] to show that “a majority of the relevant public uses the word ‘google’ as a verb – i.e. by saying ‘I googled it.’”[5]

The Ninth Circuit looked at the evidence Gillespie provided and asked whether the GOOGLE trademarks had “taken the ‘fateful step’ along the path to genericness.” Was the “primary significance” of Google “the name for a particular type of good or service irrespective of its source.”[6]

The court made it clear that just because someone uses a trademark as a verb, she isn’t necessarily using it a generic word: We have to explore what’s her mind. What does she mean when she says: “I googled adorable cat pictures”?

  • I used Google to search for adorable cat pictures.[7]
  • I used a search engine to search for adorable cat pictures.[8]

If she means the first sentence, she’s not using GOOGLE in a generic way.

The court said that Gillespie’s suit “cannot survive . . . based on ‘sheer quantity’ of irrelevant evidence”[9] showing that people “verb” Google. The surveys needed to be worded in a way that reveals what’s in the speaker’s mind.

So, go ahead and Beeline that trademark. Just be sure and do it at beelinelegal.com.

 

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[1] For example: googledisney.com; googlebarackobama.net; googlenewtvs.com.

[2] The Uniform Domain Name Dispute Resolution Policy or URDP. You have to own a trademark registration that predates the offending domain name registration in order to use UDRP.

[3] Mr. Gillespie actually joined an existing lawsuit that had already been filed by David Elliot. Both the UDRP proceeding and the lawsuit involved registrations 2884502 and 2806075. Elliot v. Google, Opinion issued May 16, 2017, page 4.

[4] Gillespie’s Thermos survey asked 251 respondents: “’If you were going to ask a friend to search for something on the Internet, what word or phrase would you use to tell him/her what you want him/her to do?’ Over half of the 251 respondents answered this question by using the word ‘google’ as a verb.” Elliot v. Google, Opinion issued May 16, 2017, page 15.

Google used a Teflon survey: “A Teflon survey begins with a brief lesson explaining the difference between brand names and common names. It then asks respondents to classify a series of words, including the trademark at issue, as either brand names or common names. In response to Google’s Teflon survey, a little over 93% of respondents classified ‘Google’ as a brand name. Most respondents also classified ‘Coke,’ ‘Jello,’ ‘Amazon,’ and ‘Yahoo!’ as brand names, and classified ‘Refrigerator,’ ‘Margarine,’ ‘Browser,’ and ‘Website’ as common names. Unlike [the] Thermos survey, Google’s Teflon survey offers comparative evidence as to how consumers primarily understand the word ‘google’ irrespective of its grammatical function.” Elliot v. Google, Opinion issued May 16, 2017, page 16. Internal citations omitted.

[5] Elliot v. Google, Opinion issued May 16, 2017, page 5.

[6] Elliot v. Google, Opinion issued May 16, 2017, page 7. Emphasis added.

[7] This is called a “discriminate verb.”

[8] You guessed it: This is called an “indiscriminate verb.”

[9] Elliot v. Google, Opinion issued May 16, 2017, page 20.