-Wes Anderson, Attorney

When it comes to a big company’s trademark filings, the publicly available and freely searchable Trademark Office database can provide great fodder for the media. But don’t believe everything you read: an intent-to-use trademark application is far from gospel.

Chipotle Mexican Grill, Inc. stoked the flames of speculation with an application for the mark BETTER BURGER earlier this month. The application, based on intent to use in U.S. commerce identifies “restaurant services; take out restaurant services; catering services; bar services; providing of food and drink” in Class 43. Chipotle, of course,  has been exclusively in the burrito and taco business since its founding, despite its past connections with McDonalds.

The media uncovered the application, and rampant attention soon followed. Bloomberg announced Chipotle “may be getting into the burger business,” and others began to envision a chain that “would likely look and function a lot like a Chipotle, but serve burgers and fries instead of burritos and tacos.” The Wall Street Journal all but confirmed Chipotle “is developing a new burger chain called Better Burger.” For its part, the articles suggest Chipotle half-heartedly confirmed some of these conclusions, saying “the Chipotle model could be applied to a wide variety of foods” and calling the chain concept “a growth seed idea we are exploring.”

But is BETTER BURGER a done deal? I’m not so sure.

For one thing, it’s important to take fresh intent-to-use applications at face value. Chipotle’s application probably won’t be examined by the Trademark Office for at least three months. As with any trademark application, the PTO will see if there are any other parties that have already registered (or have previously applied for) the same or a similar mark for related goods and services.

A quick peek of the PTO database suggests that BETTER BURGER has a number of issues. As a general matter, BETTER BURGER is almost certainly descriptive in the context of restaurant services — “burger” being generic for a type of food served in restaurants, and “better” simply describing the quality of the products served at the restaurant. This wouldn’t necessarily preclude a Supplemental Register registration, but an intent-to-use application isn’t eligible – it would first be necessary for Chipotle to show use of BETTER BURGER in U.S. commerce before amending.

Even assuming the mark is not descriptive, there are a few active pre-existing trademarks out there that an Examining Attorney will no doubt notice:

It should be noted the latter three marks listed are all owned by Fuddruckers. The upshot? The PTO has repeatedly made clear no one party can claim rights to “BETTER BURGER” alone.

And here’s where the media may have bitten off more than it can chew. The Wall Street Journal article did some armchair trademark clearance, and may have been a bit too quick to conclude Chipotle is destined to obtain a trademark registration:

The Better Burger trademark application hasn’t been approved, but no other applications for the exact phrase are active. The last one by that name was a frozen veggie burger called The Better Burger in the 1990s that has since been discontinued, according to trademark records.

It’s not uncommon to run into this “exact phrase” fallacy — many assume, because there are no exact matches for a proposed trademark on the PTO website, that a mark is available for registration. It’s not just identical trademarks that can pose issues, but any and all “confusingly similar” applications or registrations, at least in the Examining Attorney’s judgment. If you ask me, Chipotle faces a far tougher road to registration than these articles suggest.

It might ultimately be a good thing – perhaps a Better Burger deserves a Better Name?

-Laurel Sutton Senior Strategist & Linguist at Catchword Brand Name Development

If I was in charge of naming scientific research vessels, they’d all get names like Boaty McBoatface. This, in case you hadn’t heard, is the leading candidate in a crowdsourced effort to name the U.K. Natural Environment Research Council’s new polar research ship.  Fans of Monty Python and Eddie Izzard will recognize the strain of very silly British humor on show here; other entries include “Big Metal Floaty Thingy-Thing”,  “Science!!!”,  “Its Bloody Cold Here”,  and “Usain Boat”.  It’s a good reminder to never take things too seriously.

But where did the “X McX” naming convention come from?  Over at Slate, journalist Katy Waldman found that “the practice of affixing ‘Mc’ to nouns, adjectives, or verbs ‘to create mock names denoting a person who … is considered an exemplar or personification’ goes back at least to the late 1940s, according to the OED.”  But the “X-y McXerson” construction didn’t really take off until the 2000s, and is now ubiquitous in sitcoms and movies; when Character A addressed Character B as  “Cheapy McCheaperson”, it’s shorthand for “Character A is witty” (spoiler: they’re not).

I wondered if this naming trend had manifested itself in product or company names, but a quick check through a few thousand recent trademarks containing “mc*” was disappointing. (Interestingly, many of those trademarks turned up the words “Hatfield” and “McCoy”. The feud rages on.) There are some toy names: a Pound Puppy plush dog from Hasbro called Patches McFrisky and a doll from Mattel’s Monster High line called Venus McFlytrap. There’s also a Scotch Ale called Sticky McDoogle, as well as a mark for photojournalist Brain Murphy’s website called Homer McFanboy.

