Trademark Specimens of Use: A "Necessarily Subjective" Standard

Posted on January 16, 2010 by Steve Baird

John Welch, over at the TTABlog, reported on a recent trademark specimen of use case (pdf here); one near and dear to my heart, since I represented the Applicant seeking to register the composite word-only mark DELI EXPRESS SAN LUIS for sweet rolls. At issue in the case was whether the product label specimen (appearing below) shows use of the DELI EXPRESS SAN LUIS word-only mark as set forth in the standard character drawing of the trademark application:

The Trademark Trial and Appeal Board (TTAB), in what it admitted to be a "necessarily subjective" analysis, examined the product label specimen -- and on that basis alone -- concluded it does not show use of the claimed DELI EXPRESS SAN LUIS mark:

Here, we agree with the examining attorney that the specimen depicts the two literal portions DELI EXPRESS and SAN LUIS in such a manner that consumers would not perceive them as constituting a single composite mark. First, the DELI EXPRESS portion is not only in a different font but is contained within a yellow-background, and then a larger red background, separated from the remainder of the packaging design by a black bar outlining the top left corner of the package. The other literal portion, SAN LUIS, is outside of that border area and is further separated by a fanciful triangle design and placed upon a green background. The term CONCHA appears below these two elements in a lighter green box. Taken together, we find that the impression left by this specimen is that the two elements, DELI EXPRESS and SAN LUIS, are two separate trademarks rather than the single mark shown on the drawing page (emphasis added).

I respectfully submit that these kinds of determinations -- especially since they are admittedly and "necessarily subjective" -- are not binary, either-or propositions. For example, it is entirely possible for a single specimen to show two trademarks that function as separate individual trademarks and also function together in the same specimen as a unitary word-only composite mark (see third-party registration examples below the jump).

Here, it seems to me, that the specimen in question shows multiple word-only marks (among others too, when designs and stylization is considered), including DELI EXPRESS, SAN LUIS, and the composite of those words, DELI EXPRESS SAN LUIS. Indeed, if a consumer were shown the product label and asked what brand of concha or sweet roll this is, it would be entirely reasonable and appropriate to answer: DELI EXPRESS SAN LUIS. If so, how can it be that the specimen does not show use of the claimed mark?

Given that the drawing shows the mark sought to be registered by applicant (TMEP 807; 37 CFR 2.52), given that applicants enjoy some latitude in choosing the mark to register and include in the drawing (TMEP 807.12(d)), given that the main purpose of the drawing is to provide notice of the nature of the mark sought to be registered (TMEP 807), given that the mark shown in a standard character word-only drawing need not appear on the specimen in the same font, style, size, or color (TMEP 807.03(e)), given that the USPTO actually encourages applicants to use standard character drawings (TMEP 807.04(b)), given that a standard character drawing is a quick and efficient way of showing the essence of a verbal mark (TMEP 807.04(b)), and given the "necessarily subjective" nature of the determination, I submit that the appropriate test for determining whether the specimen shows use of the verbal, word-only mark claimed in the standard character drawing, is whether it would be reasonable for consumers to request applicant's product by the claimed trademark, given what actually appears on the specimen.

In other words, how might consumers request applicant's sweet roll product? Again, I submit it is entirely reasonable that consumers who have seen the product label would request the product by asking for a "DELI EXPRESS SAN LUIS concha or sweet roll." Now, while they might also request a "DELI EXPRESS" concha or sweet roll, or perhaps a SAN LUIS concha or sweet roll, the most complete, accurate, and precise way to request the product would be to ask for a "DELI EXPRESS SAN LUIS" brand concha or sweet roll, and also thereby treat the words as a unitary composite mark, because:

