Let’s all hope that the Supplemental Trademark Register is not on the death watch.

It appears though to be on life support, at times, and especially with the USPTO’s heightened focus on “merely informational” matter, including laudatory messages.

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.”

Don’t all valid trademarks communicate information? Exactly. How does the USPTO know when at least one of the bits of that information is not about the source?

It cannot be fatal to validity that a mark communicates more information than simply source, see a suggestive mark or a descriptive one that has become distinctive.

Although not a laudatory example, the first precedential decision from the TTAB in 2019 denied Wal-Mart’s application on the Principal Register, for INVESTING IN AMERICAN JOBS, a slogan for retail store services, calling it “merely informational,incapable as a mark:


Wal-Mart recognized that its claimed mark communicated descriptive information, yet it argued that its evidence was sufficient to show acquired distinctiveness.

What’s striking about the Wal-Mart decision is that evidence of descriptiveness was used to support the fatal conclusion that the slogan can never function as a mark.

It relied on a series of prior cases holding certain phrases incapable of functioning as marks (THINK GREEN, GUARANTEED STARTING, DRIVE SAFELY, and others).

It used evidence typically supportive of a descriptiveness refusal to say that Wal-Mart’s slogan would not be perceived as a mark to indicate the source of services.

It also pointed to several examples like “ONCE A MARINE, ALWAYS A MARINE,” “PROUDLY MADE IN THE USA,” and “THE BEST BEER IN AMERICA,” as merely informational or laudatory slogans, incapable of serving a trademark purpose.

Laudatory terms long have been considered merely descriptive (not generic) for the provided goods or services, so they’re ideally suited for the Supplemental Register.

The Supplemental Register exists as a holding cell for merely descriptive phrases not yet distinctive, but capable of becoming distinctive, maybe at some future time.

Incapable matter — subject matter that cannot serve as a trademark — like generic terms and phrases are impossible and hopeless of ever functioning as a valid mark.

TMEP 1202.04(a) actually blends laudatory and informational: “Matter that only conveys general information about the applicant’s identified goods or services, including highly laudatory claims of superiority, fails to function as a mark.”

So, now we’re going to differentiate between garden variety laudatory claims that are descriptive, and “highly laudatory claims of superiority” — the latter being incapable, and the former holding out some hope of having at least a chance?

This unfortunate approach is reminiscent of the widely criticized approach of the “so highly descriptive” category as to be incapable of serving a trademark purpose.

All the way back in 1989, I went on the record, questioning the “so highly descriptive as to be incapable” line of cases in “Putting the Cart Before the Horse in Assessing Trademark Validity — Toward Redefining the Inherently Generic Term,” published in the University of Iowa College of Law’s Journal of Corporation Law.

The problem with the “so highly descriptive” category is it treats descriptive matter as incapable and generic without the rigors of an actual genericness determination.

The poster (or coaster) child for the eerily similar approach is the Federal Circuit’s 1999 decision rejecting Sam Adam’s THE BEST BEER IN AMERICA slogan as incapable, blurring the distinction between descriptive and generic designations:

In that decision, Sam Adams had “not met its burden to show” that the slogan THE BEST BEER IN AMERICA for beer, had acquired distinctiveness/secondary meaning.

Had the TTAB and Federal Circuit stopped there, fair enough, doing so would have allowed Sam Adams to seek a Supplemental Registration and try again later (with more evidence of acquired distinctiveness) for a coveted Principal Registration.

But instead, both the TTAB below and the Federal Circuit on review, went on to editorialize that no amount of evidence could ever turn THE BEST BEER IN AMERICA into a trademark, not because it’s generic, but because it’s incapable.

That’s what courts routinely said about single color marks, they’re impossible and incapable of serving a trademark purpose, until Owens Corning came along with the Pink Panther, to reverse decades of thinking against single color trademarks.

And, if “highly laudatory claims of superiority” are actually incapable of a trademark purpose and outside the possible definition of a trademark, then how can Principal Registration of AMERICA’S BEST BEER DRINKING CITY be explained, or these?