But none of those names really fit the “Noun McNoun” format. We get a little closer with Molly McButter, a powdered butter substitute (it’s actually pretty good on popcorn), in which both words at least start with the same letter. And two of the marks I found employ rhyme: Toys McCoy, a Japanese motorcycle clothing company, and Shady McGrady, which seems to be both a bar in Harrisburg, PA, and a clothing line, for which the mark was filed; they don’t seem to exist yet. Urban Dictionary defines “Shady McGrady” as “a person, persons, or object that appears or behaves in a suspicious manner”, so maybe don’t go to that place in Harrisburg by yourself.

The only mark that seems to follow the format is for Waffle McWaffle, a children’s book and TV show currently in development. (Waffle is the guy in the middle, not the elephant. Waffle McWaffle would be a great name for an elephant!) Here, the repetition of the word “waffle” is meant to be whimsical, to appeal to kids, rather than snarky or patronizing. It’s fun and memorable: who doesn’t like waffles?

Waffle McWaffle

Trademarks aside, Boaty McBoatface inspired an epic naming battle on Twitter, as scientists competed to create better names for heavenly objects and animals, using the hashtags #TheInternetNamesSpace and #TheInternetNamesAnimals. Top entries includes Comet McCometface (a comet, of course), Starface Gassy McSmashy (a spiral galaxy), while the red spot on Jupiter became The Big Swirly Swirly. On the fauna side, we got  Nopey McNoMyGod (a scary spider), Pantless Thunder-Goose (ostrich), and, for a photo of a cobra wearing a top hat, Danger Noodle.

The moral of the story: When you crowdsource naming, be careful what you Wishy McWish for.

Nostalgia is a big seller these days. Hollywood continues to produce remakes (and remakes of remakes), politicians lament the better days of yesterday, and companies capitalize on feelings of nostalgia in order to make money. It’s not new, but it does seem to be more popular than ever. TD Ameritrade jumped on the Nostalgia Express last year with a commercial that was a nod to all of the fans of the film Dirty Dancing. The commercial used the tagline “Nobody puts your old 401k in a corner,” which is play on Patrick Swayze’s memorable line “Nobody puts baby in a corner.” Clearly nothing says “dependable financial advice” better than Patrick Swayze in a leather jacket.

TD Ameritrade Screenshot

The commercial also recreates the final dance scene between the two main characters, where Jennifer Grey jumps into Patrick Swayze’s arms and he lifts her up above his head. Except in this case, it is a piggy bank (the commercial in its entirety is available here, while Patrick Swayze’s “baby in a corner” line can be viewed here).

Perhaps the goal was to incite consumers to share the ads on social media. And maybe that occurred. However the commercial also incited Lions Gate Entertainment (the owner of rights to the Dirty Dancing film) to file a lawsuit claiming copyright infringement, common law trademark infringement, and other unfair competition claims.

TD Ameritrade filed a Motion to Dismiss the claims. Last week, a California U.S. District Court dismissed the trademark claims, but denied the motion with respect to the copyright claims. Beyond a pleasant feeling of nostalgia, the court’s decision also provides two important lessons regarding trademark and copyright law (a copy of the order is available here).

First, trademark law does not protect any word or image that a person or company creates or uses. Trademark law protects words, images, or other indicators of source that have been used in commerce to identify and distinguish the goods or services of one party from another. A line from a movie does not identify or distinguish the source of the move no more than a guitar riff from a song identifies or distinguishes the source of a song. The court noted that it was unclear from the complaint how “the alleged mark NOBODY PUTS BABY IN A CORNER has been or is intended to be used.”

Instead, trademark rights are established when a trademark is used on a product in a way that associates the mark with the product. The size, font, and location of the wording all play a role. In the context of a movie, the Paramount Pictures logo at the beginning would be a use in commerce. But a line used in the movie, regardless of how memorable it may be, is not a trademark use merely because that dialogue was written, performed, and recorded as part of the movie.

Second, the court’s decision highlighted the necessity for parties to analyze each intellectual property claim distinct and separate. The court reasoned that Lions Gate’s complaint “bleeds together its copyright, trademark, and unfair competition claims — and the facts that support each cause of action — making it challenging for the Court, much less Defendants, to determine the allegedly separate theories underlying the different rights.” As you might expect, it’s not a good sign when a court is unable to discern the legal theory for your lawsuit.

