DuetsBlog Collaborations in Creativity & the Law

A Tale of Two Elephants

Posted in Guest Bloggers

—Nancy Friedman, chief wordworker, Wordworking

If you’re a serious bargain hunter or antique collector in the San Francisco Bay Area, your calendar is blocked out every year in early March for the region’s biggest flea market: the Oakland Museum of California’s White Elephant Sale, or “WES.” The sale started modestly more than 50 years ago as a fundraiser for the museum’s Women’s Board; today it’s a two-day event run by 1,000 volunteers and held in a 96,000-square-foot warehouse. In 2011, the sale raised $1.6 million for museum programs.

In the weeks leading up to the sale, the WES logo—a smiling white elephant on a red background—is hard to miss in ads and mailings.

 

So you can imagine my surprise when, in mid-December, I passed by a Goodwill store across the bay in San Francisco and saw this “I’m Dreaming of a White Elephant” sign in every window:

Had Goodwill teamed up with the Oakland Museum for a holiday promotion, I wondered? No, this was a different smiling elephant, in blue rather than red, facing right rather than left. That was obviously a “G” on the elephant’s back. And when I did a little research, I learned that Goodwill’s white elephant was part of a seasonal national campaign. It’s likely no one in the head office knew about the Oakland event.

Still—wasn’t a shopper likely to be misled by the similarity of the names and visual identities? Wasn’t some sort of trademark infringement going on?

As it happens, neither of these white elephants is a registered trademark, so this isn’t a question of infringement. But just because a name doesn’t have trademark protection doesn’t mean it isn’t a brand—or that likelihood of confusion isn’t an issue.

Here’s some background: “White elephant” came into English in the 17th century, when travelers brought back the story of the sacred white elephants of Southeast Asia’s Golden Triangle—Burma, Siam, Laos, and Cambodia. The gift of a white elephant was both a blessing and a curse, because the animal had to be maintained but couldn’t be put to work. By the mid-19th century, “white elephant” had become a metaphor for any expensive object or scheme. Churches began calling their bazaars “white elephant sales” and inviting donations of unwanted possessions. “White elephant” had been transformed from descriptive (for a living creature) to metaphorical (for an object similar to that creature) back to a descriptive—or even generic—term.

That’s why although you’ll find White Elephant trademarks in the USPTO database, they’re for playing cards, handbags, and imported foods—not white elephant sales. “White elephant sale” is too descriptive to pass muster with the USPTO.

As for what this means for the Oakland and San Francisco white elephants, here’s my take: For 53 years, “White Elephant” has been so closely identified with the Oakland Museum that it dominates its market. For Goodwill to borrow the term and to use a similar-looking identity, at a time of year when Oakland’s WES is beginning its own annual ad campaign, is somewhere between a gaffe and an encroachment.

There’s a lesson here not just for nonprofit organizations but for all brand owners: do your homework in every local market where you operate. And, if you can, protect your name and slogan!