Since the origin of trademark use guidelines, there has been immutable, black and white legal direction against using brand names (and the trademarks that protect them), as nouns or verbs. If you’ve seen more flexible rules, please share.

Yet, marketers have recognized the power verbs have over nouns and adjectives.

Highlighting the legal need for flexibility and creativity in support of discerning marketers, and advocating for the analysis of realistic risks while trying to manage the risk of genericide, I’ve written about brandverbing for more than a decade.

Simple do’s and don’ts may have obtained unchallenged obedience in the past, but as I’ve documented here with many real brandverbing examples, the trend to at least flirt with brandverbing doesn’t appear on the decline, enter Rolo candy:

Rolo’s television commercial called, “Rolling Out of Control,” is described like this:

“A man out hiking gets suddenly struck by a frisbee. The shock sends him rolling out of control down a steep long slope. All the rolling reminds him of the Rolos he has tucked in his shirt pocket. The rich chocolate candy and creamy caramel are enough for him to enjoy his roll down the hill.”

It features a tagline (“That’s How You Rolo“) that is presently unregistered (contrary to this National Law Review direction), but what are the odds the ad begins with a flying Frisbee, a toy trademark actually on the Genericide Watch.

Ironically, another brandverb hit my screen today; I’ve decided to Aleve it for later:

So, what brands/trademarks have you spotted being used as verbs? Concerned?

“It’s curtains” clearly means “the end” or “an adverse ending to something.”

So, the more ambiguous portion of my opening question is, which Corona?

The present news cycle would have us believe there are two: a virus and a beer.

Both the beer and virus names come from the Latin translation to “crown.”

Last week there were some odd suggestions that the two have become one.

Actually, the suggestions about confusion derived from a spike in internet searches for “corona beer virus” and “beer virus,” between January 22 and 30.

A more sober analysis may reveal the searching spike was from those looking for silly memes to share, not evidencing any mistaken belief of a real connection.

Indeed, the beer brand is not concerned about confusion: “Consumers, by and large, understand there’s no linkage between the virus and our beer/business.”

Cartoonist Geoff Coates knows the difference, and offers a funny take on the topic.

But, back to the original question, let’s hope it’s curtains for the coronavirus soon, it is a serious health problem that seems to be growing in scope, not shrinking.

As to the beer brand, despite a late night comedian’s assertion that Corona beer sales actually have suffered from confusion, curtains aren’t likely for the brand.

Actually, even if there was a drop in January Corona beer sales, it might be better explained by the growing interest in drinking less during Dry January.

On January 8, 2020, Corona filed this logo — had it come two weeks later, perhaps it would have included another type of needed protection, given the virus crisis:

Truth be told, there are actually lots of Corona brands and trademarks out there.

“Corona” is presently federally-registered in the U.S. by a multitude of others for products and services as diverse as chocolates, wine, jewelry, cotton fabric, corn-grinders, meat choppers, plastic food product containers, dinnerware, toilets, toothbrushes, ointment, pruning shears, book-binding machines, accordions, electric heaters, oil stoves, personal headlamps, spectrometers, laboratory instruments, paint brushes, environmental services, gymnastic mats, computer software, animal shampoo, dog and cat food, and order fulfillment services.

Apparently there is a common marketing and business interest across many different industries to suggest a brand is royal or perhaps crown-worthy.

Maybe a silver lining in the story for Corona beer, is that the unsolicited media attention may indicate strong trademark rights in the face of this crowded field.

What puzzles me are the intent-to-use trademark filings last week for Wuhan Vax, Wuhan Corona Vax, Wuhan Mvax, and Wuhan Corona Mvax, all for vaccines.

If a vaccine became available to treat the deadly virus soon, wouldn’t those names be appropriate descriptive or generic vaccine names (not brand or trade names)?

Or, given the USPTO’s heightened focus on incapable informational matter, let’s stay tuned to see how these claimed virus marks are treated during examination.

After all, the virus is also called Wuhan Virus, as it was first found in Wuhan, China.

In the end, when it’s curtain call for the vaccine, will the Corona Curtain be raised?

A belated thanks to Candice Kim and Professor Leah Chan Grinvald for sharing their insights and perspectives in our recent webinar on trademark bullying.

One topic we discussed is Backcountry.com’s recent back-down to backlash over its trademark enforcement activities concerning the Backcountry mark.

The example is a harsh reminder to trademark counsel of the worst case scenario when a trademark enforcement campaign comes under fierce public attack.

In response to the boycott and backlash, Backcountry.com not only issued a public apology, it admitted to fumbling how it pursued trademark claims, it admitted to making a mistake and to misjudging the impact of its actions.

Backcountry.com even made a public promise to make amends with those adversely impacted by its actions, and it has taken steps to rebuild public trust.

Last but not least, especially for all the trademark types in the crowd, news reports in November were that Backcountry.com had fired its trademark counsel.

Last week Backcountry.com revoked the power of attorney for its prior trademark counsel and appointed new USPTO counsel, doing the same at the TTAB too.