The court determined that Lions Gate was actually asserting claims of copyright infringement. Lions Gate complaint identified the infringing activity as (1) use of a modified version of the “Nobody puts baby in a corner” line; (2) the re-creation of the “dance lift” scene; and (3) use of the tagline “Because retirement should be the time of your life,” – a reference to the a reference to the song (I’ve had) the Time of My life song, which was used prominently in Dirty Dancing. The court considered these claims to amount to either unauthorized reproduction or creation of an unauthorized derivative works. These facts might support a claim of copyright infringement, but they do not support a trademark claim which requires confusion or mistake as to the source of the goods. Where a party asserts copyright infringement claim under the guise of a trademark claim, copyright law preempts the trademark claim under the Supreme Court’s decision in Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003).

Stay tuned for the court’s decision on the copyright claims as the case moves forward. And who knows, maybe the Ninth Circuit will provide us with another remake for Lions Gate’s trademark claims.

Life is full of ups and downs. The world of trademarks often tends to mirror life. Yet, for the time being, the USPTO currently recognizes only one brand and mark as living solely on ups:

United_Parcel_Service_logo_2014_svgAs it turns out, those three letters form a pretty powerful brand and trademark. Although there may have been two previous federal registrations for the same letter-string, one covering socks and another covering “retail marketing programs for products of others,” those have long since expired, and the USPTO database now is surprisingly clear of any others, to the point where even goods like specialty metal pipes and carpet and rugs can’t find a path to registration.

 

United_Parcel_Service_logo_(1961–2003)

As a young child in the late sixties I recall a distinct curiosity about the brown delivery trucks called “ups” — as opposed to “downs,” I figured. Little did I know that “ups” should have been pronounced “u-p-s” not “ups,” so I can picture my imagination running wild, thinking the letters suggested the thrill of receiving packages from brown delivery vans (long before hearing about what Brown could do for me), then one day, my imagination probably was shattered to learn that UPS actually just meant United Parcel Service:

UnitedParcelServiceToyTruck

At the time, with UPS, I saw a word, and I probably didn’t appreciate what an acronym or initialism was, and I’m certain I didn’t appreciate the difference between them. Even more, I’m certain I knew nothing about the TMEP (initialism for Trademark Manual of Examining Procedure, not an acronym), explaining why a trademark savvy brand owner might not want to link its acronym or initialism trademark to the words it is derived from:

“As a general rule, an acronym or initialism cannot be considered descriptive unless the wording it stands for is merely descriptive of the goods or services, and the acronym or initialism is readily understood by relevant purchasers to be “substantially synonymous” with the merely descriptive wording it represents. A mark consisting of an abbreviation, initialism, or acronym will be considered substantially synonymous with descriptive wording if: (1) the applied-for mark is an abbreviation, initialism, or acronym for specific wording; (2) the specific wording is merely descriptive of applicant’s goods and/or services; and (3) a relevant consumer viewing the abbreviation, initialism, or acronym in connection with applicant’s goods and/or services will recognize it as an abbreviation, initialism, or acronym of the merely descriptive wording that it represents. Thus, without additional evidence, an applicant’s proprietary use of an acronym is not sufficient to establish that the acronym is readily understood to be substantially synonymous with the descriptive wording it represents.”

Does that help explain why the words United Parcel Service have either vanished or become far less conspicuous on those busy brown vans? From a trademark perspective, probably not, after all, United Parcel Service is not a merely descriptive phrase, as it was federally-registered without evidence of aquired distinctiveness. Any marketing types know or want to hazard a guess as to why the linkage is either gone or more subtle now?

UPSTruck

My sense, from a trademark perspective, is that ambiguity as to precise meaning and pronunciation probably help to broaden the scope of trademark rights. Assuming distinctiveness exists, to the extent all three — word, acronym, and initialism — plausibly apply to UPS, it may help explain, in part, why more marks of others might be snared in the trademark owner’s likelihood of confusion net.

So, if you’re planning on creating a brand based on the letter-string UPS as an acronym or initialism derived from a company name or some other phrase, it’s best to first confirm the acronym isn’t descriptive or generic, and then show UPS in a graphically distinct manner while keeping it closely linked to the fully spelled out words, as this one did:

UnitedPropertiesSouthwestIn case you’re wondering what inspired this delivery of information to our loyal readers today, it hasn’t escaped me that UPS is now apparently linking the meaning of UPS to United Problem Solvers in television advertisements, so some digging seemed appropriate. Perhaps having multiple possible meanings to UPS encouraged by the trademark owner is yet one more way to broaden the scope of rights in UPS. What do you think?

As always, stay tuned, as it turns out, UPS’ United Problem Solvers federal trademark applications may be refused registration by the USPTO (another initialism, not acronym, for United States Patent and Trademark Office) based on another’s prior pending trademark application for Problem Solvers in connection with highly similar services: “Freight logistics management; Transportation logistics services, namely, arranging the transportation of goods for others; Transportation logistics services, namely, planning and scheduling shipments for users of transportation services.”