  1. The DELI EXPRESS house brand (and primary brand) and the SAN LUIS secondary or sub-brand are the only brands and word-marks on the entire label;
  2. They appear proximate to one another, side-by-side on the same horizontal plane, at the top of the label, for easy, conventional reading from left to right;
  3. They form the dominant portion of the label since the design elements can't be spoken;
  4. The DELI EXPRESS phrase appears in solid black lettering on a yellow-background, and the SAN LUIS phrase has a black-outlined border and it stems from a triangle design element matching the same yellow-background carrying the DELI EXPRESS phrase;
  5. There is no requirement to include generic words as part of the claimed mark, i.e., concha or sweet roll;
  6. Consumers familiar with applicant's products are accustomed to similar label formats where the DELI EXPRESS house brand is proximately positioned with other sub-brands like SUPER MEGA, SNACKERS, COFFEES OF THE WORLD, and SUB SELECTS, to form federally-registered word-only standard character trademarks: DELI EXPRESS SUPER MEGA, DELI EXPRESS SNACKERS, DELI EXPRESS COFFEES OF THE WORLD, and DELI EXPRESS SUB SELECTS; and
  7. Consumers of packaged food products have been conditioned to perceive house marks and secondary marks as not only having separate trademark significance from each other, but also significance together, in the same specimen, even when different colors, styles and fonts may be used for each or portions of each, and even when other matter or wording may appear between them(see third-party registration evidence below the jump).

Unfortunately, the Board did not acknowledge or address the third-party registration evidence submitted along with the specimens of use previously accepted by the USPTO for the same third-party registrations. More on that later . . . .

In the meantime, given the Board's rationale for ruling that the above product label specimen does not show use of the DELI EXPRESS SAN LUIS mark, can you reconcile that "necessarily subjective" decision with any of these standard character word-only federally-registered trademarks and their supporting specimens? Would it be reasonable for consumers, seeing these specimens, to request the goods using the federally-registered standard character word-only marks highlighted below?

PEPPERIDGE FARM SIMPLY DELICIOUS:                  KELLOGG'S SMORZ:

              

 HOT POCKETS TOASTER MELTS:

 

HEINZ EASY SQUEEZE:

Given that other admittedly "subjective" trademark registration determinations favor applicant's in close cases (e.g., scandalous and immoral determinations under Section 2(a) of the Lanham Act, and merely descriptive/suggestive determinations under Section 2(e) of the Lanham Act), whereby the marks are published for opposition, does it not make sense to do the same when deciding a close case of whether a specimen shows use of the mark claimed in the drawing?
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Supreme Court Declines to Hear Redskins Trademark Case

Posted on November 16, 2009 by Steve Baird

Today, the U.S. Supreme Court declined to hear the requested appeal of Harjo v. Pro-Football, Inc., the nearly two-decade old trademark case seeking cancellation of the U.S. Trademark Registrations owned by the NFL franchise in the Nation's Capitol. In doing so, the highest Court in the land, has permitted the laches ruling to stand. Basically, permitting dismissal of the action given a perceived "unreasonable delay" by the Native American Petitioners in bringing the trademark challenge, despite clear language in the Trademark Act permitting such challenges outside the typical five year statute of limitations, and specifically indicating they can be filed "at any time."

My prior involvement in filing the case back in 1992, the victory we all enjoyed in 1999, and my admittedly rather critical coverage of the dismissal of this historic and ground-breaking case may be found here (9/17/09) and here (May 21, 2009).

Although many ironies may be highlighted from this odd conclusion to the Harjo case, certainly one of the most striking ironies is that it took far longer for this case to wind its way through our legal system than the accused delay by Mateo Romero, the youngest of the original Native American Petitioners, led by Suzan Shown Harjo.

Be that as it may, the torch has been passed to a brand new generation of Native American Petitioners, eager to have the case decided on the merits. The "new" case filed by Amanda Blackhorse and others, more than three years ago, was promptly suspended, pending the final outcome in the Harjo case. Now that the Harjo case has concluded, the Blackhorse case will proceed before the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office, the same admininstrative body that found in favor of Harjo's disparagement claim in 1999.

Moreover, the TTAB appears to have read the news accounts and just today issued an order, indicating that if the parties to the Blackhorse proceeding don't advise it of the status of the Harjo case within thirty days, it will automatically resume the Blackhorse proceeding and issue a new scheduling order to move the case forward, so stay tuned.

OK, here is my prediction. Some day, I don't know when, justice will prevail, and some talented branding guru will make a tidy sum re-naming and re-branding this offensive NFL franchise name that could have and should have been re-named long ago.

