Duets Blog : Creativity and the Law: DuetsBlog

Last week we blogged about the dreaded D-Word and how some marketers unwittingly undermine trademark rights in a brand name by explaining that the name "describes" or is "descriptive" of the goods or services sold under the brand.

We also have blogged about the danger of "taking a suggestive name, mark, or tag-line, and using it descriptively in a sentence on labels, packaging, ad copy, or the internet," because doing so "unfortunately can move it to the left (and wrong) side of the line and render it merely descriptive." This particular marketing pitfall was illustrated by probing the Gatorade label last May.

Today, we continue the similar theme of common marketing pitfalls that can render an otherwise strong and suggestive mark merely descriptive, and weak, if protectable at all.

Icon Burger Development Company launched the Smash Burger franchise a couple of years ago, and it recently found its way to the Twin Cities. Great food and concept, by the way. The founders are really on to something here, but the marketing efforts have a few, let's say, trademark issues.

Smash Burger, at the outset, had the potential to be a strong and smashing (i.e., wonderful, impressive) brand with strong and inherently distinctive trademark rights. Indeed, the U.S. Trademark Office registered a number of different SmashBurger variants, each without a showing of acquired distinctiveness or secondary meaning, here, here, here, and here. It has even federally registered the word SMASH standing alone, and the tag-line: SMASH. SIZZLE. SAVOR.

When your unique and valuable brand name is SMASH BURGER, and you want to own and continue to own rights in SMASH, and related SMASH marks, best not to use "smash" and "smashed" as words to describe the type or name the category of burgers you sell. For example, the website explains why people love SmashBurger: "Fresh, never frozen 100% Angus Beef smashed, seared and seasoned on the grill." As part of the SmashBurger story, it is told: "We start with 100% Angus Beef smashed, seared and seasoned on the grill . . . ." The homepage further reads: "Smash Burger is a great new burger place for a better burger made with 100 Angus Beef that is smashed, seared and seasoned on the grill."

Perhaps most devastating from a trademark perspective, the SmashBurger drink cups read: "Where SMASH means we literally smash 100% Angus beef at a high temperature to sear in all the juicy burger goodness":

Sounds good, if you're dining, but ouch, if you're the patty, or perhaps a trademark type. It appears the Examining Attorney never combed the SmashBurger website, as many will do, in search of descriptiveness admissions that can and will be used against the brand owner and trademark applicant. It remains to be seen whether these issues are raised at some point in the future.

When marketers are tempted to use their brand name in a descriptive way, my suggestion is to consult a thesaurus in search of alternate terms to use in copy that share the same meaning as the branded and trademarked term. This helps avoid a trademark invalidity challenge by the Trademark Office or competitors. 

Would the effective marketing story be lost if words like "smacked," "pounded," "pressed," "crushed," or "slapped" were substituted for "smashed," and terms like "smack," "pound," "press," "crush," or "slap" were substituted for "smash" in the copy, leaving SMASH for use only as a trademark and brand name? I'm thinking that consumers will exercise a little imagination and still get the marketing point, without doing harm to the trademark.

What do you think?

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In December, you may recall, I blogged about Boise State's federal registration of the color blue as applied to athletic field turf, known to many as Smurf Turf. At the time, I wondered out loud whether Boise State's success in the U.S. Trademark Office might lead others to follow along this trademark path?

Hat tip again to Brad Frazer, for letting us know that last week, apparently inspired by Boise State's success and notoriety, Eastern Washington University, located in Cheny, Washington, announced its "Red Turf" project for its Woodward Field, shown below:

The plan, supported by a generous $500,000 gift from Eagle alum Michael Roos of the Tennessee Titans and his wife Katherine, has targeted completion in time for the opening of the 2010 football season, if all goes well with additional fund-raising efforts. The red artificial turf promises to be the first of its kind, not just in NCAA Division I football, but in the entire country, so the path appears clear for claiming, or I should say, at least working toward claiming, exclusive rights in the red-colored athletic turf.