Anyway, it looks like Big Brown is solving this problem by opposing registration of Problem Solvers, alleging likelihood of confusion with its prior registration for Packaging Problem Solvers.

-Wes Anderson, Attorney

Owners of scandalous, immoral, or disparaging marks are on notice: now is the time to place your $275 bet with the USPTO. And soon, the Trademark Office database may be “NSFW.”

Last Thursday, the USPTO issued Examination Guide 01-16 to address the impact of recent federal court decisions on Section 2(a) of the Trademark Act. That section prohibits registration of marks that comprise immoral or scandalous matter (such as profanity), or marks that are disparaging (such as racial slurs).

parental_advisory

As previously blogged by my colleague Tim Sitzmann here, the Federal Circuit’s decision in In re Tam struck down the disparagement portion of Section 2(a) on First Amendment grounds. This provision is also the focus of the Washington Redskins case, Pro-Football v. Blackhorse,  currently pending before the Fourth Circuit Court of Appeals in Virginia. The Guide notes the immoral/scandalous portion of Section 2(a) is pending a similar constitutional review before the Federal Circuit in In re Brunetti, in which the USPTO refused registration of the mark FUCT for athletic apparel. If the Federal Circuit holds serve in Brunetti, it will strike down the prohibition of scandalous marks.

Tam is likely bound for the Supreme Court, as is Blackhorse and possibly Brunetti assuming the timing allows SCOTUS to consolidate each case. The USPTO’s petition for certiorari to the Supreme Court for Tam remains pending as I write this. If the courts follow Tam, the impact is clear: Section 2(a) would be no more.

As these battles rage, it was not clear what the USPTO was left to do with new applications for immoral/scandalous or disparaging marks. The USPTO is not an Article III court and, as such, it cannot choose simply to ignore Section 2(a) in light of the Tam decision. But it also does not follow that the USPTO should continue to refuse registration of marks under Section 2(a) unless and until a final decision is rendered.

The Examination Guide puts forth a temporary solution: all new applications subject to Section 2(a) refusals will be suspended until the dust settles:

The USPTO continues to examine applications for compliance with the scandalousness and disparagement provisions in Section 2(a) according to the existing guidance in the Trademark Manual of Examining Procedure § 1203.  While the constitutionality of these provisions remains in question and subject to potential Supreme Court review, for any new applications the USPTO will issue only advisory refusals on the grounds that a mark consists of or comprises scandalous, immoral, or disparaging matter under Section 2(a).  If a mark’s registrability under these provisions in Section 2(a) is the only issue, the examining attorney will identify the reasons for the advisory refusal and suspend action on the application in the first Office action.

In effect, the USPTO has presented an entirely new category of mark owners with acres of unoccupied territory. This is a profound change for owners of marks subject to Section 2(a) refusals, even those that had previous applications rejected on appeal. The USPTO now invites new applications for all manner of marks.

When and if the dust settles and the federal courts strike down Section 2(a), the spoils of trademark registration will go to the first to file. This may operate to the detriment of any parties that wait until after a Supreme Court decision before filing applications for questionable marks. Established brand owners that, until now, could not register their marks under Section 2(a) must also now ensure that a third party doesn’t file first. This could be a bustling time for oppositions based on unregistered and profane common-law marks.

How long will the suspension last? It’s hard to say, but it could be a number of years before the Supreme Court can take on and decide each of these cases (assuming SCOTUS will grant certiorari). The Guide elaborates on some of the events that may affect the suspension:

Any suspension of an application based on the scandalousness provision of Section 2(a) will remain in place until the Federal Circuit issues a decision in Brunetti, after which the USPTO will re-evaluate the need for further suspension.  Any suspension of an application based on the disparagement provision of Section 2(a) will remain in place until at least the last of the following occurs:  (1) the period to petition for a writ of certiorari (including any extensions) in Tam expires without a petition being filed; (2) a petition for certiorari is denied; or (3) certiorari is granted and the U.S. Supreme Court issues a decision.

All that’s needed now is an application and a $275 filing fee; and if SCOTUS gets involved and Section 2(a) kicks the can, savvy applicants may find themselves the very first to claim [insert profane term of your choice here].

As it happens, later this morning, President Obama will announce his choice to replace the late Justice Scalia. As if we needed more reason to follow this Supreme Court vacancy.