Not knowing the facts of how or where things may have gone wrong with prior counsel, it will be interesting to see what enforcement will occur going forward.

Back to the webinar, we also focused attention on strategies and tactics brand owners can employ to develop intelligent trademark enforcement campaigns.

One slide that webinar attendees really liked from our backpack is this one:

It visually illustrates how a brand owner might consider analyzing watch reports.

Obviously a precursor to its development would be a trademark strength analysis.

Keep in mind, this particular graphic is only an illustration; the perfectly spaced concentric circles should not be interpreted as trademark lines, as we know trademark lines are more subjective than measurable real estate property lines.

The final graphic for a brand would reflect not only an intelligent and defensible trademark enforcement strategy, but attempts to balance any PR concerns too.

Last week I had the fortune of spending the week at the Shot Show in Las Vegas, capturing this brand collage of exhibitors for an event at a restaurant in my hotel:

Interestingly, Kryptek has a Battlefield to Backcountry registration due for USPTO maintenance in days, and surprisingly, it was never opposed by Backcountry.com.

With all binoculars on Backcountry.com’s promise that “[w]e only want what’s best for the whole community and we want every person and business in it to thrive” time will tell what tools may remain in new trademark counsel’s backpack.

One of the problems with “trademark bullying” can be a failure to comprehend the legal standard governing most trademark disputes: Likelihood of confusion.

Another is a failure to appreciate the subjective nature of whether the legal line has been crossed or whether there has been an attempted trademark overreach.

Understanding that trademark rights are dynamic (not static, meaning they can grow or shrink over time) and that this type of intellectual property is not amenable to precise demarcation like a real estate property line, is key.

Likelihood of confusion is a fact-intensive determination that seeks to weigh multiple factors beyond actual confusion or an emotionally-charged intent factor.

That said, when I’m helping a client respond to overreach, besides sticking to the facts and avoiding an emotional response, I’ve found Rorschach can help too:

The Rorschach inkblot test recognizes that different people can see different things when looking at the very same thing, sometimes wildly different things.

Likelihood of confusion is a surrogate to predict consumer perceptions, so when a demand exhibits an unhealthy preoccupation of the brand owner’s mind, say so.

One trademark demander quietly went away after receiving this partial response:

“Setting aside how a relevant customer would view the design, the design looks no more like the letter N (with an extraneous line) than it does the letter X within parallel lines, or a plus sign within parallel lines, or a stylized number 8, or a stylized lemniscate, or a tilted hour glass, or a spindle, or a bowtie, or a stylized 4b, or any number of other equally strained possibilities. With a good imagination, one can pick out a lot of things when confronted with a design element, but a Rorschach exercise isn’t the test for trademark infringement or confusing similarity.”

Join us next week for a vibrant discussion about how to avoid the “trademark bullying” label, when designing a coherent trademark enforcement strategy.

One example we’ll analyze is the Backcountry.com back-down to backlash.

Another is the example Seth Godin wrote about on DuetsBlog in April 2019.

I’m thankful for the opportunity to discuss this important trademark topic with one of my talented partners at GT, Candice Kim, and we’re also joined by the learned Leah Chan Grinvald, Professor of Law, at Suffolk University in Boston, who authored Shaming Trademark Bullies.

The Strafford webinar takes place at noon CST, Thursday January 16.

Here is a link on how to sign up, or let me know if you’d like a complementary pass, we still have a few to share with some of our loyal readers.

Some commands support trademark ownership (Just Do It), and others don’t.

As you know, I’m not a fan of the USPTO’s trend toward informational refusals, especially when the “evidence” more supports a mere descriptiveness refusal.

Having said that, this RENT ME informational command screams incapable:

Rent Me caught my eye, because bigger words don’t always make it a trademark:

This Rent Me command is informational, incapable, and not ownable as a mark.

OK, then how can this registration be explained without a disclaimer of Rent Me!?

Another quick USPTO examination, another time, or something else less visible?

What is visible is that Yolo Board hasn’t registered You Only Live Once, by itself.

Its only registration containing You Only Live Once is tied to the YOLO brand name, despite the above physically separate uses on the paddle boards.

I get tethering a leash to your board, why tether a tagline to your brand name?

It may not be a formal commandment or trademark gospel, but it’s probably best to register your tagline untethered too, if possible, and there’s nothing blocking it.

One of my friends, when playing blackjack and asked to “cut the deck” after it has been shuffled, consistently admonishes without hesitation: “Thin to win.”

Given the trademark story for today, you may end up believing the opposite.

A 6-year trademark fight between Frito-Lay and Real Foods ended this month.

Frito-Lay opposed Real Foods’ applications to register Rice Thins and Corn Thins:

 

Real Foods apparently decided not to appeal the TTAB’s September 2019 decision, finding both claimed marks generic and incapable of trademark status, thereby allowing the genericness decision to become the final story.

The TTAB concluded, in the context of the records for those claimed marks, “thins” added zero or nothing in terms of distinctiveness.

