Now that we’re back in the blogging business, I’m anxious to be able to harvest some visual trademark stories captured on my iPhone over the past 7 months:

Are you surprised to see the federal registration symbol marking World’s Softest?

After all, the phrase seems to communicate important information about the socks in question, as does the federally-registered slogan: Like Walking on Clouds!

Turns out, not only has the sock maker registered World’s Softest Sock for socks, it has registered different versions of “World’s Softest” 5 different times in 13 years!

In fact, the 2005 registration reveals a claim of partial acquired distinctiveness in the wording “World’s Softest” — avoiding the descriptive disclaimer requirement.

The 2004 registration shows acquired distinctiveness as to the combination of all three words (at another time we’ll tackle that “Sock” doesn’t appear in the photo).

Given that those registrations issued about fifteen years ago, one might wonder how they’d fare today with the heightened focus on informational matter.

This is a common basis for registration refusal nowadays: “Merely informational matter fails to function as a mark to indicate source and thus is not registrable.”

In August, Eddie Bauer lost an appeal to the TTAB, affirming a refusal of “World’s Best Down” as “incapable” of being a trademark for bedding containing down.

Eddie Bauer already had a Supplemental Registration for the same mark for clothing with down, so in 2008 it was treated as merely descriptive, but capable.

To be clear, the federal trademark statute doesn’t include the terms “laudatory”  or “informational,” it does, however, provide direction for descriptive and generic.

Of course, many valid trademarks communicate “information” beyond source, for example, suggestive marks or descriptive ones that have become distinctive.

In fact, the assigned Examining Attorney was clearly persuaded in 2004: “World’s Softest” is not incapable of serving the important purpose of a sock trademark.

Both registrations (2004 and 2005) issued despite the Examining Attorney’s initial reliance on the Federal Circuit’s 1999 decision that “The Best Beer in America” is so highly laudatory that it is incapable of serving as a valid trademark.

At the risk of adding more fuzz on this sock discussion, during prosecution of a pair of World’s Softest & Design registrations (here 2012, and here 2013), World’s Softest was considered merely descriptive and disclaimed, but not incapable.

Moreover, as to the very phrase “World’s Softest,” third parties beyond the above purveyor of socks also enjoy registered rights in marks containing the phrase for bedding (2019 Supplemental Registration), plush toys (acquired distinctiveness in 2019), and towels and sheets ( 2018 Supplemental Registrations) — not incapable.

Back to the Eddie Bauer example, the TTAB was not moved from its conclusion of incapability even though the record showed more than 50 issued registrations for “World’s Best” formative marks, seemingly indicating some level of capability.

So, I’m left wondering, is “World’s Softest” materially different from “World’s Best,” as to the risk of informational/incapability, or are we witnessing subjectivity and different treatment by different Examining Attorneys, or something else?

And, when responding to an informational incapability refusal by pointing to other comparable marks that have been allowed registration, is this canned USPTO response a polite and perhaps more formal way of saying, put a sock in it?

However, prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board.  TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017). Each case is decided on its own facts, and each mark stands on its own merits. In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).

Here’s a question for trademark types: Is the TTAB’s Eddie Bauer decision more or less likely to encourage Examining Attorneys to raise informational incapability?

And for our engaging marketing types, is this mess of unmatched socks, yet one more reason to favor inherently distinctive and suggestive marks?

Last but not least, can we agree that we’re on a path frustrating to both groups? It’s no walk in the park, but even more importantly, it’s no walk on clouds either.

It’s been a while . . . about seven months now.

As you’ll see, a few things have happened since April, when we last left you with these gems on the topic of trademark bullying: Stop Bullying the Entrepreneurs, What does Entrepreneur Mean, Anyway?, and Public Shaming is Not the Solution to Trademark Bullying. Let’s Build One

We’re thankful to be back here, to resume the legal and marketing team dance.

So, in the spirit of counting our abundant blessings, especially this week, I’d like to share with you how continuously thankful I am for:

Tiffany, Draeke, Tucker and I, with the help of others, will no doubt have some fun, thought-provoking posts for you as we look ahead to 2020, and we are so thankful to be doing so as part of the GT platform, just named U.S. News and World Report’s only Law Firm of the Year in Trademark Law for 2020.