–Dave Holt, Solicitor & Alex Watt, Partner, Browne Jacobson LLP

In the European Union, Coca-Cola has recently followed in the stumbling footsteps of fellow global super-brand Nestlé, falling at the final hurdle in its attempt to register the three-dimensional shape of its iconic ‘Coke bottle’ in classes 6, 21 and 32. You can read the judgment in full here. The shape mark in question (the “Mark”) was depicted as below:

Cke

 

There is much to take from this decision and in reviewing it you will notice that the Mark applied for has the recessed banding we expect from the coke bottle, but does not have any of the particular features or detailing, particularly missing the contoured fluting, that we might usually expect to see on a ‘Coke’ bottle. The claim for that slightly more generic-looking bottle shape, rather than the better-known and distinctive bottle shape, may ultimately have proved to be Coke’s undoing.

Interestingly Coca-Cola also sought to register this mark in Class 6, being “Common metals and their alloys; metal building materials; ironmongery, small items of metal hardware; goods of common metal not included in other classes; metallic bottles”. Perhaps we have missed out on the opportunity for a new, innovative metal coke bottle or coke bottle statue…

The Decision

Coca-Cola appealed the decision of 27 March 2014 made by OHIM’s Second Board of Appeal (“contested decision”), which rejected registration of the Mark, and held:

  • The average consumer of the mass drinks market was not particularly attentive and was likely to have ‘imperfect recollection of trade-marked products’;
  • The Mark as submitted was devoid of distinctive character (article 7(1)(b) of Regulation No 207/2009 (the “Regulation”)) as regards the goods concerned, particularly as the features were common to the shape of the contested goods in classes 6 and 21 and packaging of the goods in class 32;
  • The Mark in question had not acquired distinctive character through use, and the survey submitted by Coca-Cola was held to contain leading questions, mathematical errors, and was conducted by a former director of Coca-Cola. On this basis, the evidence was held to be unreliable and not of probative value;
  • The Mark was, in fact, rarely depicted in the evidence submitted. Instead Coca-Cola submitted evidence of their contoured bottle with fluting, and as such, were of little use in demonstrating acquired ‘distinctive character’ (Article 7(3) of the Regulation).

Coca-Cola sought to have the contested decision annulled (and sought costs, naturally) on the following grounds:

First Plea (inherent distinctiveness)

  • Although bottles are functional, many bottles are designed to attract consumer attention in a crowded market;
  • The Second Board of Appeal should have considered the combination of the specific features, and the effect of the Mark as a whole; and
  • The Second Board of Appeal should not have considered that the use of a distinctive word mark in combination with the Mark means a product is devoid of distinctive character alone (Freixenet v OHIM EU:C:2011:680 para. 42 cited).

Interestingly, the decision in Nestlé v Cadbury supports the argument that a shape must be distinctive ‘in and of itself’, rather than simply being associated with other trademarks. As Coca-Cola rightly suggested, this does make the threshold very high for registration of a trade mark, which the Mark arguably does not clamber over.

The court held that the criteria for assessing a three-dimensional shape mark are no different to any other trade mark. However, the court noted that the perception of a consumer of a three-dimensional mark is not necessarily the same as a word or figurative mark which is independent of the goods it designates.

The court decided in relation to the first plea that both the constituent elements of the Mark, and the Mark as a whole did not depart significantly from the norms of the sector, and no elements rendered the mark distinctive enough to allow consumers to infer its commercial origin. The first plea was therefore dismissed.

Second Plea (acquired distinctiveness)

Coca-Cola went on to plead that the large volume of evidence provided to OHIM and to the court demonstrated acquired distinctive character, particularly due to the broad use of the mark and the survey evidence demonstrating association of the Mark with Coca-Cola. Coca-Cola also suggested that the use of the bottle with contoured fluting did give acquired distinctive character to the Mark, on the basis that the Mark is a component thereof.

The court noted that the Mark needed to have “become distinctive through use before the application for registration was filed” (para.67, emphasis added), and that distinctive character cannot be proven simply by furnishing sales volumes figures and advertising material. The court reiterated that for a mark to have acquired distinctiveness under Article 7(3) of the Regulation, the relevant consumers “or at least a significant proportion thereof, identifies goods as originating from a particular undertaking because of the mark”.

Interestingly, the court held that the sign must have distinctive character throughout the European Union, and that a lack of distinctiveness in a single member state may be enough to refuse registration. Coca-Cola only surveyed in 10 of the 27 Member States, which the court held to be less than a ‘significant proportion’ of the relevant public for the Mark. The other evidence submitted by Coca-Cola was also found to be insignificant on various grounds.

The court, reiterating the need for the Mark to be a clear indicator of commercial origin, confirmed that Coca-Cola had not demonstrated the Mark had acquired distinctiveness, and thus the second plea was unfounded.

