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.

Scam Scam Scam Scam

You know scammers are out of control when they start sending trademark scams to trademark attorneys.

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Everything about this notice screams “official”.  It has a UPC code.  It’s from the “Patent and Trademark Bureau.” It says: “Form approved: OMBE 328-0119/”.

Anyone opening this and reading it would assume that she needs to write a check to the Patent & Trademark Bureau for $890.

The fine print says the sender is “not endorsed by the U.S. government” and that this is an “optional offer,” while in the bold print near the top it says:

“Your trademark is about to expire. Renewal date 01-05-2019.”

This trademark registration is NOT due for renewal. In fact, it’s impossible to file a renewal for this registration until the 5th anniversary of the registration date. The actual due date for the renewal is the 6th anniversary of the registration date. That means you can first file the renewal on January 5, 2021 and it isn’t due until January 5, 2022.

Other scam notices I’ve seen actually lie about the registration date just in case you know about the 5-6 year rule.

Someone would be hard-pressed to spend even an hour doing this filing. $890 for one hour’s work is insane. The fee is too high even if I give this scammer the undeserved benefit of the doubt and assume that the quoted fee includes what the Trademark Office will charge.

Please please please don’t be taken in by these scammers.

 

Thanks to Julie W. for sending me the fake notice she received and suggesting this blog post.

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Women March . . . And Also Oppose

What do you call it when a group of women get together to protest and advocate? A women’s march?

That’s the big question before the Trademark Trial and Appeal Board.

After the 2016 presidential election in the United States, women began organizing protests. Two of those groups filed to register the trademark WOMEN’S MARCH:

  • Women’s March, Inc. in Brooklyn (WMI) filed first in March 2017.[1]
  • Women’s March Los Angeles Foundation filed two applications in April 2018.[2]

The Trademark Office examiner approved the WMI applications. After an application is approved by the Trademark Office, it’s “published for opposition.” That means anyone who thinks the trademark shouldn’t be registered can oppose the application.

And oppose they did. Fourteen different organizations expressed an interest in opposing the WMI applications.[3] Of those, four actually opposed:

  • We March On Chicago
  • March On
  • Women’s March Alliance
  • Women’s March Los Angeles Foundation

The oppositions all say the same thing: Lots of people started using this phrase right after the election so it doesn’t refer to one specific group. Here’s how you say that in legalese:

  • WOMEN’S MARCH is “merely descriptive.”
  • It fails to function as a trademark.
  • It was independently adopted by numerous grassroots organizers so it’s incapable of distinguishing one group from another.

What do you think? Before you read this, did you think there was only one organization using WOMEN’S MARCH? Now that you know there are a bunch of different groups, do you think just one of them should be allowed to prevent the others from using that phrase?

 

 

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[1] Both WMI applications were filed on March 1, 2017. The first one is for WOMEN’S MARCH based on use dating back to November 2016. The second one is for WM WOMEN’S MARCH and is based on intent-to-use. Both include these goods and services:

“T-shirts; shirts; sweatshirts; hoodies; one-piece infant wear.”

“Promoting public awareness of the need for protecting women’s social, economic and political rights; promoting public awareness of the need for racial equality, LGBTQ rights, economic and reproductive rights; public advocacy to promote awareness of the need for protecting women’s social, economic and political rights; lobbying services, namely, promoting the interests of women in the fields of legislation and regulation concerning reproductive rights, equal pay, paid family leave, and to the end of violence against women.”

[2]WMLA filed its applications on April 12, 2018 and both were based on use dating back to November 2016. Both of the WMLA applications are on hold until the WMI applications either go away or reach registration.

The first WMLA application is for: “Educational services, namely, conducting conferences and workshops in the field of civic engagement and community initiatives; Providing a website featuring non-downloadable publications in the nature of photos in the field of community cultural events; Providing information regarding current and cultural events via a website; Organizing community cultural events; Providing information and news regarding community outreach services.”