Thank you, Susan Heller and Joel Feldman, for your incredible leadership of GT’s Trademark and Brand Management Group.

Dear readers, I am truly, continuously thankful for the ability and opportunity to stay engaged with you.

What or who are you thankful for?

Jason Voiovich

Last week, we saw the latest installment in the “trademark bullying” saga. But this time was different. Instead of lawyers fighting amongst themselves, DuetsBlog brought out the big gun: Seth Godin. You can read the entire piece here. I like Seth Godin, and so do lots of other people (hence, the “big gun”). I read the comments (over 30 from my count). It seems to make people feel better to have someone with credibility give voice to their frustration.

I’m not against feeling better; mental health is a big deal. But as I read situation after situation, I am struck by how cases of trademark bullying almost always turn out: The small business loses.

Perhaps they don’t lose in the legal sense, but they lose in nearly every sense that matters to a small business: Time, Energy, Money, Resources, and Attention. Every moment addressing a trademark issue is a moment not invested in their business. Small businesses do not have any of those assets to spare. Large organizations do. They have legal teams that shield their workers from the ongoing drama. They have marketing budgets to drown out negative publicity. If all else fails, they have the resources to outlast you. In over 10 years of public attention, is it any wonder their behavior hasn’t changed?

Public shaming feels good, but it is not working.

It’s time to act.

To act, small business owners need reliable information about their risks. They need that information in advance of a trademark filing, and even in advance of first usage – after-the-fact litigation or advertising insurance don’t solve the problem. And finally, they need accessible and affordable information – calling your lawyer before each decision is not realistic.

In other words, small business owners need an ounce of (affordable) prevention, not a pound of cure.

Here’s my proposal.

To explain it, I am going to adapt Guy Kawasaki’s new business pitch format. At the end, I am going to ask you to invest. Let’s go.

Define the problem.

Trademark owners rightfully defend what they’ve built. However, when they overstep, there is no downside for their behavior. Even if they “lose” in court, they don’t really lose. They create a “chilling effect” for future conflicts. Additionally, they can restrict the distraction in their organization to only their legal team (who, to them, this is not a distraction). By contrast, there is plenty of downside for the small business owner. An unfavorable result in a lawsuit can put a small company out of business. But even if you win, you lose. Distractions are killers.

How does your product solve that problem?

Prevention is the best cure. Imagine a “Trademark Risk Score” much like a credit score. At “1” might be a name you completely invent from random characters. At “100” might be naming your tech company “Big Apple Computers” – an algorithm automatically scores everything in between.

Underlying magic or technology.

Building the algorithm seems easy, but it is not. Factors could include the number of existing trademarks, the size of the companies with those marks, matches in categories of use, length of trademark ownership, recent court decisions or filings, etc. But those factors don’t make an algorithm any more than ingredients don’t make a recipe. The “magic” here is using professional attorneys to “train” the algorithm and improve it.

Business model.

Small business owners could buy access to the system as a one-time purchase (like a “risk check”) or as a subscription (like a “regular checkup”). Accelerators and angels offer this subscription as a service to their startups. I could even see entrepreneurial publications (cough, cough) providing this to their subscribers as an add-on. Lawyers could advertise their services. You get the idea.

Go-To-Market plan.

Aggregators of small businesses are key to the strategy; reaching them 1:1 is cost prohibitive. Fortunately, there are plenty of accelerators, gig economy supporters (e.g. WeWork), and trademark lawyers in the world.

Competitive advantages.

The biggest competitor to this idea is a data aggregator named Trademarkia. However, their service still relies on you as the small business owner to know what you’re looking for (and I don’t think their search functions or aggregation is all that “smart”). If you’re confused, they offer expensive add-on services ranging in cost up to $10,000. That’s not going to fly for the average small business owner. They need something easier to understand and digest.