Conclusions

In much the same way as was found in the recent Nestlé v Cadbury decision, the general court has set out a clear statement to applicants that their marks must be clearly indicative of commercial origin, and that mere recognition, whether alone or in combination with other marks is unlikely to be sufficient for acquired distinctiveness. Therefore the position remains that three-dimensional shape marks are difficult to attain. However, one might ask: if the Coke bottle is not a sufficiently distinctive shape – what three-dimensional shape mark will be distinctive?

However, in our view, we consider that it might well have been possible to register the three-dimensional Coke bottle shape had Coke not been so ambitious in their application and applied only for the more distinctive fluted bottle-shape that was referred to within much of their evidence – rather than the more generic shape in their application. It is also notable that survey evidence has once again been found unsatisfactory, which should serve as a reminder to applicants for such marks that there is a high bar, and that they will need to think very carefully about their approach to survey evidence, ensuring that it is comprehensive (particularly in respect of community marks) and carried out by a truly independent party.

mypillowWe had some great questions from the audience during the Mastering U.S. Trademark Registration Practice seminar in Minneapolis a few weeks ago. During the session on genericness, someone asked about MyPillow, expressing amazement that it could be federally-registered.

Having now seen the MyPillow television advertisement probably a dozen times since then, I’ve finally gotten around to looking into the situation a bit so we can hopefully put this important question safely to rest, so to speak. But, before getting too deeply into details that might leave some counting sheep, I’m reminded of a few from our archives on the ubiquity of My branding:

My, my, my . . .

My Goodness, More “My” Branding & Marks

As these gems from the archives confirm, building a brand around the word My, raises serious questions, not about genericness, but about a limited scope of rights, given how commonly the term appears as part of trademarks.

Just because a term is common doesn’t make it generic. Even commonly used words can be descriptive, suggestive, and/or arbitrary for the goods/services in question. Remember the Spectrum of Distinctiveness and how the Suggestive/Descriptive line can be challenging?

While it is clear that Pillow is generic for a pillow, what does My add to the mark, and does the addition of the word My render MyPillow as a whole descriptive or suggestive of pillows?

An argument certainly exists for descriptiveness, given the number of Supplemental trademark registrations for marks having a similar My format, and given the existence of more than a hundred registrations and applications that disclaim the word My from the mark as a whole.

Yet, MyPillow is federally-registered on the Principal Register without a showing of acquired distinctiveness, so the USPTO is on record believing MyPillow is suggestive, not generic or descriptive. And, now that the registration is over five years old and incontestable, challengers to the validity can only raise the descriptiveness/distinctiveness argument in their sweet dreams.

Perhaps the logic on suggestiveness relates to the ambiguity of the word My. When Mike Lindell is holding the pillow above he refers to it as MyPillow. When he sells it to you, does it become YourPillow? And, then once you have it, from your perspective it becomes MyPillow again?

What I’m left wondering is how can the below federally-registered mark peacefully coexist for pillows, given the prior MyPillow federal registration, having both priority of use, filing, and registration?

ilovemypillowSo, one way to protect MyPillow as your trademark would be to engage a systematic watch service of filings at the USPTO. The MyPillow registration issued two months before the above mark was published for opposition, so why was no 2(d) refusal issued or opposition filed?

It appears that MyPillow started a pillow fight with the owner of the above mark by filing a trademark infringement lawsuit back in 2012, and again in 2013, but the registration for the above mark remains on the Principal Register, sending the message of thin rights, leaving an opening for others to join with other My marks, believing there will be no more pillow fights.

That appears to be what has happened, with My Private Pillow, My Secret Pillow, Angels on My Pillow as each have become federally-registered for pillows and were unopposed by MyPillow.

Marketing types, what are your thoughts about the MyPillow brand? Would your head find any support with this simplistic, but clearly successful brand name?

Trademark types, would this situation keep you up at night or could you sleep restfully given the apparent scope of rights and these close and coexisting third party registrations?

In the end, perhaps as they say, when you make your bed, especially with my pillow, you end up having to sleep in it, lumps and all, right?

Yes and no are at opposite ends of the spectrum. North Pole, South Pole. Night and day. Win, loss. Black, white. Available, unavailable. Protectable, unprotectable. Infringing, non-infringing. They represent a binary proposition, like a traditional light switch with two settings: on and off.

My daughter loves the yes end of the spectrum; no, not so much; and maybe is tolerable, because it’s easy to get hopes up and accelerate to hearing yes. The problem is the large chasm between maybe and either end of the yes/no spectrum. Maybe can be uncertain and confusing.

Maybe spans a great distance between yes and no. Maybe can mean a slight possibility, or it can also mean a strong probability — creating a vast range of very different options that can be rather unhelpful to those who are paying for legal advice to make smart business decisions.