Let’s be honest, since the stated test is really to discern how the claimed mark would be perceived by the relevant public, too easily dismissing evidence going to that question, doesn’t help and starts to feel more like an impossible shell game.

I’d rather see the evidence of descriptiveness (which provides information) used to support a descriptiveness refusal, allow a Supplemental Registration, then the USPTO can wage the real evidentiary battle with claims of acquired distinctiveness.

Last week was an incredible opportunity to share some of these thoughts in NYC with those attending Practicing Law Institute’s Advanced Trademark Law 2019 seminar, thanks to PLI, Kenneth Min, and co-chairs Kieran Doyle and Dean Eyler!

In the end, let’s all hope that the USPTO reins in its hyper-focus on expanding the “merely informational” and outcome-determinative category of incapable subject matter, so we don’t have to kiss the Supplemental Register goodbye.

Additional hat tip to Sam Adam’s and its vintage painter’s cap:

 

 

Welcome to another edition of Single Letter Brands. This one was uncovered in the far southwest corner of the country, if you haven’t been, I highly recommend a visit:

Q is a casino/resort near Yuma, Arizona. Here’s a question, what does Q stand for?

In this context, near Yuma, we’re not talking this Q casino, but rather, The Quechan, a Native American tribe, living on the Fort Yuma Indian Reservation, located on the lower Colorado River in Arizona and California, just north of the Mexican border:

The Objects in the Rear May Appear Closer Than They Are, Really.

Here’s another question: Why do you suppose The Quechan haven’t pursued registration of Q at the USPTO? Perhaps this federally-registered Q casino mark?

Here’s yet another question: Is there room on the Principal Register, for multiple differently stylized Q casino marks? I’ll answer that one with another question: Would you rather have really thin national rights or broad, but more local rights?

And, your Answers?

No worries, I’m back at the keyboard, refreshed after a busy January, from the ATA Show in Louisville to Las Vegas for the SHOT Show, then Austin, and well beyond.

2019 is off to a rapid start, not sure where the first half of February went, so I’ll make sure this is a good one, and with a little luck, it might even be a great one:

Did my iPhone capture a production anomaly in the soap on display? Note the disconnect between the word and the stuff that I’m not sure I’d want to rub on me.

How often do we hear, “Oh it’s good enough,” or “Yeah, it’s pretty good”? — Good seems pretty watered down today, bordering on being just OK, a passing grade.

Kind of reminds me of AT&T Wireless’ funny Just OK Is Not OK commercials. Let’s just say, good seems much further from CNP than BGE — Barely Good Enough.

A Friday evening shopping run to Whole Foods provided inspiration for this blog post; as you will recall, it’s not the first, others preceed it, e.g., here, here, and here.

So, imagine my surprise that someone actually would try to “brand” soap as good.

Turns out, that someone has infused more than the common meaning into the word, incorporating the more active “do-good” kind, with a real social impact.

Before learning of that aspect to the brand, I was left wondering, is good — well, enough to serve as a distinctive trademark, in other words, is it ownable, as IP?

Turns out, it apparently is, Good Soap is federally-registered for “sustainably manufactured beauty products, namely fair trade shea butter soap” — no less than 500+ pages of evidence was submitted to establish acquired distinctiveness.

At the end of the day, I’m still left wondering about the reasonable scope of rights?

With the mildly laudatory Good, it’s probably no surprise that other coexisting soap marks have slipped into the same laudatory-themed bubble bath as Good Soap:

Besides all those, why did the USPTO allow this Good soap mark to coexist, much less achieve federal registration without a showing of acquired distinctiveness?

Perhaps another less-than-wonderful style of truncated examination at the USPTO?

With a broader identification of goods, covering simply “soaps” — and no apparent “do-good” double meaning, how did the informational matter refusal slip by too?

Back to what Good might mean to consumers, at first blush, it seems facially about managing normal expectations, but Great is about exceeding them.