In this proposal, you plug in a few details, the algorithm spits out a risk score. Is it perfect? No. Will it protect you? No. But it will give you critical information you need to make an informed decision on next steps based on your risk tolerance.

Management team.

This solution will require three key groups of people – tech (to write the learning algorithm), lawyers (to train it), and marketers (to promote it). I wonder if I know any of those people who might be reading this?

Financial projections.

Based on the 300,000 (or so) new businesses started in the United States each year, and a 20% penetration rate for my TAM, and a $100 subscription price, I calculate about $6 million in annual revenue. Back of the napkin, but it’s a business.

Rollout plan and milestones.

I am putting my money where my mouth is – with hard cash. I am committing publicly to the first $1,000. That’s (obviously) not enough to get started, and there is hardly enough detail in this “proposal” to make a formal investment decision, but perhaps it’s enough to get others interested and begin the conversation.

Hate this idea? Awesome! Use it (copyright free) to come up with your own idea.

Just don’t keep public shaming. That’s not helping anyone.

Let’s be very clear, today is April Fools’ Day, but this is not an April Fools’ Joke.

It’s not every day Seth Godin volunteers a guest post, but Thursday was that day.

Friday we published Stop Bullying the Entrepreneurs, 33 comments and counting.

This isn’t the first time Seth has spoken out against trademark bullying, he’s on record before noting: “When a brand becomes a bully, it loses something vital.

And: “If you want to keep the taco place down the street from infringing on your business, don’t hire lawyers to hate on their slogan. Make better tacos instead.”

On Friday Seth went to public bat for kindred spirit and entrepreneur Jen Lehner:

Seth called out Entrepreneur Magazine for going after the name and mark for Jen’s podcast, “The Front Row Entrepreneur” — described by Jen this way: “The Front Row Entrepreneur gives you a front row seat to all of the most exciting people and happenings in online marketing and entrepreneurship.”

To Seth’s point, it’s difficult to create a podcast designed for an entire class of people known as entrepreneurs and not have the ability to include “entrepreneur” in the name, because it is: “One of the only words available to describe a person who builds an enterprise bigger than herself, often using outside resources.”

Actually, that’s a fair point, given the special meaning of the word — no other word that I could find with a thesaurus really captures the same and complete essence of the word “entrepreneur,” not “administrator, contractor, executive, manager, producer, backer, businessperson, founder, industrialist, organizer, promoter,” etc.

In fact, the Examining Attorney who approved Jen’s application to register THE FRONT ROW ENTREPRENEUR as a mark for podcasts, recognized the special meaning of the word, noting it to be descriptive of Jen’s podcasts: “A person who organizes, operates, and assumes the risk for a business venture.”

So, the USPTO told Jen to disclaim exclusive rights in the term ENTREPRENEUR in THE FRONT ROW ENTREPRENEUR mark for podcasts, and she did, but to satisfy Entrepreneur Magazine she also apparently needed to withdraw her registration application and, in terms of future use, contort the more efficient name into the more wordy mouthful: THE FRONT ROW PODCAST FOR ENTREPRENEURS.

So, what does ENTREPRENEUR mean anyway? Clearly much more than a particular magazine or other offerings of that magazine. Might it even designate a category or perhaps a subgroup of magazines — those about and for an entrepreneur?

If Entrepreneur Magazine is not careful, one of these days, it might find itself in a position tangling with an enforcement target willing to go the distance, finding out the hard way, if ENTREPRENEUR has become generic (part of the public domain).

Seth Godin

It’s not good marketing and I’m pretty sure it’s not good law, either.

It seems as though Entrepreneur magazine (who should know better) is working with Latham and Watkins (who should certainly know better) to persist in their relentless efforts to bully entrepreneurs to stop using the word ‘entrepreneur’.

And yes, it’s a word.

Not a fanciful or inherently distinctive trademark, a word. Almost 800,000,000 matches in Google.

One of the only words available to describe a person who builds an enterprise bigger than herself, often using outside resources.

Without that word, it’s hard to describe the work.

