Trademark is NOT a Verb

“We trademarked that phrase.”

“I really want to trademark this word.”

I’ve almost stopped worrying about this jarringly wrong usage.

Almost.

But I can’t let it go, because it’s more than grammar.

You can say: “I want to patent this invention” because the U.S. government will actually create rights where none existed and then grant those rights to you. “Patent” as a verb means to obtain a patent for an invention.

But you can not say: “I want to trademark this word” because the U.S. government can only acknowledge rights you already have. You can say: “I want to register this trademark.”

How much does it matter? Remember Doug Lehocky, the dude who spent about $50,000 to file more than 150 applications to register things like APPLE.COM and MICHAEL JACKSON?It’s clear that Mr. Lehocky thinks the Trademark Office is like the Patent Office: You ask them to give you exclusive rights to a trademark and they conjure those rights out of air and award them to you.

But that’s not how it works. An understanding of this distinction would have saved Mr. Lehocky $50k.

To register a trademark, you first create your own rights by using the trademark to sell stuff. Then you ask the Trademark Office to check out what you’ve done. If the Trademark Office agrees you’ve created those rights, then it will register the rights so it’s easier for you to enforce them.

So don’t use “trademark” as a verb. OK?

I’ll shut up now.

 

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The World’s Best Trademark Blog Part II

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In my last blog I talked about how the Trademark Office doesn’t care whether Whole Foods actually is the WORLD’S HEALTHIEST GROCERY STORE. In fact, lots of registered trademarks include “merely laudatory” words or statements, and that’s perfectly OK under trademark law.

Here’s just a tiny sample of the registered trademarks that are laudatory claims:

  • The Toughest Name in Tools®
  • The Toughest Tournament in the Universe®
  • The World’s Toughest Cigarette Machine®
  • The Toughest Sport on Wool ®
  • The Strongest Name in Rope®
  • The Greatest Show on Earth®
  • Fastest Oil Change on the Planet®
  • The World’s Smallest Exercise Machine®

Why does the Trademark Office allow these? Isn’t it misleading consumers?

First, as I said in my last blog, it’s not the Trademark Office’s job. Vetting the truth of advertising is the job of the Federal Trade Commission.

Second, consumers don’t take these kinds of statements as factual. It’s the kind of harmless “puffery” we expect in advertising. We sense they aren’t meant literally.

Compare those hyperbolic statements to these:

  • #1 Doctor Recommended Brand®
  • #1 Pediatrician Recommended Brand®
  • Stronger than Stainless Steel®

A reasonable person would probably think these have some science, testing, or truth behind them. The coating materials sold by Fused Armor, Inc. better produce something that’s actually stronger than stainless steel in some reasonable comparison, or you’re going to feel like they lied to you.

It does make you wonder then about the application by Kings County Bar to register “Smallest Penis in Brooklyn.” Hmmmmm. Laudatory or true?

 

Just Don’t Do It

Coca-Cola® can. Samsung® can. McDonald’s® can.

Your company can’t.

So just don’t mention that big event going on down in Brazil. Not in your ad, not in your company’s tweet, not on your company’s Facebook page.

Unless you’re actually the United States Olympic Committee or an official sponsor, just stay a million miles away from all the words and all the symbols. If you’re Wham-O® don’t make a pretend symbol out of five Hula Hoops®.

And don’t even think about trying to use or register a trademark that includes the word OLYMPIC, unless you want to join the almost 500 other applicants who now have dead applications as a reward for their attempt.

How fast will your application die? Fast. Sarah Elizabeth Mason filed to register NERD OLYMPICS on May 4 of this year. She expressly abandoned that application before the month was out: May 31. Didn’t even live long enough to be rejected by an examiner.

An application to register Music Olympics was filed on July 25. That might live a little longer, but only because all of the lawyers are busy going after misuse of their trademarks in social media.

So, Just Don’t Do It.

Power to the People

A snippet of open source code goes dark, causing hiccups to websites like Facebook®.

Why?

Because of an argument over trademarks. Yeah, trademarks. Here’s what happened.

The code’s owner, Mr. Azer Koçulu, named his open source software package KIK.