Assuming the product attributes live up to the name, wouldn’t a brand rather be great than simply good? In other words, can Good Soap, ever be a Great brand?

By the way, this is not anywhere close to our first soapbox when it comes to getting lathered up over soap trademarks:

You can be the judge of what is good versus great. Yes, lather, rinse and repeat.

–James Mahoney, Razor’s Edge Communications

Every now and then, lightning strikes where a creative team sees a terrific, fast-turn opportunity to have a little fun. I think of them as targets of opportunity.

We had one some years ago when we were in the midst of creating a series of mailers for a search-technology client. Early in December, the spark hit and we scrambled to make this idea happen in time:

Looks like lightning struck for the GMC creative team when the LA Rams made it to the Super Bowl. I don’t know if this was a national ad, but it appeared on my Super Bowl Sunday morning doorstep in its full-page, Boston Globe glory.

Perfectly timed delivery 12 hours before the game, perfectly targeted to Boston.

The only quibble is whether there actually was a competition to introduce the first six-function tailgate, or even if that’s a deciding factor for a substantial percentage of truck buyers. It would have been perfect all around if it were announcing that GMC sales had been tops.

But that’s a minor point. This one’s a winner for the creative team and GMC for seeing the opportunity, seeing the target, and hitting the short window to take advantage of it.

Over the last decade, we’ve covered Super Bowl topics, it’s that time of year again!

We’ve probed the NFL’s overzealous activities and asked hard fair use questions.

And, with Big Game LII in our backyard, we had a front row ambush marketing seat.

With digital marketing, that front row seat can be anywhere your iPhone takes you:

The top half of the email advertisement from Tuesday, landing in my inbox (shown above), seems to have a better argument for a nominative fair use defense than the the bottom half of the same ad (shown below), agree?

Assuming Birch’s is not an actual licensee, seems to me a rather difficult argument that use of the Super Bowl LIII logo is really fair and necessary for communicating truthfully, but, what say you?

UPDATE:

Hot off the email press and inbox from yesterday, here is another Super Bowl ambush, note their favoring of “Big Game” over “Super Bowl”:

So, they may have avoided the NFL’s wrath, but what about the Patriots and Rams logos on the helmets, fair use, or not, friends?

Here’s to looking at you again, James!

Can a gang become a brand? This is a question asked in the new Netflix show, Trigger Warning,  produced by and starring Michael Render, AKA Killer Mike, one half of the Grammy-nominated rap group Run the Jewels.

Killer Mike of Run the Jewels performing at Pitchfork Chicago on July 19, 2015 (Photo Credit: Me)

In episode three, “White Gang Privilege,” Mike explores America’s love of the Outlaw, real and imaginary, and typically white: Al Capone, Tony Soprano, Tony Montana, Michael Corleone, Johnny Cash, Gordon Gecko, and Hells Angels, to name a few.  The episode begins with Mike asking: How is it possible for Hells Angels, a known biker gang, to sell t-shirts on Amazon? And what’s stopping black gangs from doing the same thing?

As Mike drives to a trap house in Atlanta to find out, he comments that “even though black gangs … are as well known as the Hells Angels, they haven’t been able to cash in and trademark their brands in the same way.”  So he meets with Crips gang members Yayo, Murdo, AC, and Newny to discuss legitimate business ideas, like zipper and button manufacturing, and, eventually, the gang lands on a new brand of soda: Crip-a-Cola.

Crip-a-Cola packaging as shown on The Late Show with Stephen Colbert

Spoiler alert: The episode proceeds to follow the gang through all of the typical startup business challenges: getting a loan (or at least trying), creating a minimum viable product (needs more sugar), working with a graphic designer (his first time working with a gang), consulting a beverage industry expert (impressed by the polished product), focus-group testing (everyone is afraid or skeptical at first, especially Mario!), advertising (a music video like commercial), and making that first sale (at a local farmer’s market), all while handling a new market rival (Blood Pop soda produced by the Crips’ rival gang, the Bloods).

