The Danish Lego Group is no stranger to trademark disputes. Understandably, Lego enforces its rights in the LEGO mark against third-parties who use LEGO without their permission. Lego also claims trade dress rights in product shape and configuration of its blocks and enforces those rights against other building block manufacturers. Some competitors claim that these actions amount to an attempt to monopolize the building block industry, characterizing the company as using trademark law to unfairly harm competitors.
However, protection of the LEGO brand and product trade dress aren’t Lego’s only trademark concerns. Just last week, Lego filed a trademark opposition at the Trademark Trial and Appeal Board (TTAB) against start up company IdentiToy, opposing an application for the mark IDENTIBRICK.
IdentiToy developed technology that is used with tablet computers that allows the computer to interact with toys that are placed on the tablets screen. The technology appears to use optical sensors along with RFID technology
IdentiToy advertises that its technologies can be used with construction toys, too:
Although the technology is still in development, this video suggests that there could be some pretty interesting applications.
But back to Lego. If you’re up in arms thinking, “Lego can’t claim to own rights in the word BRICK!,” you’re correct. Well, at least Lego isn’t claiming rights in the word “brick.” Instead, Lego filed an opposition on the ground that IdentiToy’s mark was merely descriptive.
The Notice of Opposition alleges that Lego, its licensees, and numerous other third-parties frequently use the term “brick” to describe their products. According to Lego, allowing the IDENTIBRICK mark to register without a disclaimer of the term “brick” would harm Lego and Lego’s competitors by granting to IdentiToy rights in the word BRICK.
On its face, the claim seems reasonable and straight forward. Yet registration of IDENTIBRICK would not necessarily grant rights in the word BRICK to IdentiToy, and the rules of the USPTO suggest that the claim is unlikely to succeed. The IDENTIBRICK mark would likely be considered a unitary mark. Under the Trademark Office rules for examining applications, “no disclaimer of an element, whether descriptive, generic, or otherwise, is required” for unitary marks. TMEP 1213.05.
However, the rules do allow voluntary disclaimers of otherwise registrable matter. It appears that Lego is only concerned with ensuring that third-parties expressly disclaim the term BRICK when it appears in an applied-for mark. For example, Lego seems to have reached an agreement to withdraw an opposition regarding a similar application for the mark BRICKS OF THE ROUND TABLE.
It would be reasonable to doubt the legitimacy of Lego’s concern for the public’s right to use the word “brick.” This is particularly true because Lego owns a registration for BRICKMASTER in connection with “construction toys” which does not disclaim any rights in the word BRICK. However Lego could claim acquired distinctiveness in this mark as it claimed to have used the mark for more than five years when the application was filed.
In light of the past perception of Lego’s enforcement efforts, IdentiToy may choose to cast themselves in a David and Goliath story. But the upside is small, as a disclaimer may not significantly harm IdentiToy’s rights in its IDENTIBRICK mark, and Lego may readily withdraw the opposition if IdentiToy agrees to enter the disclaimer. We’ll have to wait to see IdentiToy’s next move (or Tweet) to find out.