Poignantly, it’s interesting to see that they’re not going after people with a ton of resources. If Brian Koppelman, David Levien and Showtime started going after billionaires for using the word ‘Billions’, I’d call it a fair fight. A dumb fight, but a fair one.

But deep in the bowels of the Latham offices in San Diego (which, fortunately, hasn’t been sued by the producers of Anchorman for trademark infringement) there are young lawyers, early in their career, sending nasty letters to entrepreneurs (there’s that word again) like Jen Lehner. You can see her work here: jenlehner.com/blog

Apparently, the powers that be decided that her podcast called “Front Row Entrepreneur” somehow infringed on a magazine that hit its peak in 2013. How?

“Front Row” modifies the noun. The trademark is the modifier, not the noun. Front Row™ is a trademark. Entrepreneur is simply a word.

With great cost and hassle, fledgling entrepreneurs (there’s that word again) who have finally gotten their business off the ground now have to dig in to either fight a huge law firm and their misguided but well-funded lawyers–or spend the money to change what they already built.

Who, exactly, does this help?

By engaging in this behavior, Entrepreneur might think it is building a strong trademark; instead, it is throwing away the very purpose of any trademark: To be a symbol of goodwill within a community. Amongst entrepreneurs, it is simply becoming a hated one.

Better, I think, to spend the time and the money building something that entrepreneurs actually like and respect.

The saltiest trademark news in the last week surrounds singer Cardi B’s application to register the marks “Okurr” and “Okurrr,” both slang for “Okay???”–but pronounced in a hip, rolled-r trill, sometimes with a shady tone. Or, as Cardi describes, it: the sound of a “cold pigeon in New York City.” If you haven’t heard it said before, search no further than these humorous and fully-extra renditions by a few popular drag queens:

As with most seemingly-overreaching trademark applications, Cardi’s registration of these popular words–particularly in the drag queen community–has been met with criticism. The public backlash is understandable; it brings to mind the concern that trademarking a term will take it out of the public domain and inhibit free speech and fair use. Though, to be fair, Cardi’s applications only seek to preclude use of the word on clothing and merchandise. But she acknowledges the registrations are, essentially, a cash grab.

Indeed, trademarking common words appears to be a regular strategy for celebrities seeking to capitalize on words’ popularity. I’m reminded by the recent example of singer Will.I.Am attempting to trademark the phrase “willpower,” which was cancelled by the Trademark Trial and Appeal Board because the mark was too similar to other existing marks and had no source-indicating distinctiveness. That is, the public did not strongly associate the word “willpower” with Will.I.Am, so Will.I.Am cannot claim exclusive use of the mark in commerce. But Cardi argues that “Okurrr” has become her famous slogan, buoyed by a Superbowl Pepsi ad featuring her using the phrase and instructing others on how to pronounce it correctly.

And that brings me to the “T”–the truth–of the enforceability of Cardi’s registrations: it is unlikely that the general public would identify Cardi as the source of goods beat with “Okurrr” or similar marks because, in fact, “Cardi can’t honestly make the argument that she created the word.” Rather, according to the fiercest drag queen of them all, RuPaul, the credit goes to Broadway actress Laura Bell Bundy–even though RuPaul and other drag queens brought the phrase, which may have roots in African-American culture, to the runway, where it was picked up by the Kardashians and, now, Cardi B.

The contextual history of Okurrr is important and cannot be overlooked in the distinctiveness and goodwill analysis. It not only undermines Cardi’s legitimate claim to exclusive nation-wide use of the mark in commerce, but also seriously calls into question the appropriateness of restricting use of the word by all others, including the communities from which it originates–and which much of the public likely identify as earlier or actual sources of the word. Thus, trademarking “Okurrr” is likely to lose from both a legal and PR standpoint. That’s a sickening realness, but not in a “feeling the fantasy” kind of way.

Whether Cardi’s tuck-under will be allowed to stand, or the gag will be up, remains to be seen. At least one drag queen, Alaska, who is also known for her rendition of “Okurrr,” plans to clock Cardi’s conduct, potentially by challenging the registrations in court. Time will tell whether Cardi’s gambit will stay, or be asked to “sashay away.”