Given how some have predicted this plan promises to cause a run on multi-colored turf by publicity-starved schools, I'm left wondering whether Eastern Washington will seek ownership and file an application to federally-register red in the same way that Boise State did with blue. Of course, one of the differences between the two is about twenty some years of use and notoriety.

A long period of substantially exclusive use goes a long way to establishing acquired distinctiveness when dealing with non-traditional trademarks such as single-color marks. Along those lines, it is worth noting the U.S. Supreme Court has indicated in Wal-Mart v. Samara that single colors can never be considered inherently distinctive, so Eastern Washington would have to establish secondary meaning or acquired distinctiveness in the red turf, as Boise State did with blue, before any registration on the Principal Register could issue.

In addition, since the proposed single color red turf mark is not in use yet, Eastern Washington could file an intent-to-use application, and assuming it could acquire distinctiveness or establish secondary meaning in the red-colored turf during the pendency of the application, the filing date would relate back and serve as its nationwide constructive use date for national priority purposes. The problem with not filing such an application is, if another athletic program were to do so before Eastern Washington was able to complete the project and provide athletic events on the new turf, it may find itself in the undesirable position as the second-comer for priority purposes, even though it might have been the first to come up with the idea for a red turf athletic field.

Sounds to me like a job for a team of creative trademark, marketing and PR types, to accelerate the period of time needed to develop the necessary evidence of acquired distinctiveness.

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I recently came across a catalog for a company that sells "modular floorcovering" -- probably better known as "carpet squares."  (They actually sell more than squares, but I digress.)  The brand?  FLOR.  FLOR?  Cue kneejerk trademark attorney reaction:  "FLOR?  Are you kidding me?  I bet they had a heckuva time getting that registered!"  Well, they didn't, but it served as a good reminder to me to be wary of my "Dr. No" tendencies.

I am about to make a sweeping generalization here, but it seems to me that one of the real or perceived gulfs between marketing and legal types is the former's occasional attraction to words with novel spellings and the latter's repulsion to those same words, at least when applied to goods or services that the word might describe.  Conventional trademark wisdom is that a novel spelling of a word will not save it from being "merely descriptive" of the goods or services with which it is used if purchasers would perceive it as merely descriptive of the goods or services.  Why is this important?  Well, "merely descriptive" words are not immediately entitled to trademark protection.  The owner of such words has to use them as a trademark so that they acquire "distinctiveness" or "secondary meaning," and this process can take five or more years.  In contrast, suggestive words are entitled to immediate trademark protection--they are "inherently distinctive" as trademarks.  (See here for a cheat sheet and overview of these concepts.)

When Interface Global applied to register FLOR as a trademark for use in connection with "modular carpeting and rugs," it was required to show that FLOR had acquired distinctiveness.  In other words, it had to show that when consumers see "FLOR," they actually think of the company that sells modular floorcovering, not just another way to say "floor."  Same thing happened when the original owner of PUR tried to register it for "water filtration units."  Generally, if a company uses a word like this as a mark for five years, exclusively and continuously, that claim alone is generally sufficient to show acquired distinctiveness. 

In the final analysis, novel spellings can be catchy and marketable, but if they are also descriptive, it could take a while to build up strong trademark rights in them. 

For more information, see Steve's recent post on "moist" cake mixes, which gives a good overview of some suggestive trademarks and links to other posts that touch on the line between descriptiveness and suggestiveness. 

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John Reinan provided yesterday a marketer's perspective that questioned the value of coined trademarks. In my experience, as a trademark type, one place on the spectrum of distinctiveness where both trademark and marketing types can have their cake and eat it too, is the delicious category of suggestive trademarks.

From the legal side of the coin, suggestive marks are immediately protectable and generally enjoy the additional benefit of their inherent strength. On the marketing side of the coin, suggestive marks communicate something about the goods (but not as directly or immediately as descriptive marks do), so the marketer need not start from scratch in educating the consumer, as one must do with coined marks.

For some additional posts discussing the spectrum of distinctiveness, the important line between descriptive and suggestive trademarks, and related issues, see here, here, here, and here.

