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

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.

Acquired Distinctiveness

If your trademark is “merely descriptive,” the Trademark Office will reject your application to register it. You can’t register:*

  • Tears In a Bottle for eyedrops
  • Two Drawers On Wheels for a rolling file cabinet
  • Fresh Brewed & Hot for a coffee shop

But, if you start using that trademark, make sure other people don’t use it, and reach the point where consumers associate what was once just a descriptive word or phrase with you and only you, then you can get a trademark registration.

Trademark lawyers refer to that as “acquired distinctiveness.” Your trademark was “merely descriptive” but it “acquired distinctiveness” and now you can get the exclusive rights to use it.

That happened recently with CHUNKY for soup.

In 2013, CSC Brands LP (Campbells Soup Company) filed two applications to register trademarks that included CHUNKY and in both cases the Trademark Office examiner refused to grant CSC Brands exclusive rights to CHUNKY because it was “merely descriptive” of soup.

In 2018, CSC Brands tried again and were able to get a registration because they were able to show that CHUNKY, once merely descriptive, had acquired distinctiveness: People now associate that word with a particular company for soup and not just any soup that happened to be chunky.

I don’t usually recommend going with a “merely descriptive” trademark but it can sometimes work out.

 

 

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*This isn’t entirely true. Sometimes you can register the trademark on the “Supplemental Register” of the Trademark Office. You get to use the ® symbol and it sets you up to get a registration on the Principal Register later on.

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.

 

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*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

 

 

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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Insomnia Cookies® and Momspit®

Some companies just nail the trademark choice.

They hit that sweet spot between coming right out and saying what they are (think Pizza Hut®) and having a trademark that tells you nothing at all (think Starbucks®).

In the trademark world, that sweet spot is called a “suggestive” trademark.

Suggestive trademarks are unlike any other kind of trademark. They “require imagination, thought, or perception . . ..” unlike a descriptive trademark “which immediately tells something about the goods or services.”*

Here are some of my favorite suggestive trademarks:

  • Insomnia Cookies®
  • Momspit™
  • Soylent®
  • Nest®
  • Roomba®
  • Smartmouth®

Each one gives you just a faint idea of what it is and what it stands for. Each pops up in the corner of the customer’s eye and reels her in. Great suggestive marks contain some or all of these elements:

  • Incongruity – The trademark contrasts with the product or service in some way.
  • Humor – The trademark makes you laugh because of the incongruity or surprising connotation.
  • Stickiness – The incongruity, humor, or another element of the trademark makes the trademark easy to remember and distinguishes it from the trademarks of competitors.
  • Relatability – The trademark reaches your memories or feelings in a direct way.
  • Imagination or mental pause – There may be a moment between hearing or seeing the trademark and fully grasping all of the connotations and hidden meanings.

It’s crazy hard to think up a suggestive trademark, but it’s worth its weight in gold.

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*Trademark Manual of Examination Procedure Section 1209.01(a)

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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The World’s Best Trademark Blog

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We all know the feeling. A newspaper writes a story on a topic we know well and it’s so bad it isn’t even wrong.[1]

The Washington Post headline was “Whole Foods just got called out for a pretty big exaggeration.”[2]

It’s all about Whole Foods trying to register WORLD’S HEALTHIEST GROCERY STORE as a trademark. The Post wants us to believe that the Trademark Office rejected the application because Whole Foods couldn’t prove it actually is the world’s healthiest grocery store.[3]

The US Trademark Office doesn’t care about the truth of a trademark[4] and the Trademark Office examiner never said anything about truth. The examiner challenged the application because:

  • the trademark is “merely laudatory”; and
  • trademarks that are “merely laudatory” are considered descriptive; and
  • descriptive trademarks can’t be registered unless certain other requirements have been met (none of which have anything to do with whether the words in the mark are true).

The Federal Trade Commission DOES care about the truth of advertising claims, but even the FTC doesn’t care about “puffery.”[5] “World’s healthiest grocery store” is an excellent example of puffery.

Bizarrely, the Post went on for paragraphs about how Whole Foods can’t be the world’s “_____est” anything because it didn’t have a significant presence outside the United States. I don’t see why even a single stand alone store can’t objectively be the “world’s ______est store.”

This article was the worst thing that’s ever happened in the whole world.

 

[1] With apologies to Wolfgang Pauli.

[2]Here’s the article.

[3] The Post article said: “The [Trademark Office] said it rejected the trademark because it makes a ‘laudatory’ claim, or is based on exaggerated praise that can’t be proven or has not been proved true.”

[4] There are some limited situations when the Trademark Office cares about truth. For example, you can’t include a place name in your trademark if it would make people think your product came from that place when, in fact, it didn’t. “Made from California grapes” couldn’t be used as a trademark for a jelly made with grapes grown in New York.

[5] Puffery is a promotional statement that expresses subjective views that no reasonable person would take literally. For example, see this blog from the FTC.