It’s that time of year again, and we’re honored to share some wonderful news — hot off the press today — concerning the 2019 JD Supra Readers’ Choice Awards:

For the third year in a row, we have been recognized as the Top law firm writing on Trademarks (incredibly, four of us made the Top Ten listing out of more than 1,200).

Of course, we couldn’t achieve these lofty accolades without you, our dear readers, followers, and those who generously provide their valuable insights and comments.

However you have found us, whether through JD Supra, LinkedIn, Twitter, or if you’ve been with us since the beginning, more than 10 years ago, we’re thrilled you have joined us on this journey, and thank you for your generous contributions! Each one of you inspire us to write clearly, also thanks to Jimmy John’s, for this reminder:

Let’s all hope that the Supplemental Trademark Register is not on the death watch.

It appears though to be on life support, at times, and especially with the USPTO’s heightened focus on “merely informational” matter, including laudatory messages.

This is a common basis for registration refusal nowadays: “Merely informational matter fails to function as a mark to indicate source and thus is not registrable.”

Don’t all valid trademarks communicate information? Exactly. How does the USPTO know when at least one of the bits of that information is not about the source?

It cannot be fatal to validity that a mark communicates more information than simply source, see a suggestive mark or a descriptive one that has become distinctive.

Although not a laudatory example, the first precedential decision from the TTAB in 2019 denied Wal-Mart’s application on the Principal Register, for INVESTING IN AMERICAN JOBS, a slogan for retail store services, calling it “merely informational,incapable as a mark:


Wal-Mart recognized that its claimed mark communicated descriptive information, yet it argued that its evidence was sufficient to show acquired distinctiveness.

What’s striking about the Wal-Mart decision is that evidence of descriptiveness was used to support the fatal conclusion that the slogan can never function as a mark.

It relied on a series of prior cases holding certain phrases incapable of functioning as marks (THINK GREEN, GUARANTEED STARTING, DRIVE SAFELY, and others).

It used evidence typically supportive of a descriptiveness refusal to say that Wal-Mart’s slogan would not be perceived as a mark to indicate the source of services.

It also pointed to several examples like “ONCE A MARINE, ALWAYS A MARINE,” “PROUDLY MADE IN THE USA,” and “THE BEST BEER IN AMERICA,” as merely informational or laudatory slogans, incapable of serving a trademark purpose.

Laudatory terms long have been considered merely descriptive (not generic) for the provided goods or services, so they’re ideally suited for the Supplemental Register.

The Supplemental Register exists as a holding cell for merely descriptive phrases not yet distinctive, but capable of becoming distinctive, maybe at some future time.

Incapable matter — subject matter that cannot serve as a trademark — like generic terms and phrases are impossible and hopeless of ever functioning as a valid mark.

TMEP 1202.04(a) actually blends laudatory and informational: “Matter that only conveys general information about the applicant’s identified goods or services, including highly laudatory claims of superiority, fails to function as a mark.”

So, now we’re going to differentiate between garden variety laudatory claims that are descriptive, and “highly laudatory claims of superiority” — the latter being incapable, and the former holding out some hope of having at least a chance?

This unfortunate approach is reminiscent of the widely criticized approach of the “so highly descriptive” category as to be incapable of serving a trademark purpose.

All the way back in 1989, I went on the record, questioning the “so highly descriptive as to be incapable” line of cases in “Putting the Cart Before the Horse in Assessing Trademark Validity — Toward Redefining the Inherently Generic Term,” published in the University of Iowa College of Law’s Journal of Corporation Law.

The problem with the “so highly descriptive” category is it treats descriptive matter as incapable and generic without the rigors of an actual genericness determination.

The poster (or coaster) child for the eerily similar approach is the Federal Circuit’s 1999 decision rejecting Sam Adam’s THE BEST BEER IN AMERICA slogan as incapable, blurring the distinction between descriptive and generic designations:

In that decision, Sam Adams had “not met its burden to show” that the slogan THE BEST BEER IN AMERICA for beer, had acquired distinctiveness/secondary meaning.