Considering everything that went into the episode, and the seriousness of the effort, I was left scratching my head over the obvious, and perhaps true-to-life, startup oversight:  where’s the trademark lawyer?  I spotted at least four issues where a good trademark lawyer could have really helped.

Trademark Notice

Do you see the little circle-R next to the word Crip-a-Cola on the product packaging?  That means “registered trademark” and indicates that Crip-a-Cola is federally registered in the United States.  The only problem is that it’s not registered.  In fact, there isn’t even an application pending!  We’ve blogged before about misuse of the trademark registration symbol here (fraud?) and here (false advertising?).  A good trademark lawyer would have corrected that to a “TM” and filed an intent-to-use application before going live on Netflix (or even to that first farmer’s market).

Clearance

Another possible problem a trademark lawyer could have helped with: Clearance.  Can the Crips actually use “Crip-a-Cola?” despite at a minimum, perhaps calling to mind Coca-Cola?  While “calling to mind” is not infringement, does Crip-a-Cola step to closely to Coca-Cola, since Coca-Cola is a famous brand, and able to wield the full power of anti-dilution law?  What has Coca-Cola done with similar attempts?  A good trademark lawyer would investigate and find out: of course, Coca-Cola will protect its corner, just take a look at the mark CropaCola, which popped up in 2014, and which Coca-Cola quickly opposed, on likelihood of confusion and dilution grounds, asserting the following:

[Coca-Cola] is the world’s largest beverage company, serving more than 1.6 billion consumers each day, in more than 200 countries around the world.  [The] COCA-COLA brand is the cornerstone of its portfolio, which presently includes fifteen billion dollar brands.  COCA-COLA and DIET COKE are the top two soft drink brands in the world. . . .[T]he ‘CROPA’ term in [CROPACOLA] is confusingly similar in sight and sound to the ‘COCA’ term in [COCA-COLA], containing the same number of syllables and a similar phonetic impression, which is compounded by the addition of the ‘COLA’ suffix, in and identical manner as the use of [Coca-Cola’s] COLA suffix.”

Seems plausible that Crip-a-Cola could expect the same treatment from the largest beverage company on Earth.  This is where having a trademark lawyer in your gang would really help.  For one, to identify issues like these (never mind taste infringement) and identify strategies for going forward, but more importantly, to look for defensible legal positions and creative solutions, for example, perhaps seizing on this line in Coke’s opposition: “Furthermore, the ‘CROPA’ term has no independent meaning, further failing to distinguish it from [Coca-Cola].”  (emphasis added).  Here, Crip-a-Cola may have an advantage: unlike “Cropa”, the term “CRIP,” does have several independent, distinct meanings (perhaps the most helpful is the possible backronym: “Common Revolution In Progress.”) and is likely famous, or infamous, in its own right.

Ownership

What else could a good trademark attorney help with?  How about determining ownership?  Absent a legal entity to own the CRIP-A-COLA mark and the related business, Yayo, Murdo, AC, Newny, and Killer Mike would own Crip-a-Cola jointly as individuals in a general partnership, the worst form of legal entity, due to the shared, personal, and unlimited legal liability each partner shoulders. Better to form an LLC at least, not only to more cleanly own the trademark, but also to remove personal liability, formalize ownership, management, and tax decisions, and adopt buy-sell provisions.

Furthermore, what about competing claims of ownership? Is there an official Crips entity that could claim false association?  Maybe – one trademark application filed July 5, 2018 for the mark CRIPS for “association services” and “Organizing chapters of a Community Revolution In Progress club and promoting the interests of the members thereof” suggests that an entity called Crips, LLC, may have been formed to claim leadership of the Crips.  This would be something any good trademark attorney would investigate, and develop a strategy for dealing with.

