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?

  • One could use the same argument for “Cold Stone” Creamery and its ilk.

  • Yup, you nailed it Steve. Consumers are smarter than we think. They could have easily come to recognize SMASHBURGER has a good trademark over a little time if the company had’t overgrilled its marketing.

  • Yup, you nailed it Steve. Consumers are smarter than we think. They could have easily come to recognize SMASHBURGER has a good trademark over a little time if the company had’t overgrilled its marketing.

  • Moss Kardener

    My thought is that the impact of the marketing message underscoring the proprietary aspect of Smash Burger’s unique IP would be lost by using alternative phrasing.
    Instead of making a change to another word, I would like to see the trademark “Smash” not treated as a past tense verb, but combined with a verb to create a phrase like, “Smash¬Æ prepped”, “Smash¬Æ processed”, etc.
    Wouldn’t that address the concern you raise without necessitating Smash Burger walk away from making impact by using its own trademark?
    Moss Kardener
    OnStrategy Consultants

  • Moss,
    That is an interesting suggestion and compromise. Thanks for sharing.
    Although the safest course is to not use the exact trademarked words as part of the marketing copy, my initial reaction is your suggestion might be a nice compromise at this point, since the mark SMASH is federally registered and your proposed phrases make clear that SMASH is being used in a trademark sense, not a descriptive sense.
    It also seems to me important to avoid creating a category of burgers that are made by “smashing” them on the grill — category names can’t be owned, like Lite Beer, and Brick Oven Pizza: (