Had the TTAB and Federal Circuit stopped there, fair enough, doing so would have allowed Sam Adams to seek a Supplemental Registration and try again later (with more evidence of acquired distinctiveness) for a coveted Principal Registration.

But instead, both the TTAB below and the Federal Circuit on review, went on to editorialize that no amount of evidence could ever turn THE BEST BEER IN AMERICA into a trademark, not because it’s generic, but because it’s incapable.

That’s what courts routinely said about single color marks, they’re impossible and incapable of serving a trademark purpose, until Owens Corning came along with the Pink Panther, to reverse decades of thinking against single color trademarks.

And, if “highly laudatory claims of superiority” are actually incapable of a trademark purpose and outside the possible definition of a trademark, then how can Principal Registration of AMERICA’S BEST BEER DRINKING CITY be explained, or these?

Let’s be honest, since the stated test is really to discern how the claimed mark would be perceived by the relevant public, too easily dismissing evidence going to that question, doesn’t help and starts to feel more like an impossible shell game.

I’d rather see the evidence of descriptiveness (which provides information) used to support a descriptiveness refusal, allow a Supplemental Registration, then the USPTO can wage the real evidentiary battle with claims of acquired distinctiveness.

Last week was an incredible opportunity to share some of these thoughts in NYC with those attending Practicing Law Institute’s Advanced Trademark Law 2019 seminar, thanks to PLI, Kenneth Min, and co-chairs Kieran Doyle and Dean Eyler!

In the end, let’s all hope that the USPTO reins in its hyper-focus on expanding the “merely informational” and outcome-determinative category of incapable subject matter, so we don’t have to kiss the Supplemental Register goodbye.

Additional hat tip to Sam Adam’s and its vintage painter’s cap:

 

 

Famous celebrity chef Chloe Coscarelli (“Chloe”) and Tom Colicchio (“Colicchio”) started a new pop-up restaurant called “Supernatural” that is in the midst of a “food fight” or lawsuit with owners of the By Chloe restaurant Chloe originally founded but no longer has an ownership interest in.  After receiving cease and desist letter from BCH Hospitality Group LLC (“BCH”), Chloe and Colicchio sued BCH in a declaratory judgment action for a judgment that they do not infringe on the CHLOE® trademarks and did not breach Coscarelli’s Name, Face and Likeness Agreement (“NFL Agreement”) with BCH.

Chloe was the first vegan chef to win Cupcake Wars, a national cooking competition, on the Food Network.  She is a published author of four popular cookbooks.  She is known as “Chloe” and “Chef Chloe” and worked at gourmet vegan restaurants in New York and San Francisco.  She has been recognized as “America’s favorite vegan chef” and featured on the “30 under 30” series by  The New York Times, Zagat and Forbes.  However, I must confess that although I am a pescatarian (meaning a vegetarian that eats fish) I had not heard of Chloe or her vegan restaurant until I learned about her lawsuit.

However, I have heard of Chef Tom Colicchio.  He is a James Beard Award winner and also known as “Top Chef.”  Colicchio received an Emmy Award for his work as a Judge on the show Top Chef.  I have had the pleasure of eating at Colicchio’s New York restaurants:  CRAFT (located by the fabulous Flat Iron Building), Gotham Bar & Grill and Gramercy Tavern.  I am hoping to check out The Quilted Giraffe on my next trip to New York (but I digress).

Their Complaint includes the following picture of the chefs:

Chloe founded “by CHLOE” and then partnered with BCH’s predecessor.  BCH is associated with James Haber and ESquared Hospitality.  She claims in her lawsuit that BCH ousted her from the restaurant and she has not been involved for two years.  BCH has a different story, alleging among other things, that she was “grossly negligent” related to losing leases and sabotaging deals with partners.  I have not delved into this messy business “divorce” so I will comment no further.