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Supreme Court Asked to Review Washington Redskins Trademark Case

Posted on September 17, 2009 by Steve Baird

Back in May, I wrote a piece entitled "Re-Branding Madness in Washington" Overlooks Obvious: The Washington Redskins," discussing the trademark cancellation action that I filed on behalf of seven prominent Native American leaders back in September 1992 (Harjo et al v. Pro-Football, Inc.), and calling for the football team to "hire a branding guru to engage in some serious and successful re-branding."

Well, the 2009 football season is now upon us, and it appears my re-branding call has fallen on deaf ears, at least for now.

Yesterday the Washington Post "reported" the case may be heard by the U.S. Supreme Court.

What I found most interesting about the brief 197 word story in the Washington Post is that the "reporter" used the word "activist" three times and "group" twice, to describe the distinguished Native American leaders I know, without referring to them as individuals or even as being Native American (without the "activist" pejorative), leading me to wonder what yard-line his seats might be located at in FedEx Field.

For what it's worth, at least the Associated Press, ABC News, NBC Sports, ESPN, Yahoo News, WTOP.com, WUSA9.com, New York Times, New York Post, Miami Herald, San Francisco Chronicle, Seattle Times, Sports Illustrated, The Washington Times, and CBS News, have all managed to report the story without employing the highly-charged and politically-loaded term "activist," instead neutrally referring to the petitioners as "Native Americans" and "American Indians," who are offended by the team name.

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Single Letter Chewing Gum Brands: A Lasting Flavor or Just B S?

Posted on August 24, 2009 by Steve Baird

Cadbury Adams, a Cadbury Schweppes Company

 

 

 

 

    

 

 

My recent family road trip through the heartland had me spending more time than usual pumping gas and shopping in convenience stores, so a few chewing gum brands "gone single letter" caught my eye. As you may recall, I already have reported on Single Letter Envy in Hotel Branding. Well, it appears that the quest for single or one-letter brands is not limited to the hospitality industry (let alone others I'm sure to write about in the future), but has "stretched" to the confectionery industry too.

Turns out, both single letter gum brands that caught my eye are owned by the same company, Cadbury-Adams, part of "Cadbury plc – a leading global confectionery business with the number one or number two position in over 20 of the world's 50 largest confectionery markets."  

Yes, Cadbury Adams has migrated from its long-lasting Bubblicious brand name (having equal style for each letter) to a differently styled beginning B in Bubblicious, and most recently, to the letter B, standing alone, front and center on packaging; fully-truncated to B, as shown above. So, in our ever-abbreviated and truncated branding world, where G now means Gatorade (among other things, as a previously blogged about here), B now apparently means Bubblicious, and S now means Stride (another Cadbury Adams chewing gum brand). Might care be in order to avoid having these two brands appear side by side on store shelves -- at least in the order appearing above -- to avoid some unintended combined meaning of the brands? Perhaps one of the "sticky" consequences of single letter brands is the temptation others may have to spell alternate and unfavorable words and acronyms with them.

As you might imagine, confronting these single letter brands raises a number of questions in need of some answers. For example, are single or one-letter brands for chewing and bubble gum, just the latest flavor trend, or are they here to stay? Why are they currently so appealing, at least to Cadbury Adams? Are there other single letter gum brands in the marketplace, or just B S? Lastly, what are some of the legal ramifications of branding single letters for confectioners?

I'll leave the first two questions for others to chew on -- especially marketers, but I'll take a crack at the second two.

Do Other Single Letter Chewing Gum Brands Exist, or is it Just B S?

Well, apparently it's not just B S, even for Cadbury Adams, who has actually registered a stylized letter "C" for chewing gum, apparently to reinforce the first letter in the long-lasting Chiclets brand, here and here. Having said that, the specimens on record at the Trademark Office don't appear to scream "C" -- at least to me. Unlike the B and S brands, where these single letters appear front and center, standing alone, the stylized "C" trademark appears quite intertwined with the design elements of the packaging, making it difficult to discern the claimed "C" as a separate trademark.

In case you were wondering, Cadbury's major competitor Wrigley's (now part of Mars) currently appears more interested in putting single number brands (namely, the single numeral 5) front and center instead of single letter brands, although it apparently has flirted with more subtle use of a stylized W on the surface of certain gum sticks (consisting of "one or more 'W' designs substantially as shown in the drawing" below on the left):

Mark Image

Honestly, I always wondered what those "tire tracks" were on Juicy Fruit gum sticks.