What is often forgotten about the fine line in differentiating between descriptive and suggestive marks is the subjectivity of making the determination. In practice, this can be a rather fuzzy sort of bright line. What is also frequently forgotten is how narrow the rights can be with some suggestive marks -- those said to be highly suggestive or very close to the merely descriptive border.

A stroll down the baking aisle in your local grocery store provides a nice place to illustrate both points. For example, when shopping for cake mix it is hard to miss the apparent importance of "moist" plus a superlative as key selling points -- "moist" being a merely descriptive term that immediately and directly describes a desirable characteristic of a finished cake. Indeed, Betty Crocker has Super Moist, Pillsbury has Moist Supreme, and Duncan Hines has Moist Deluxe:

These three different brands compete with one another on the very same store shelves and the fact that they peacefully coexist and compete directly without any apparent consumer confusion (despite their similar names) helps illustrate the point of how narrow in scope some suggestive trademark rights can be.

On the point about subjectivity, as the links above demonstrate, you might be surprised to learn that the Super Moist mark was permitted registration by the U.S. Trademark Office as a suggestive and inherently distinctive trademark. Whereas, the Moist Supreme and Moist Deluxe marks were considered merely descriptive, and the U.S. Trademark Office required evidence of acquired distinctiveness (a/k/a secondary meaning) before registration was permitted on the Principal Register.

So, where descriptiveness ends and suggestiveness begins can often depend on who is asked to apply the legal test. Perhaps that is why the U.S. Trademark Office is supposed to approve marks as suggestive, when in doubt. Can someone explain the doubt in favor of Super Moist, and the lack of doubt with Moist Supreme and Moist Deluxe? Because I'm not feeling the need to exercise much imagination, thought or perception to appreciate that each brand communicates a really, really moist cake.

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Worries about having a white Christmas in Minneapolis and elsewhere have been quiet this year. Thus far, we have spent far more than our typical time shoveling some especially heavy wet snow this holiday season, but don't get me wrong, I'm not complaining.

I do have snow on my mind, however, because each time I think we might be done shoveling, we look out the window and there is more to tackle. So, with each trip outside over the last couple of days, I'm feeling less and less like the ambitious viking dude shown above. 

Who is he anyway?

Might the artwork be a promotion for the Minnesota Vikings and their foreshadowing of the Super Bowl spoils they hope to bring home during the 2009 football post season?

Might it be some action artwork featuring a well-known entertainer and educator known as Ragnar, a/k/a Joseph Juranitch?

(For a clever ESPN Sports Center commercial featuring Ragnar and Adrian Peterson, enjoy here).

Nope, the entire image is a non-verbal non-traditional federally-registered service mark, covering the "transportation of goods by ground transportation," and it apparently is owned by a gentleman named Eduardo Gonzalez, doing business as Freezman Transport, based in, of all places, La Jolla, California:

So, here's an interesting question to ponder over the holidays, can a non-verbal service mark be refused registration as primarily geographically deceptively misdescriptive? Here's the three part test: (1) The primary significance of the mark is a generally known geographic location; (2) the consuming public is likely to believe the place identified by the mark indicates the origin of the goods or services when, in fact, they do not come from that place; and (3) the misrepresentation was a material factor in the consumer's decision.

Know of any non-verbal marks that meet this test? If so, they are unregistrable even if acquired distinctiveness can be shown, since no secondary meaning or Section 2(f) evidence will save such a barred mark under Section 2(e)(3) of the Lanham Act.

A while back, John Welch over at the TTABlog discussed some interesting applications of the test for primarily geographically deceptively misdescriptive marks (albeit with some verbal mark examples), here and here.

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To sports fans of this university, December has been a big month because their beloved team finished the 2009 regular football season undefeated (13-0) once again, winning yet another post-season BCS bowl game bid. Next month will be even bigger news if their WAC team happens to defeat TCU in the Tostitos Fiesta Bowl. To trademark types, however, the biggest news of all is what this university was able to accomplish last month at the U.S. Patent and Trademark Office.