Legal Notices

Finally, the last issue in the episode I spotted, where good trademark lawyer would lend a hand, arises from the fine print claim made at the end of the Crip-a-Cola commercial (NSFW):

The fine print states that “unauthorized use of the Crip-a-Cola font is prohibited by law.”  The problem? Fonts, or typefaces, are only indirectly protected by law, and not in gross.  Sure, if your typeface is displayed as a result of computer software code operating on a device, then copyright protects the computer code necessary to display the typeface as a font. This is the main reason why certain fonts are licensed. But if the typeface is “copied” or used without authorization through other means, there is no recourse under copyright law.  Instead, one would have to turn to trademark protection of the stylized mark, which, absent a federal registration would be limited geographically by common law rights based on use, perhaps as narrowly as Atlanta or the State of Georgia.  And except for the famous typefaces of famous brands (for example the Coca-Cola script), such rights would be further limited by the goods in connection with which the typeface is used, to prohibit use on only identical or related goods (for example, complimentary goods, or goods within the likely “zone of expansion”), in this case, rival beverage or food products. So the claim that the “unauthorized use of the Crip-a-Cola font is prohibited by law,” while not entirely untrue, is mostly inaccurate.

Outlaws are known for having their criminal defense attorneys on speed dial.  Maybe it’s time to add the number for a good trademark attorney.

Better Call Saul? Only if he practices trademark law!

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

Las Vegas has a welcoming brand, probably best known by the nearly decade old famous and iconic slogan: What Happens in Vegas Stays in Vegas.

LVCVA owns it for gaming machines, slot machine services, and “promoting the Las Vegas, Nevada area as a destination for leisure and business travelers.”

If you’re not aware of the origin and the connection to Minnesota, here you go.

Las Vegas has welcomed the SHOT Show for many years, so here we are, once again, connecting with our many brand-toting friends in the industry.

Although I haven’t yet noticed evidence of it on the streets or the strip, the famous WHIVSIV slogan is reportedly back from its brief hiatus.

MGM Resorts’ Aria appears to be building on the meaning of Vegas with a fairly new slogan of its own that interestingly employs the term being used as a verb:

Given all the other places we’ve seen and reported on brandverbing to date, and now that we know it happens in Vegas too, only time will tell if it stays in Vegas:

As you know, we have welcomed the challenge by marketing types to press the edges and not fall into the assumed knee-jerk legal trap when it comes to weighing the true risks of genericide based on the verbing of brands, but if you’re not Google, this recommended reading from our archives — on the subject of trademark verbing and the risk of genericide, is still highly useful:

Who will be the next to jump on the brandverbing bandwagon? How long will the ride last?

All that said, Aria’s This is How We Vegas, should not be confused with This is How We Hotel, much less, This is How I Vegas, for sure, or even this one either:

 

–James Mahoney, Razor’s Edge Communications

Back in the ’70s, National Geographic ran a story on Boston firefighters.

The writer mentioned a barb that a fireman tossed his way. “Ya gonna do another silver jets piece, huh?” Adding sarcastically, “Ya know: silver jets of water piercing the dark sky as they bravely battle the inferno…”

I owe that firefighter a debt. Since I read his diss, Silver Jets has been a mental caution sign against veering too far into the preciously romantic. (Well, most of the time, anyway; all us writers occasionally succumb to the siren’s song.)

Which brings me to Moen’s Silver Jets moment: creative work driven by its presumable campaign premise, “It’s about time we recognize all water does for us, and give it the attention it deserves.”

The Moen website has lots of solid information. Most of it is presented well and unambiguously. That’s a good thing, since we generally want only three things from our faucets: style, function, and reliability. Everything else is on the margins.

And yet, even in commodity markets—and maybe especially there—the urge to creatively distinguish the company runs strong. Channeled and managed well, it can produce good outcomes.

But when the primary focus shifts, unnoticed, to the creative idea from the business objective, you can wind up in Pittsburgh when you intended to go to Minneapolis.*

Here’s how I think that happened at Moen:

  • They wanted a new campaign to distinguish the company.
  • Someone(s) got the idea to “celebrate water.”
  • That led eventually to the premise that “Water designs our life.”
  • That led to some excited creative exploration casting water as the unsung hero/benevolent star of human existence.
  • That led to casting Moen as the combination of Alexander Graham Bell and Frank Lloyd Wright when it comes to water.
  • That led eventually to the campaign theme: “Water designs our life. Who designs for Water?”