After Chloe left, BCH started “Sweets by Chloe bakery” pictured below:

am starting to get hungry so I better get back to the legal dispute.  In their Complaint, the chefs included the following picture related to their vegan restaurant:

The chefs argued that the restaurant’s name is “Supernatural” which is not similar to By Chloe at all.  The name highlights that the food is super natural.  According to the Complaint, the two chefs collaboration arose from Colicchio writing “An Open letter to (Male) Chefs” on the platform Medium about rampant harassment in the restaurant industry.  It sounds like Colicchio is on the right side of the Me-Too movement.

In contrast,  BCH focuses on the lower portion that identified the two chefs involved with the new SUPERNATURAL restaurant.  Specifically, the lower part of the sign is “CHLOE COSCARELLI X TOM COLICCHIO COLLABORATION.”  The chefs will likely argue that their names are informative and the trademark and certainly any dominant mark for their restaurant is SUPERNATURAL.  Further, the chefs argue their fame as chefs will not be confused with BCH or its By Chloe marks or restaurants.

I have not seen the NFL Agreement.  It may have a non-compete, but it would likely have some sort of time limit rather than preclude her from working for life.  Chloe asserts the agreement is terminated.  Further, I would doubt that the NFL Agreement required her to change her name or not be able to truthfully state who she is in connection with a restaurant.  The more likely prohibition would be to not use the name “CHLOE” for the restaurant.  But, I have not seen the NFL Agreement, so there may be other arguments that BCH will have against the chef.

This will be an interesting case to follow.  As there are allegations about a dip in quality at By Chloe, the judge and jury might want to sample food from the restaurants involved.

If you have heard of Penn State, you have probably heard the phrase “Happy Valley.” The school, the students, and the media regularly use “Happy Valley” in reference to the school and the surrounding community. The school considers the association so strong that Penn State recently applied to register HAPPY VALLEY as a trademark for clothing – and received a refusal to register.

The Trademark Office examining attorney assigned to the application refused registration on the ground the phrase “Happy Valley” is geographically descriptive. This means that the examining attorney concluded the public will see the phrase simply as describing the geographic area where the school is located. The school’s own website seems to confirm the examining attorney’s concerns, as it describes “Happy Valley” as an “also known as” name for the town, State College.

But don’t worry Penn State fans. The university has a strong chance to overcome the refusals so long as Penn State can demonstrate the HAPPY VALLEY trademark has acquired distinctiveness in the minds of consumers. Marks that may initially be considered geographically descriptive or may become distinctive after sufficient use of the mark in commerce.

For example, use of a trademark for five years or longer may be sufficient to overcome a refusal on this ground. In fact, the examining attorney expressly references this option in the Office Action. Accordingly, chances are good Penn State can overcome this refusal simply by submitting a declaration that the university has used the mark in commerce for more than five years. However, the Trademark Office will also consider other evidence such as widespread advertising efforts, significant sales numbers, and substantial media attention and publicity.

As a fellow alum of a Big Ten university (which university isn’t important), I wanted to provide some assistance in gathering evidence in support of Penn State’s potential claim of acquired distinctiveness for the HAPPY VALLEY trademark.

If you’ve heard of Penn State, you know they receive a lot of publicity for their college sports teams. For example, this ESPN article prominently uses HAPPY VALLEY to refer to Penn State with its headline “Iowa silences No. 5 Penn State in Happy Valley.”

The Penn State wrestling program is also among the best in the country. Historically, the Happy Valley-based wrestling squad has the third-most successful program in the country, with 8 (!!) NCAA national championships , just slightly trailing Iowa’s 23 national championships.

Last, but certainly not least, Penn State can point to a visit last month from the Big Ten Tournament Champions and presumptive NCAA ’s basketball player of the year Megan Gustafson. Yet again Penn State received some great publicity associating the claimed HAPPY VALLEY mark with the University, as media ran with the headline “Iowa Cruises in Happy Valley.”

With all this evidence, Penn State fans should feel good about the likelihood they’ll soon be able to purchase HAPPY VALLEY t-shirts with a ® symbol adjacent to the phrase (exclusively from a licensed retailer). Of course, if they need more evidence, I’m sure I can find some fellow Big Ten organizations that would be happy to add some new headlines in 2019.