You might be surprised to learn (I was) that the above image is the drawing associated with the single color trademark ("the mark consists of the color blue used on the artificial turf in the stadium") that this university was able to federally register in connection with: "Entertainment services, namely, the presentation of intercollegiate sporting events and sports exhibitions rendered in a stadium, and through the media of radio and television broadcasts and the global communications network." Hat tip to Brad Frazer of the Hawley Troxell firm, in Boise, Idaho.

Quick question, how does one render entertainment services in connection with a single-color trademark through the "media of radio broadcasts"? Does oral reference to the blue turf on the radio constitute use of the mark in commerce?

In any event, the identity of the university in question, is revealed below the jump, and it is, of course:

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A couple of months ago there was quite a buzz about Holiday Inn's projected $4 million annual savings by moving to a leaner and greener direction with their adoption of LED lighting on exterior signage. 

As you may recall, back in June we blogged about Holiday Inn's interesting effort to federally register a pair of non-traditional lighting trademarks, one employing a green-colored lighting scheme and the other employing a blue lighting scheme: 

We had noted it would likely take a strong showing of "look for" advertising to overcome the registration refusals initially lodged by the Trademark Office.

Instead of attempting to overcome the registration refusals, however, Holiday Inn apparently has opted for a leaner approach and cost savings on the trademark front too, settling for Supplemental Registrations, a much dimmer form of protection -- offering no legal presumptions of validity, ownership, or exclusive right to use.

About the only meaningful benefit of a Supplemental Registration for a service mark is that it blocks and prevents others from obtaining Principal Registration for confusingly similar marks. Here are the official drawings associated with those newly issued Supplemental Registrations:

In addition to amending the applications to seek registration on the Supplemental Register, Holiday Inn tweaked the description of the marks to read as follows (for the green mark):

The mark consists of green lighting formed by four light fixtures placed in a symmetrical fashion near the entryway of the building. One set of two green lights is evenly placed on columns to the right and left of the entryway and direct the green lighting downward thereby casting a green shadow down the length of the column; while the other set of two green lights is evenly placed on the building wall above the entryway and direct the green lighting upwards, casting a green shadow up the length of the wall and roof overhang. The matter shown by the dotted lines is not a part of the mark and serves only to show the position of the mark.

Perhaps Holiday Inn will be back -- with a brighter approach down the road -- to seek Principal Registration after it believes it has sufficient evidence to establish acquired distinctiveness.

Any thoughts on how long that might take?

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What do you think, is Overstock.com selling bling with the Fordless blue oval logo?

As you may recall from my post back in September, Ford Motor Company is attempting to register the below shown non-verbal logo as a trademark for a variety of goods in Int'l Class 12:

And, as you may recall from Dan's I See Blue Ovals post back in August, there are far more than a handful of blue oval logos out there besides this one:

The pending Fordless blue oval intent-to-use trademark application recently was examined by the U.S. Patent and Trademark Office (PTO), and on October 23, 2009, the PTO found no substantive bases for refusal, but instead it issued an initial refusal noting only a couple of purely procedural or technical deficiencies, concerning the wording in the lengthy description of goods and the need for Ford to submit a claim of ownership to some related registrations (here, here, and here).

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Can you name the owner of this exclamation mark branding signal?

You may be surprised to learn it is federally-registered in the U.S. as a stand-alone non-verbal trademark.

You may be even more surprised to learn, it was federally-registered without a showing of secondary meaning or acquired distinctiveness, because it was viewed as an inherently distinctive non-verbal trademark.

This is no ordinary exclamation mark, however, the trademark owner claims it in a 3D appearance, does that help?

Here's another clue: In Latin American countries, the brand name associated with this particular punctuation mark is Pepitos!

Last clue: Would it help to know the goods associated with this registered trademark are chocolate chip cookies?

Answer below the jump.

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The October/November issue of Brand Packaging magazine just hit the streets and I'm deeply honored to say that my piece entitled "A Trademark Touch: Strategies for Owning and Protecting Touchmarks" is this issue's "cover story" (minus the skull and crossbones).

The digital version can be read here. I hope you find it eye-opening in a tactile kind of way.

By the way, I'd love some feedback on it.

What is your favorite touchmark anyway?

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VS.