“[W]e find that the combination of CORN THINS and RICE THINS as a whole imparts no new meaning and that the relevant public will understand CORN THINS and RICE THINS to refer to a subcategory or key aspect of crackers, or ‘crispbread slices predominantly of corn, namely popped corn cakes’ and ‘crispbread slices primarily made of rice, namely rice cakes,’ respectively. CORN THINS and RICE THINS are, therefore, generic terms and are incapable of identifying the source of such products; purchasers will understand and will use such terms to refer to as a subcategory of crackers.”

There is quite a bit of detail to the 6-year story for trademark types, with the case ending this way, but our friend John Welch has covered the history far too well to repeat, so if you’re interested, please see here and here, and here, instead.

Yet, for our discussion, if Rice Thins and Corn Thins are truly generic and incapable of performing as trademarks, what kind of a hand might that signal to others?

As Seth Godin has said, in “The thing about elephants,” they don’t hide well, so when one is in the room, if you simply mention it’s there, it just might leave.

Just saying, what does all of this mean for Good Thins® or Wheat Thins®?

Might there be a more creative, perhaps suggestive way to convey thinness?

This creative team may have a card up its sleeve and be holding the winning hand with this inherently distinctive take on the concept of thin, a/k/a Thinsters®:

What do you think, does Thinsters® hold the winning hand on creativity?

‘Tis the season for gratitude and thankfulness, and avoiding conflict and fruitcake.

From a trademark perspective, every season is for avoiding genericness, right?

After all, generic designations are part of the public domain, they aren’t own-able.

So, why is Guaranteed Rate continuing to invest in Rate.com, found to be generic?

Perhaps because, for an online business, a generic domain name is quite valuable.

Beyond that, Hotels.com‘s persistence yielded 3 registrations (here, here, and here), despite losing a genericness appeal in 2009, so maybe Guaranteed Rate has Hotels.com-like optimism for a possible chance to prove acquired distinctiveness.

And, while it is true that the deck is pretty stacked against federal registration of claimed marks like Rate.com, it is also presently true that:

“[T]here is no per se rule that the addition of a non-source-identifying gTLD to an otherwise generic term can never under any circumstances operate to create a registrable mark. The [Federal Circuit] has held that in rare, exceptional circumstances, a term that is not distinctive by itself may acquire some additional meaning from the addition of a gTLD such as ‘.com’ or ‘.net’ that will render it ‘sufficiently distinctive for trademark registration.'”

In the coming year, we’ll have an opportunity to see whether that remains true.

The U.S. Supreme Court will decide this question in the Booking.com case:

“Whether, when the Lanham Act states generic terms may not be registered as trademarks, the addition by an online business of a generic top-level domain (‘.com’) to an otherwise generic term can create a protectable trademark.”

Interestingly, the very nature of a domain, as an online address, makes it singular.

And, it is important to keep in mind that a trademark not only identifies goods and distinguishes them from those of others, it also points to a singular source.

So, perhaps generic dot com brands should be considered at least capable.

The legal test ought to focus on consumer perceptions about distinctiveness.

Trademark types, will the Court permit generic dot coms to serve as marks?

Marketing types, when do you value domain names that can’t be trademarks?

And, when does putting a bow on genericness make business sense to you?

When thinking about brands comprising religious matter, I think of EZEKIEL 4:9.

The EZEKIEL 4:9 brand has been registered as a trademark for bread since 1990.

The brand owner had to clear some chaff from the Principal Register to do so, threshing this EZEKIEL as abandoned, and gaining this EZEKIEL by assignment.

It presently owns five federal registrations for depictions of the EZEKIEL 4:9 mark.

The above EZEKIEL 4:9 packaging explains the meaning behind the brand name:

“AS DESCRIBED IN THE HOLY SCRIPTURE VERSE: ‘Take also unto thee wheat, and barley, and beans, and lentils, and millet, and spelt, and put them in one vessel, and make bread of it …’ Ezekiel 4:9″ (emphasis added)

Despite use of the dreaded D-word on packaging, all five registrations issued without descriptiveness refusals or the need to show acquired distinctiveness.

So given that easy-button background at the USPTO, one might expect that a brand new application by the brand owner for EZEKIEL 4:9, expanding coverage to include nutritional supplement bars and beverages would be, well, easy.

You’d be wrong, because the USPTO issued an informational/incapable refusal, claiming after “further examination” EZEKIEL 4:9 is incapable as a trademark:

“Registration is refused because the applied-for mark is merely informational and constitutes a citation from a religious text that is used in the marketplace; it does not function as a trademark or service mark to indicate the source of applicant’s goods and/or services and to identify and distinguish them from others.”

The good news for this brand owner is the USPTO withdrew the refusal and approved the mark for publication, but only after a weighty 41-page response.

So, what if the Examining Attorney had held firm and required an appeal?

As I’ve hinted before, since disparaging and scandalous marks cannot be denied USPTO registration on First Amendment grounds, what about religious matter?

Would the USPTO be able to defend the constitutionality of denying trademark registration as comprising some forbidden fruit or matter from religious texts?

After all the First Amendment protects not only free speech, but free exercise of religion too, so the federal government cannot prefer non-religion over religion.

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?