The second WMLA application is for: “Providing a website featuring information about social justice, human rights, and political issues; Providing information regarding political issues, knowing how to vote, and knowing how to register to vote; Promoting public awareness of the uniqueness and diversity of humanity through a national annual day event; Promoting public awareness of LGBTQIA rights; Promoting public awareness of police brutality, gender and racial inequities within the criminal justice system; Public advocacy to promote awareness of gender, racial, social, and economic justice; Public advocacy to promote awareness of the need to protect women’s social, economic and political rights; Online retail store services in the field of clothing, books, and buttons; Retail store services in the field of clothing, books, and buttons.”

[3] Women’s March DC; March Forward Massachusetts Educational Fund; Women’s March Alliance; Women’s March Los Angeles Foundation; Women’s March SLO; Women’s March Contra Costa, Inc.; March On; Santa Cruz Women’s March; March On Arkansas; We March On Chicago NFP dba Women’s March Chicago NFP; March On Hudson Valley; March on Maryland, Inc.; Women’s March San Diego, Inc.; and Women’s March Colorado.

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.

“Happy Talk” Law is Dead!

Today Simon Tam of The Slants won a tremendous victory for free speech.

If you’re feeling despondent about the state of the world, if you’re in need of a booster shot for enlightenment thinking, if you long to have the government bitch-slapped for stepping on civil rights, if you want to laugh out loud, read on.

The U.S. Supreme Court vehemently rejected all of the government’s arguments for preserving the “disparagement clause” that allows the Trademark Office to refuse to register trademarks that may disparage or bring into contempt or disrepute any persons, living or dead.[1]

Although the justices[2] supported different reasons for their judgment, all of them agreed that the provision is total BS, constitutionality-wise.

Government Speech Schmovernment Speech

The court started by rejecting the government’s argument that trademark registration is “government speech,” a category of speech not subject to First Amendment protection.[3] Here’s the court explaining why government speech is not protected:

“During the Second World War, the Federal Government produced and distributed millions of posters to promote the war effort. There were posters urging enlistment, the purchase of war bonds, and the conservation of scarce resources. These posters expressed a viewpoint, but the First Amendment did not demand that the Government balance the message of these posters by producing and distributing posters encouraging Americans to refrain from engaging in these activities.”[4]

The Court then hits the government upside the head with a baseball bat for its attempt to expand what’s included in “government speech.”

“But while the government-speech doctrine is important—indeed, essential—it is a doctrine that is susceptible to dangerous misuse. If private speech could be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavored viewpoints. For this reason, we must exercise great caution before extending our government-speech precedents.”[5]

Then, just in case the government didn’t feel the baseball-bat love tap, the Court took out the big ammo and blasted away.

“If the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently. It is saying many unseemly things. It is expressing contradictory views. It is unashamedly endorsing a vast array of commercial products and services. And it is providing Delphic advice to the consuming public.

“For example, if trademarks represent government speech, what does the Government have in mind when it advises Americans to ‘make.believe’ (Sony), ‘Think different’ (Apple), ‘Just do it’ (Nike), or ‘Have it your way’ (Burger King)? Was the Government warning about a coming disaster when it registered the mark ‘EndTime Ministries’?”[6]

Not Even if It’s Commercial Speech

 The Court next considered whether trademark registration is merely “commercial speech,” which is subject to a lesser level of First Amendment protection than non-commercial speech. The Court chose “not to resolve” the debate about whether or not it’s commercial speech “because the disparagement clause cannot withstand even the lower level of review for commercial speech.”[7]

“A simple answer to this argument is that the disparagement clause is not ‘narrowly drawn’ to drive out trademarks that support invidious discrimination. The clause reaches any trademark that disparages any person, group, or institution. It applies to trademarks like the following: ‘Down with racists,’ ‘Down with sexists,’ ‘Down with homophobes.’ It is not an anti-discrimination clause; it is a happy-talk clause. In this way, it goes much further than is necessary to serve the interest asserted.”[8]

In his opinion, Justice Kennedy sums it all up beautifully:

“A law that can be directed against speech found offensive to some portion of the public can be turned against minority and dissenting views to the detriment of all. The First Amendment does not entrust that power to the government’s benevolence. Instead, our reliance must be on the substantial safeguards of free and open discussion in a democratic society. ”[9]

Rock on, SLANTS. Rock on SCOTUS. Rock on RIGHTS.