(Spoiler alert: Moen’s answer: “Moen designs for Water.” Actual answer: Every company that makes something related to water.)

And that’s where Moen’s creative juices really go Silver Jets. Some examples sprinkled throughout Moen’s website:

  • “With 1.5 trillion gallons of water running through our faucets each year, we feel a tremendous responsibility to make sure every one of your interactions with water is a meaningful one.”
  • “Moen products don’t just make you look smart; they leave you feeling inspired.”
  • “As a company we’ve given over to the power and beauty of water. Throughout our history, we’ve learned to respect and honor it. So that makes us a company that not only celebrates water, but that also happens to make faucets.”
  • “Throughout history, water has shaped the world we live in—where we gather, what we do on the weekends and what rooms we make room for. So it’s about time we recognize all water does for us, and give it the attention it deserves.”

Those are some major-league Silver Jets. They speak to lofty aesthetic. They paint glowing watercolor images. They demonstrate what happens when marketing and creative exploration become unmoored from reality and business objectives.

Last, for now, here’s a piece of SethGodin-bait: Predictably, Moen’s creative drift inevitably culminated in a gorgeous, high-budget, 60-second art film designed to…well, you tell me. You can see it here, or by clicking on the “watch the film” link on Moen’s site.

Where did it all go sideways? Around the fourth bullet of the process described above. Creative freewheeling is a necessary part of producing good work. But so is having at least one person keeping an eye on the compass and able to trim the sails.

* Heading north on the Mississippi River will bring you to Minneapolis unless you lose focus and get sidetracked onto the Ohio River, which will bring you to Pittsburgh.


A local real estate agent has argued that the above design is unique enough to make the SOLD! designation distinctive and registrable as a service mark for “information in the field of real estate and real estate services,” among other goods and services. The USPTO wasn’t sold on the idea, but not for the expected reason.

Given the USPTO’s growing love for the “merely informational matter” category of incapable subject matter — essentially contending the subject matter fails to function as a trademark or service mark — I fully expected to find that refusal in the file history of the application, prior to abandonment of the application, but no.

Instead, the USPTO denied registration based on two prior marks owned by unrelated entities: (1) SOLD.COM for “providing access to, and information on, specific real estate listings and related products and services via a global computer network;” and (2) SOLD IN 32 DAYS for “real estate brokerage” services.

The USPTO surprisingly failed to raise the merely informational, failure to function refusal; perhaps it would have arisen had the Applicant been able to overcome the likelihood of confusion refusals, as the remaining descriptiveness refusal couldn’t prevent the Applicant from amending capable matter to the Supplemental Register.

It’s hard to conceive any rendition of SOLD! being considered inherently distinctive for much of anything in the field of real estate; even if the design elements were so unique to make the distinctiveness sale fly, it would still require that the wording SOLD! be disclaimed as non-distinctive matter — either descriptive or incapable.

What do you think? Are SOLD.COM and SOLD IN 32 DAYS really capable of serving as service marks for real estate services? If so, do you agree that SOLD! is capable, but properly refused registration because it’s too close to both of the prior marks? If they can coexist peacefully, then why can’t SOLD! peacefully coexist too?

I’m not a fan of the USPTO’s growing emphasis on the merely informational, failure to function refusal, as incapable matter, but here I am thinking it may have been the most appropriate refusal for each of these claimed marks, which would have allowed them to peacefully coexist and kept them off the Supplemental Register.

I’ve heard about how some believe they are so gifted they can sell ice to an Eskimo, but that doesn’t necessarily mean the USPTO is in the market. Having said that, if SOLD! was worth giving it the old college try, then why not honor our previous tempting invitation to test this wingspan pose with the USPTO?

I don’t think LeBron or Nike would mind, do you?