DuetsBlog Collaborations in Creativity & the Law

Crowded Trademark Parties & Coexisting Store Names

Posted in Branding, Famous Marks, Food, Infringement, Loss of Rights, Marketing, Trademarks

If you don’t mind the wait, a crowded parking lot is often a good strategy when hunting for an excellent restaurant while you’re in unfamiliar territory. Similarly, a large crowd lining up outside a retail store is typically a good sign that the business is doing something right, or perhaps, they just happen to have something rare that everyone wants.

Parties are often said to be happening — and have more energy – when crowds of people descend upon them. But, what about when there is a crowded field of trademarks, as appears to be the case with a collection of highly similar brand names for retail party supply stores? Is the usually beneficial crowd phenomenon in this context, a good thing, or not?

   

As you might have imagined, it depends on your perspective and what you happen to be looking for in a retail store brand name.

If, for example, you’re wanting — or your client is wanting — to open a party supplies store, using a two word name, with PARTY being the first term, you might be inclined to start the music and begin to party when your trademark counsel advises that:

  1. PARTY LAND is federally registered in  connection with "retail party supplies, paper goods, gifts and balloons store services";
  2. PARTY CITY is federally registered for "retail party supply store services";
  3. PARTY FAIR is federally registered for "retail store services in the field of party goods";
  4. PARTY SUPERMARKET is federally registered for "retail store and distributorship services in the field of party supplies, party favors and novelty items";
  5. Federal registrations for PARTY UNIVERSE, PARTY WORLDPARTYTIME U.S.A., PARTY AMERICAPARTY PLACE, PARTY DEPOT, PARTY PLAZA, PARTY MART, PARTY TIME, PARTY GRAS, and PARTY ANIMAL, all have expired or become cancelled; and
  6. PARTY AMERICA, PARTY PRODUCTSPARTY CELEBRATION, PARTYCHEAP.COMPARTYSECRET.COM, and PARTYPRO.COM, among others, all appear to peacefully coexist in the marketplace and at common law.

Before you break out the bubbly, however, consider a couple of cautions, some legal, some not:

  • While on the one hand, given the commercial landscape described above, there are reasonable arguments of coexistence for yet another PARTY _____ retail store, on the other hand, there also are a multitude of possible plaintiffs just waiting to take an unrealistic view of the scope of their rights, around the time your venture looks like it might be successful;
  • The expiration and/or cancellation of registered trademarks doesn’t necessarily signal that any underlying common law and unregistered rights have been abandoned;
  • Assuming you are able to coexist, is that really what you want with a new business venture? Isn’t it better to stand out from the crowd to facilitate your ability to differentiate? and
  • Instead of simply blending into the existing commercial landscape, isn’t a more unique and distinctive name with more potential for owning a broader scope of rights, better?

Finally, at the risk of taking the party theme just a bit too far in illustrating these important points about the pros and cons of adopting trademarks in a crowded field, you might want to refer to my post from last year entitled Taking the Cake with Suggestive Trademarks, where the coexistence of General Mills’ Super Moist, Pillsbury’s Moist Supreme, and Duncan Hine’s Moist Deluxe cake mixes all peacefully coexist (in direct competition) on the very same grocery store shelves.

To me, it’s one thing to have a weak product mark, when the house mark is strong or even famous, as is probably the case with General Mills, Pillsbury, and Duncan Hines, since they likely are what carry the bulk of the goodwill associated with each product, but it’s quite another to knowingly adopt a weak name in a crowded field, when that name is the name of the business and intended to carry the bulk of the goodwill associated with the business.

What do you think? When can a weak and crowded trademark play a valuable role in the overall branding strategy for a business?

  • DB

    Good trademark law analysis, and I understand that good marketing practices match up with trademark theory — build up goodwill to make the consumer’s choice easier because they know that brand and don’t have to compare labels, etc. However there are all too many business people who think of selecting marks more like selecting a place to pan for gold. If you pick the right one, you can strike it rich. It’s backwards, but it’s there.

  • http://www.duetsblog.com/steve-baird.html Steve Baird

    DB, well put, and thanks for dropping by.
    Your panning for gold comment brings to mind for me the large sums made by some in registering, as it has turned out, very valuable generic domain names.

  • http://ca.linkedin.com/in/johnmckeownatcasselsbrock John McKeown

    With marks of this nature there may be future problems associated with the choice of a descriptive mark as opposed to a more unique mark. If it is anticipated the product may have a short life or the marketing budget is small individuals responsible for marketing may wish to use a descriptive mark which will quickly convey to consumers the benefits of the product. Unfortunately if the product is successfully introduced in association with such a mark it may be impossible to stop competitors from using similar marks on competing products.

  • Steve Baird

    John, thanks for sharing your thoughts — definately fair points.
    I’m thinking that the detriments of descriptive marks you identify may have less commercial significance when they are limited to a secondary role and the primary branding role is held by a well-known or famous housemark that carries the vast majority of the goodwill for the products or services in question.