As we have written before, marketing types understandably love to hear yes too, when they seek legal advice about trademarks, and they are ever more prepared to probe, question, and challenge advice when they hear no, by way of example, remember the brandverbing trend?

Although we launched this blog seven years ago from the springboard of distancing ourselves from Dr. No and his Parade of Horribles, it is also worth noting, lawyers are frequently criticized for not giving a straight answer because, after all, it depends! Sounds like maybe, right?

For those of you who may not have been engaged here for our inaugural Dr. No blog post, might you remember J.D. Waffler: The Art of Taking a Position? If not, maybe you should check it out?

Over the weekend, we didn’t just have our seventh birthday, our friend Seth Godin artfully wrote again (like clockwork) about “Saying No,” and with the passing of former First Lady Nancy Reagan, we were all reminded of the simplicity of her famous “Just Say No” anti-drug campaign.

So, I’m left wondering if the historically rigid trademark advice against verbing and other concepts sounded in no as a way of keeping the advice simple to avoid client confusion and potential adverse outcomes, no matter how remote? Perhaps a strong candidate for a maybe?

It seems to me the key to successful relationships with trademark types is being able to enjoy the benefit of their experience, clear communication, and trust, and knowing that getting to yes is often possible and worthwhile, but not always the easiest or most direct path from maybe.

And, just maybe, your favorite trademark type can help remove for you the confusing and uncertain nature of the it depends and the maybes of trademark life.

— Jessica Gutierrez Alm, Attorney

donald-trump-john-oliver-donald-drumpf_650x400_61456831723

This presidential election cycle has been nothing if not entertaining.  Mr. Trump has been a particular favorite among late night T.V. hosts.

In one particular 20-minute monologue, Last Week Tonight host John Oliver berated the Donald, and in doing so, brought to light a historical quirk of the Trump name.  It would seem that the Trump family name was at some point changed from Drumpf to Trump.  Exactly when in the family history the name change occurred seems unclear, and Trump himself has neither confirmed nor denied the namesake.  Oliver encouraged viewers to begin referring to Donald Trump as Donald Drumpf, in an effort to separate the man from the brand.  The video quickly went viral after being posted last weekend, and now boasts 57 million views on Facebook.  The hashtag #MakeDonaldDrumpfAgain has been trending for days.

john-oliver-is-asking-america-to-make-donald-drumpf-againAs he states in the video, Oliver has even filed a federal intent-to-use trademark application for the standard character mark “DRUMPF.”  The application, actually filed by Drumpf Industries, LLC, is for use of the mark in the “provision of a website featuring multimedia.”

The Lanham act has two provisions related to registering a person’s name.  Section 2(c) bars registration of a mark that “[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent.”  This section prevents individuals from profiting off of others’ names.  Section 2(c) has also allowed Donald Trump, himself, to trademark TRUMP on several occasions, by filing a written consent.  This provision has also prevented others from registering marks such as OBAMA without the President’s consent.

Section 2(e)(4) provides that a mark may not be registered on the principal register if it “is primarily merely a surname.”  Marks that are primarily merely surnames, or last names, are treated as descriptive marks.  They may be registered on the supplemental register.  Or, if the name has acquired distinctiveness under Section 2(f), it may be registered on the principal register.

It’s possible that either, or both, of these provisions could be cited against John Oliver’s trademark application.

Section 2(c) could arguably be cited against the application, because although Drumpf is not Trump’s actual legal name, John Oliver makes clear that the DRUMPF name is intended to “identify[] a particular living individual” without his consent.  The popularity of Oliver’s video, website, and hashtag  may even weigh in favor of an argument that the Drumpf name is intended to identify a particular individual.

Section 2(e)(4) may also be cited against the application on the basis that Drumpf is “primarily merely a surname” without acquired distinctiveness.  To establish whether a name is primarily merely a surname, the PTO will look at five factors:

(1) Whether the surname is rare;

It does appear rare, at least in the U.S.  A quick search on 411.com and familypedia.wikia.com, sites used by the PTO in the past to show the prevalence of a surname, did not reveal any matches for the surname Drumpf.  This suggests Drumpf is not primarily merely a surname.

(2) Whether the proposed mark is the surname of the Applicant or anyone connected with the Applicant;

Unless someone connected with Last Week Tonight has the name Drumpf, this factor likely suggests that Drumpf is not primarily merely a surname.

(3) Whether the proposed mark has any recognized meaning other than a surname;

This can occur where, for example, the term has a meaning in a foreign language, or is associated with a different brand. It’s unclear where this factor would fall.