Anyway, soon we may see how broadly Wrigley's views its scope of rights in "W" since the Walgreens' stylized W mark (shown above on the right) is set to publish for opposition next month, and within the long list of intended goods and services is "breath freshener . . . gum" and "smoking cessation . . . chewing gum". So, stay tuned here for more on this point.

Yet, others seem to prefer the combination of a single numeral and a single letter: N-2 and N-4. Indeed, if V-8 vegetable juice ever considers a brand extension into chewing gum (how likely is that?), it will have to contend with the already-registered V6 brand.

Wrigley's also owns a stylized "O" trademark used in connection with its Orbit brand gum, so, Oprah might have to think twice about launching a chewing gum brand sporting her brand of O anytime soon.

Legal Ramifications of Single Letter Brands?

There are a few legal take-aways for single letter brands worth mentioning here:

  1. Don't assume you can truncate an existing brand down to a single letter without conducting the necessary trademark due diligence;
  2. Designing a highly stylized first letter in a brand name (that is styled differently from the remaining letters in the name) may permit the owner to obtain a separate federal trademark registration covering the highly stylized single letter by itself (as Cadbury Adams did with the stylized B in Bubblicious some five years ago), even though -- at the time -- it is only used as the first letter in the brand name (as was the case for Bubblicious);
  3. Utilizing the strategy in (2) above may help facilitate and protect the possibility of later pursuing a migration of the single letter from the brand name (as Cadbury Adams did with B Bursts years after filing for B), and then to a stand alone, front and center, fully-truncated single letter brand, as depicted above;
  4. Taking a more gradual approach toward truncation and migration might help reduce risk of a conflict, especially in a crowded field, assuming it is pursued along with the design and registration strategy in (2) above; and 
  5. The scope of rights in a single letter brand will be impacted by third party uses of the same letter: The more crowded the field, the narrower the scope.

So, to illustrate the due diligence concern stated above in (1), if Trident decides to truncate itself to T, it may have to contend with this T and that T (stylized). And, if Gatorade Gum returns to the scene, it may have to consider G & Design, G-1, at least, before assuming it automatically may truncate to G for chewing gum.

With respect to scope of rights, apparently, Cadbury Adam's Bubblicious beat Bubble Yum, Big League Chew, and Bazooka in truncating to B, but Cadbury Adam's B, nevertheless, coexists with B-FRESH, and may soon coexist with Grupo Bimbo's B logo too.

It remains to be seen how many more single letter chewing and bubble gum brands "pop up" and whether any confectioners "expanding" in this direction will "blow it" by migrating or truncating their brands to single letters without doing -- in advance -- the necessary due diligence. Of course, the timing of the due diligence may unwrap the difference between a successful "no-face-sticking bubble gum" brand from one that leaves a rather sticky mess on your face when it finally bursts.

Before closing, and back to the title of this post for a moment, for anyone wondering whether the use of B S in the title of this post might be a tad too racy, first of all, it is an acronym with many possible meanings, so you're responsible for the one you decide to apply, but perhaps more importantly, I have confirmed that the Trademark Office readily registers marks consisting of or comprising B.S., so long as it is not spelled out in full as a "profane" or "scandalous" term (as Red Bull apparently attempted to do, here): (1) BS is federally-registered for jewelry and leather goods, (2) I.T. WITHOUT THE B.S. is federally-registered for maintenance and repair of computer networks, (3) BS EVER & Design is federally-registered for steel-wire, (4) BS (stylized) is federally registered for certification services, (5) NO B.S. is federally-registered for a marketing newsletter, (6) B S & Design is federally-registered for a swimming pool drain cover, (7) BS & Design is federally-registered for insurance services,  (8) B:S is federally-registered for footwear, (9) NO B.S. was federally-registered for telephone calling card services, (10) B.S. METER was federally-registered for a toy talking telephone, (11) CAN THE B.S. was federally-registered for printed message cards, and (12) a mark consisting of "a stitched letter 'B' on the left back pocket and a stitched letter 'S' on the right back pocket of a garmet" was approved by the Trademark Office.