 

 

[1] 15 U. S. C. §1052(a)

[2] C.J. Roberts, J. Alito, J. Thomas, J. Breyer, J. Kennedy, J Ginsburg, J. Sotomayor, and J. Kagan. J. Gorsuch took no part in the consideration or decision of the case.

[3] The Court also rejected various related arguments about lesser levels of government involvement in speech. Read the full opinion for details.

[4] Slip Opinion at p 13.

[5] Slip Opinion at p 13-14. Emphasis added.

[6] Slip Opinion at pp 14-15. Emphasis added. Citations omitted.

[7] Slip Opinion at p 24.

[8] Slip Opinion at p. 25. Emphasis added.

[9] Opinion of J. Kennedy’s at p 8. Emphasis added.

What’s in a Font

Should a trademark registration be in a particular font? Usually, you should register a trademark in no particular font because it provides broader rights and will live on even if you change the font later, but some fonts are so tightly tied to a trademark that a registration in a particular font makes sense.

The question you should ask yourself is this: If a competitor chooses a different word in your same font, could your customers be confused?

What do I mean by that?

CocaCola® regularly goes after and shuts down people who try to sell these shirts because just the font is enough to make people think about CocaCola.

Cocaine

Here’s another example: What if I were to open a housewares store with this as my trademark?

Crate&Barrel

Helvetica is so closely tied to Crate&Barrel, that it looks like this brand was created just to confuse people.

Axio®, the company who came up with my word mark and logo, actually created their own font.* Here’s their lovely trademark:

Axio

They would rightly be upset if someone else started using this for a different design firm:

AKIC

So, if the font you use is that strong and that important to your branding you might want to consider registering the trademark in a particular font.

 

*Axio created an entire alphabet for the font used in their trademark. The font itself can be protected by registering the copyright. That won’t protect the brand, but it will protect them from having other people use the font without a license.

 

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Sticky Color

Color. It’s amazing how much a trademark can rely on color. Sometimes, all you have to do is see a color and, without any words, or a logo, you already know what company it came from.
National Geographic

It’s just a rectangle in a certain saturated shade of yellow. And, yet, for most people, it screams National Geographic.

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Does anyone have any question about where this box came from? When someone’s carrying a small shopping bag in this color, do you have any doubt about what’s in the bag?

UPS

 

You know whose truck this is just by the color, without seeing the writing on the side. You’d even know one of their drivers by the color of her uniform.

 

VS

 

You know what store this is, even though I covered over the words on the awning.

 

UNIQLO

 

This sign is sometimes in katakana, but that doesn’t stop you from knowing which store it is just by the red square and the white lettering.

 

 

Straw

 

You know where I bought my iced tea without seeing the label on the cup, just because of the color of the straw.

 

Louboutin

 

Red soles on a pair of shoes. You know these were made by Louboutin.

 

There are lots more out there. That certain red of CocaCola. FedEx purple. The very particular shade of blue used on Southwest Airlines planes.

The next time you’re walking down the street, real or virtual, pay attention to how much brilliant brand identity is conveyed just with color and nothing more.

 

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Above the Law

Another campaign season, another long slog of intellectual property infringement by candidates.

It’s amazing to me that people who are running for public office steal other people’s property and then flaunt that theft in public. Imagine if a campaign made a habit of stealing a car every time the candidate needed to go somewhere. Even in today’s world of weird politics, I have to think that people would be upset by that. And yet they steal music, fame, and trademarks and no one bats an eye.

Theft of music rights is so commonplace that ASCAP has a set of guidelines covering the use of music in campaigns. It’s not just a question of getting a standard license. If a campaign makes substantial use of a particular song, makes it the theme song for example, then there are other rights involved, including the right of publicity, and the potential for a claim for false endorsement.

Most recently, the Committee to Restore America’s Greatness put up a billboard showing the candidate it supports dressed as Superman®. Unless they had a license to use the famous mark[1] pictured above, which is owned by DC Comics E.C. Publications, Inc. and Warner Communications LLC, this is an incredibly serious infringement of intellectual property rights.

Disregard for property rights is not traditionally a popular plank in a candidate’s platform, but it is a very common one.

[1] The owner of the trademark has not responded to my inquiry.

 

 

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.

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.