KIK Interactive Inc. wrote him a friendly email[1] asking him to rename his package because they had lots of trademark registrations for KIK for software.

Mr. Koçulu literally told KIK Interactive “fuck you.” KIK Interactive contacted the node package manager. The governing body applied their dispute policies and concluded that KIK Interactive, and not Mr. Koçulu, should be allowed to use KIK. Instead of cooperating for an orderly transition, Mr. Koçulu just removed the package causing a brief flurry of problems.

Mr. Koçulu had two basic arguments:

  • He didn’t know about KIK Interactive when he started using KIK; and
  • “Power to the People”.

The first argument matters not a wit. Infringement exists whether or not the infringer knows about it.[2] What you don’t know can hurt you.

As for Power to the People: Trademarks empower consumers by letting them know the source of goods at a glance. Think how frustrating and difficult shopping would be without trademarks.

Trademarks are all about Power to the People, but I guess those aren’t the people Mr. Koçulu was thinking about empowering.

 

[1] They even offered to help out financially with making the switch.

[2] What the infringer knew and when he knew it can matter for some stuff, like damages, but knowledge is not an element of infringement.

Death Defying Trademarks

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A while back, I wrote about genericide and the efforts companies make to prevent their very valuable trademarks from becoming the generic word for what they sell.

Some trademarks are fascinating because they’ve lived for decades defying genercide.

REALTOR® is owned by the National Association of Realtors. The association’s use of REALTOR dates back to 1916 and it’s had a registered mark since 1949.[1] Despite that incredibly long, continuous, and exclusive use, people are often surprised to learn that it’s a trademark and lots of people try to register trademarks that include that word: The Trademark Office has almost 400 dead applications containing REALTOR (or something confusingly similar).

CROCK-POT® is owned by Sunbeam Products, Inc. The registration dates back to 1970. Sunbeam even has a registration for IF IT DOESN’T SAY CROCK-POT THEN IT’S NOT THE ORIGINAL®. Both the Trademark Office and Sunbeam actively protect the CROCK-POT mark by rejecting and opposing applications.[2]

PING PONG® was first registered by Parker Brothers, Inc. in 1930 based on use dating back to 1900.[3]  The owner actively protects the trademark in connection with table tennis goods.

How do they manage to stay alive? Each of these owners protects and polices its trademark to avoid becoming the next zipper or aspirin. It’s hard, but it’s got to be done to stay alive.

 

[1] As of April 1, 2016, the association has 22 registrations and five pending applications.

[2] There are three express abandonments of applications, four office actions, and one opposition brought by Sunbeam.

[3] The use of PING-PONG dates back to 1900. PING PONG (without the hyphen) dates back to 1902. It’s brilliantly onomatopoeic. The trademark is now owned by Escalade Sports. There are now registrations of PING PONG owned by others for jewelry, entertainment, and restaurants. There are also pending applications for roasted nuts, fishing gear and bill payment services.

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

Trademarks are Forever

Samson

Trademark registrations are the most awesome kind of intellectual property because they can live a long time.

How long?

Really long.

The oldest living registered U.S. trademark is Samson® for rope. That trademark (still in use today) was registered in 1884. Lots of others go back almost as far: CocaCola® and Tiffany® were each registered in 1893. Budweiser® and General Mills® were registered in 1886.

All you have to do to keep your trademark registration alive and well is:

  • keep using the trademark;
  • renew the registration every 10 years; and
  • avoid becoming the generic word for what you sell (genericide).

Contrast that to patents, which have a relatively short life. If patents were people, none would live long enough to buy a drink in the United States. Even worse, many patents now outlive their useful lives. The invention covered by a patent is now sometimes obsolescent even before the patent issues.

Even copyrights die after a fairly long and healthy life. Trade secrets are also awesome. They live for as long as you keep them secret (a trick that’s getting harder and harder these days).

So when you start thinking how valuable patents are, ask yourself: Would you rather own all of Apple’s patents or the Apple® brand? I think that’s a hard decision.