(4) Whether the term has the “look and feel” of a surname; and

A lot of elements can influence the “look and feel” factor.  Drumpf appears to have been of German origin, according to biographer Gwenda Blair.  Whether Drumpf is more similar to other German surnames may affect this analysis.

(5) Whether the stylization of the lettering in the proposed mark is distinctive enough to create a separate commercial impression.

The fifth factor does not apply in this case, as the application is for a standard character mark.

Moreover, if a Section 2(e)(4) rejection is raised, could Oliver argue that DRUMPF has acquired distinctiveness in connection with the proposed services based on the immense popularity of Oliver’s related video, website, and hashtag?

In any event, as with the rest of the election, it will be interesting to watch where this application goes.

When an application has been refused registration in view of another’s prior filed mark, one way to resolve the issue is through a consent agreement wherein the registrant consents to the registration and the parties set out the reasons why the parties believe that there is no likelihood of consumer confusion between the marks.  A recent precedential TTAB decision, however, found that in particular circumstances, “no means no” when it comes to trademark registration — even when there is consent.  Sometimes a poorly crafted consent agreement leaves no brewer hoppy.

The procedural background here is a mess, but bear with me as I travel back in time because this demonstrates why you should file an intent-to-use trademark application as soon as possible (spoiler alert:  the earliest filer wins this one).

A Massachussetts brewery, Bay State Brewing Company, Inc., filed a trademark application for TIME TRAVELER BLONDE for beer on January 17, 2013.  The filing claimed a first use date at least as early as January 1, 2012 and the specimen filed with the application is shown below (which as a printer’s proof was surprisingly not refused, see TMEP 904.04(a)).  It was hard to find a good photo showing use of the mark with BAY STATE.

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However, another Northeast based brewery, A&S Brewing Collaborative LLC in Vermont, had already filed an intent-to-use application for TIME TRAVELER for beerale, lager.  A&S Brewing provided a specimen showing use of the mark on a shandy and claimed a first use date that was 11 months after Bay State Brewing’s claimed first use date.   A&S Brewing’s TIME TRAVELER published for opposition a few weeks after Bay State Brewing filed its application.  Bay State Brewing Company requested an extension of time to oppose, which was granted until April 12, 2013.

Meanwhile, Bay State Brewing’s application received an office action with a potential refusal to register over A&S Brewing’s prior pending application.  Bay State Brewing’s attorney filed a response on April 12, 2013 (same day as their deadline to oppose) that included a copy of the consent agreement executed earlier that month.  It was filed the same day as Bay State Brewing Company’s deadline to oppose.  Bay State Brewing Company never opposed the application as the parties entered into a consent agreement, executed on April 10, 2013, whereby Bay State Brewing agreed not do so — unnecessarily foregoing its right to oppose or petition to cancel the registration even if the consent agreement was not accepted.   So, A&S Brewing received a certificate of registration.

The consent agreement basically says that the parties do not believe there is a likelihood of confusion because one party uses it on a blonde beer with BLONDE in a limited geographic area, the other uses it on a shandy, the trade dress is different, and they are used with each other’s house marks, which are different.   The same response included a disclaimer of the term BLONDE, which as many of you know is a type of beer.

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If both of these were on the shelf and someone asked you to pick up some TIME TRAVELER, would you be confused?

The Trademark Office refused to accept the consent agreement and issued another office action.  Bay State Brewing replied with a copy of a significantly more robust “consent agreement” with an effective date of April 10, 2013.  The Trademark Office again refused to accept the consent to registration agreement, and the Board confirmed that the consent agreement did not overcome the likelihood of confusion between the marks as filed.

It seems to me that parties only needed one of the following:  a restriction on the Registrant from selling in the geographic region identified in the consent agreement or an amendment to one of the applications to include the brewery’s house mark.  A concurrent use proceeding could have been instituted that would limit the registrations to geographic regions, and I believe we will start to see more of these types of proceedings being used in the craft brewery industry.

Further, the parties rely on the trade dress and use of the respective brewery’s house brand on the packaging — but neither marks as filed with the Trademark Office include the house brand.  Bay State could have filed for BAY STATE TIME TRAVELER BLONDE or could have forced A&S Brewing to amend their own application to THE TRAVELER BEER CO TIME TRAVELER SHANDY by keeping the option open to oppose, if the U.S. Trademark Office did not accept the consent agreement.

It is important to remember that the refusal to register the mark does not mean that Bay State cannot use the mark going forward.  A&S Brewing could potentially challenge their use of the mark (assuming they didn’t agree not to do so), but Bay State likely has priority in right to use in some areas based on its use date, which is earlier than A&S Brewing’s filing date.

Morals of the story:  the tortoise doesn’t win the race to trademark protection and be careful with how you draft consent agreements.