Remarkably, this is not a new promotion for World Wrestling Entertainment.  No, a few outlets reported last week that WWE has opposed The American Wine Foundation's application to register the trademark SOMMELIER SMACKDOWN for use in connection with "Entertainment services, namely, conducting contests in the field of food and wine pairing; Entertainment services, namely, wine and food tastings at which attendants taste food and wine pairings to determine which wine expert better pairs food and wines."  For those pop-culturally challenged among you (as I sometimes am), WWE owns several registrations for SMACKDOWN for use in connection with entertainment services, namely, wrestling events. 

As reported at SFGate, a spokesman for WWE claims that WWE coined the term "smackdown."  That's a big claim, and one easily exploded by reviewing the voluminous evidence produced by the Trademark Office in the course of WWE's prosecution of an early application for SMACKDOWN demonstrating widespread use of the term in connection with sports that predates WWE's first use of the term (1999) and its claimed date of coining (1998, by Dwayne Johnson, a.k.a, "The Rock").  WWE dodged the descriptiveness issue by arguing in the alternative that it had acquired trademark distinctiveness in SMACKDOWN as applied to its entertainment services.

This promises to be an interesting case, as there appear to be factors that favor both sides.  For WWE, the SMACKDOWN mark appears fairly strong, despite its descriptive roots.  For the Wine Foundation, I suspect that it will be able to make a good case that its entertainment services appeal to an entirely different consumer market than WWE's entertainment services.  (WWE has also argued that the Wine Foundation's mark dilutes its SMACKDOWN mark--an issue that also may have legs.)  For the time being, we'll watch to see if this match goes more than one round. 

*LET'S GET READY TO RUMBLE® is a registered trademark of Ready to Rumble, LLC.

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What does this image signify to you?

For full credit, please answer the question before peeking back at Dan's popular post called "I See Blue Ovals."

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Let's revisit the topic of non-traditional "touch" trademarks today.

Of all the traditional five human senses (sight, hearing, taste, smell, and touch) and trademarks that can be perceived by one or more of those senses, touch, a/k/a tactile, a/k/a texture trademarks are just about as uncommon as any (taste, perhaps, being the least common). Indeed, back in 2006, Marty Schwimmer from The Trademark Blog correctly noted the dearth of recognized tactile marks. Moreover, despite a 2006 INTA Board of Directors' Resolution supporting the protection of touch marks, few appear to have reached for or grabbed any such protection (putting aside Kimberly-Clark, already blogged about here).

As arguably one of the most intimate of the senses: 'Touch is the first sense developed in the womb and the last sense used before death." Given that and given other unique characteristics of "touch" among the senses, it is a bit surprising that touch marks haven't been pursued more by marketers looking to create intimate, emotional connections with a brand: "Another distinction of the sense of touch is that it is identified with the real. You can't believe your eyes, nor your ears, and taste is personal and subjective, but touch is proof." By the way, since touch/tactile/texture marks are so uncommon, why can't we agree on what to call them? For what its worth, my vote is to call them "touch" marks since that is the term that names the underlying basic human sense.

Anyway, with that background, as far as I can tell, the one industry that seems to show the most promise or, at least, interest in touch trademarks, is the alcoholic beverages industry, most particularly those companies that focus on selling distilled spirits or wine.

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Notice anything special about this pair of photographs featuring two different Holiday Inn front entrances? OK, putting aside that the one on the right -- with green lighting -- seems to have attracted, at least, a few cars, whereas the "blue light special" on the left appears to stage a full house with virtually every room light on, but ironically it reveals an empty parking lot.

Well, these aren't ordinary photographs, they are trademark specimens of use; Six Continents Hotels, owner of the Holiday Inn brand, claims that they depict a pair of non-traditional trademarks, having filed them with the U.S. Trademark Office in April 2009, and asserting that use of the "lighting" marks commenced back in January 2008. So, we aren't talking about the new H logo previously blogged about here or the old Holiday Inn word mark -- those are standard and traditional single-letter logo and word trademarks. In case you're wondering, no sign of any red or yellow lights for Holiday Inn, at least, on the Trademark Office database.

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