 

 

 

Don’t Mess with the Giraffe

There are 231[1] dead applications that include R US. That’s pretty much every application for [FILL-IN-THE-BLANK] R US that’s been filed by someone other than Geoffrey, LLC.[2]

Almost all of the dead applications were expressly abandoned by their owners, which means they didn’t put up much of a fight. They probably got a letter from Geoffrey, LLC that politely but firmly suggested they pick a new trademark.

The dead applications include goods and services in just about every field: restaurants, dentistry, junk removal, bamboo processing, accounting (a lot of accountants), legal (an embarrassingly large number of attorneys including one who filed to register TRADEMARKS R US). My personal favorites: GLORYHOLES R US and HEMOROIDS[3] R US.

Some people look at this record and think TOYS R US is a bully, going after some little guy who’s just trying to process some bamboo. After all, who could think that TOYS R US would go into selling hemorrhoid medication? No one’s getting confused or misled, so what’s the harm?

But trademarks are a “protect it or lose it” kind of asset. Once someone gets a registration for BAMBOO R US, it will be harder to stop HEMOROID R US. Then a few more slip through and now everyone has an argument that Geoffrey’s rights stop at retail toy sales and the brand is tarnished and diluted. The giraffe is wisely protecting his turf.

 

[1] As of February 4, 2016.

[2] Five applications are still alive: 1 is being opposed and the other 6 haven’t reached the stage where they can be opposed yet. Only one application made it through: Books R Us was registered in 1982. The registration is dead. The owner didn’t renew.

[3] Yeah, that’s how they spelled it.

The Deepest Cut of All

A few weeks ago, Mr. Douglas Alan Lehocky received a final refusal to his application to register:

DOUGLAS ALAN LEHOCKY

I’ve written about Mr. Lehocky twice before, here and here. Mr. Lehocky filed over 150 applications during Thanksgiving week of 2014. That amounted to over $50,000 in application fees, all of which Mr. Lehocky has lost or soon will.

It’s not that hard to understand why the Trademark Office refused to give Mr. Lehocky a registration for DISNEY.COM, but why couldn’t Mr. Lehocky get a registration for his own name?

In order to get a trademark registration, you have to be using what you want to register as a trademark and you have to provide the Trademark Office with a specimen showing that use. Mr. Lehocky didn’t provide any evidence of use as a trademark. Instead, Mr. Lehocky provided a picture of a piece of paper with the words DOUGLAS ALAN LEHOCKY printed on it in really big letters.

When that didn’t work, he submitted the same picture 2 more times.

It still didn’t work and it never will.

One hundred fifteen of the original 150+ applications are now dead. The rest continue their slow but inevitable trip to “final refusal.” It would be funny if it weren’t so sad.

 

The Redskins and the Slants

A court recently ruled that the law used to deregister the Redskins’ trademarks is unconstitutional.

So how’d that happen?

The Trademark Office refused to grant Simon Tam[1] a registration for THE SLANTS because it’s disparaging to a substantial number of Asian Americans.

Mr. Tam appealed and after some procedural wrangling[2], he ended up in front of a bunch of federal appellate judges[3] who decided to consider whether refusing to register a trademark that’s disparaging is unconstitutional.[4] The Court held that the disparagement bits in the law are unconstitutional, pointing out that the government registers copyrights for disparaging books all the time. If the government tried to reject those copyrights, it would clearly be unconstitutional, so how is this any different?

Not all the judges agreed. One judge argued that the Trademark Office should only apply the disparagement bits of the law when the trademark is just for business (like the Redskins) but not when a trademark is trying to make a free-speechy kind of point (like Mr. Tam). That seems like a lot of deep analysis to ask of an examiner.

So, waddaya think? Should the government register offensive trademarks and let society shame the “bad” owners into changing their ways or should we rely on the Trademark Office to protect our sensibilities? Put another way, do we let the Redskins go on being offensive so that Mr. Tam can reclaim the word SLANT for Asians?

[1] An Asian-America musician (not the Firefly surgeon).

[2] Which is super interesting, but only to lawyers.

[3] At least one of whom might actually be a Redskins fan.

[4] The court considered the Section 2(a) disparagement provision only. The court didn’t rule on the part about immoral or scandalous marks that was at issue in Left Nut Brewing, which they leave to future decisions. Hint hint.