Here’s one piece of advice you’ll hear from just about any trademark attorney: apply to federally register your marks as soon as financially possible. It is a very important step to take in order to protect your brand. A federal registration provides nationwide rights over any third-party that begins use of a confusingly similar mark after you file the application. This, along with other reasons, is why it is much easier to prevent or stop third-parties from using infringing a registered mark than it is for an unregistered mark. However, a registration is not a guarantee of success against third-parties, which is something a small entrepreneur may find out as its lawsuit against Skechers moves forward.
Terri Kelly is an entrepreneur who sells her own flip-flops at http://terrikelly.com/. She advertises her wares with the slogan YOGA PANTS FOR YOUR FEET®, as shown from her website below:
As you might guess, that “little r” is very important to this story. Ms. Kelly applied to register the YOGA PANTS FOR YOUR FEET mark on May 23, 2014. It ultimately registered on May 5, 2015. Why does this matter so much? Because sometime in early 2015, Sketchers began promoting sales of its footwear identifying them as being “like yoga pants for your feet.” After a cease and desist letter went un-ceased and un-desisted (that’s a legal term, I think), Ms. Kelly filed a complaint against Skechers on May 13, 2015.
Ms. Kelly seems to have a pretty strong claim. Skechers has used the entirety of Kelly’s mark for highly related footwear products. It also appears clear from publicly available Skechers began using the mark only after Kelly filed its trademark application. Accordingly, that registration provides presumptions of validity, ownership, and priority of the YOGA PANTS FOR YOUR FEET. But what if the registration is invalid?
A registration is vulnerable to cancellation on a number of grounds for the first five years of registration: First, if the third-party actually used the mark before you, it may be able to cancel the mark based on priority. Second, the party may be able to cancel the mark claiming that the mark is merely descriptive and never should have registered. Third, an application may be void if the mark was not in use at the time of the application (for use-based application). And fourth, if the applicant commits fraud upon the Trademark Office (submits materially false statements with the intent to deceive the Trademark Office).
As you might have guessed, Skechers has asserted all of these grounds in its counterclaim for cancellation of Kelly’s registration. Skechers also asserted a claim of fair use, meaning that it is making legitimate use of the words in order to describe their products.
There is a thin and subjective line between suggestive trademarks and merely descriptive trademarks. While Skechers is correct in that “YOGA PANTS FOR YOUR FEET” has some descriptive significance, I’m not convinced that it is merely descriptive as a whole. The individual words may be, but that doesn’t render the entire mark as merely descriptive. A number of well-known marks consist of descriptive components. If the shoe was on the other foot, I would think Skechers would agree. After all, Skechers is the company owns the following applications and registrations:
- 50% SHOE. 50% SOCK. 100% COMFORTABLE
- RUN HARD. LAND SOFT.
- ALL AROUND COMFORT
- RELAXED LIVING
- ENERGIZE EVERY STEP
Kelly’s YOGA PANTS FOR YOUR FEET is at least as suggestive as all of these marks. I have to think that Skechers would take similar action against a competitor for using these same slogans. Also interesting was Skechers initial public response, which accused Kelly of “attempt[ing] to trade on Skechers’ long track record of success.”
We’ll have to wait and see what facts the parties come forward with to support and defend the claims of invalidity. In the event that the registration is considered invalid, it will be unfortunate. Many small businesses and entrepreneurs recognize the importance of protecting their brands, and invest the time and money to obtain a registration. The fact that you have a registration means little if the registration could be cancelled by a defendant. Unfortunately, parties often don’t find this out until after they’ve been harmed by another third-party’s infringement.
Here are three tips to consider when applying for a trademark to decrease the risk you’ll find yourself in this situation:
- If you or your client has any inkling that the mark is merely descriptive, consider picking a new one. It is better to change the mark before you invest more money.
- Make sure you can support your filing basis of the application. If you file on an intent-to-use basis, have documentation that shows your efforts and intention to sell the products or services identified in the application. If the application is based on use, make sure you’ve made a bona fide use in commerce of the mark.
- If you ever see any issue regarding use in commerce (or if the Trademark Office refuses your specimen of use), don’t just try to find a way around it. If the specimen is refused, it may mean you haven’t made actual use in commerce. If this is the case, you can amend the application to an intent to use basis to possibly address the issue.
While these steps can’t guarantee that your registration will be valid, they can help you prevent some easily avoidable (but often overlooked) mistakes.