Just so you know, even a mark having the words "NO B.S. MORTGAGE, LLC," and depicting a "bull with blue eyes and a gold nose ring holding a roll of white toilet paper and sitting on a white toilet," was not refused registration under Section 2(a) of the Lanham Act, despite that provision's prohibition on the registration of marks that consist of or comprise scandalous and immoral matter.
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"Re-Branding Madness in Washington" Overlooks Obvious: The Washington Redskins

Posted on May 21, 2009 by Steve Baird

Re-branding occurs all the time.

Re-branding occurs in business. Remember when Bell Atlantic became Verizon? Andersen Consulting became Accenture? How about when Philip Morris became Altria?  

Re-branding occurs in politics too. Just days ago, Judson Berger discussed a kind of "re-branding madness" consuming Washington, D.C. right now: "Terrorist attack is out. -- 'man caused disaster' is in." Our friends at Catchword Branding had a lot of fun with the political re-branding of Swine Flu.

Re-branding even occurs in the world of professional sports. Remember when the NBA franchise Washington Bullets became the Washington Wizards in 1997 out of concern that the Bullets name of some twenty-three years (1974-1997) had acquired "violent overtones".  How about the recent re-branding from the Seattle Supersonics to the Oklahoma City Thunder? Even the NFL has decided to recognize Cincinnati Bengal Chad Johnson's re-branding to Ocho Cinco.

Re-branding changes, according to Wikipedia, are "usually in an attempt to distance [the brand] from certain negative connotations of the previous branding." So, given the widespread meaning and understanding of "redskin" as "offensive slang" and that it is "used as a disparaging term for a Native American," given the pain the term has caused, and given that the team's helmets sport a Native American profile and not a certain variety of spud on them, why won't the Washington Redskins get on the re-branding bandwagon in our nation's capital? After all, even one of the attorneys at the same law firm hired by the team apparently has spoken out, read about the details here.

Instead, millions upon millions of dollars continue to be spent defending trademark registrations that never should have been granted in the first place under Section 2(a) of the Lanham Act, which forbids the federal registration of a trademark that "consists of or comprises matter" that "may disparage" persons or "brings them into contempt or disrepute".

John Welch over at the TTABlog did a thoughtful post earlier this week summarizing the history of the seventeen year old trademark case that I filed on behalf of seven prominent Native American leaders back in September 1992 (Harjo et al v. Pro-Football, Inc.), with the latest unfortunate ruling on appeal, here. Basically, in this latest and final ruling in the Harjo case, the D.C. Circuit Court of Appeals affirmed the D.C. District Court's ruling that even the youngest of the Native American Petitioners, Mateo Romero, had slept on his rights and not pursued the cancellation action soon enough after reaching the age of majority. He was twenty-six when he brought the cancellation action in 1992 and one of the registrations he challenged had only issued two years earlier in 1990.

In 1999, when I left the case, the Harjo Petitioners had prevailed on the merits and successfully argued to the Trademark Trial and Appeal Board (TTAB) that cancellation actions based on the "may disparage" language are rooted in "public policy" so a laches defense should not even be available or apply, here. Five years before ordering that the team's Redskins registrations be cancelled, the TTAB had wisely held in 1994 "there exists a broader interest -- an interest beyond the personal interest being asserted by the present petitioners -- in preventing a party from receiving the benefits of registration when a trial might show that [the team's] marks hold a substantial segment of the population up to public ridicule."

The good news, however, even in the face of the D.C. Circuit Court of Appeal's disappointing ruling on laches, is that there is a brand new generation of Native American Petitioners, led by Amanda Blackhorse, to make sure that a brand new similar case is actually and finally decided on the merits. In fact, doesn't this development demonstrate why the 1994 ruling that struck the team's laches (slept on rights) defense was correct in the first place? The fact that, as long as the offensive team name continues, there always will be new Native American Petitioners reaching the age of majority anxious to object shows that their cause of action is rooted in public policy, not some personal and individual right that might be waived by failing to act quickly enough.

Again, putting the legal issues aside, why doesn't the team do the right thing, as a responsible business, and hire a branding guru to engage in some serious and successful re-branding?

UPDATE: Supreme Court Requested to Review Washington Redskins Trademark Case.
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