A little over one year ago, I blogged about Tesla’s Roadster being launched into outer space, asking who owns the right to the “Spaceman” rider’s mark? Today I post a differnt thought-provoking question about electric car company Rivian: Does Rivian’s use of a Ford F-150 body when testing its electric truck technology in public risk trade dress infringement?

If you haven’t seen the recent headlines, startup electric truck company Rivian has been testing its 100% electric truck technology under the hood of a Ford F-150 body:

Credit: AutoBlog

In these photos of a Rivian masquerading as a Ford at an electric charging station, you can make out the modified chassis underneath. You might also notice there are no tailpipes, and the wheels seem just a little too small. Surprisingly, the Ford logo is still present on the truck body in both the front and back, along with the F-150 mark on the side. I sure hope Rivian has a licensing agreement…

Compare the above look to the distinct headlight and sleek design advertised by Rivian:

Credit: Jalopnik

For the past few months, consumers have been reporting sightings of strange F-150s with missing features, speculating that the trucks might be prototypes for an electric Ford. Here’s another example of one seen in the wild, although it’s unclear whether this is a genuine Ford electric prototype:

Credit: AutoBlog

However, recently Rivian CEO R.J. Scaringe confirmed that the company has been secretly testing its “skateboard” chassis architecture underneath Ford F-150 bodies on public streets. And he also suggested the company may be testing under other masks: “They’re all over the place, but nobody knows. We’re very quiet about that.”

When I learned about Rivian’s clever camouflaging, it immediately brought to mind trade dress protections. The Lanham Act protects a product’s design, shape, and configuration when such features serve as distinctive identifiers of the product’s source. Note, however, that functional aspects of trade dress are not protected–only ornamental features are. Just like trademark infringement claims, to prevent others from using a specific trade dress, the plaintiff must show that the use is likely to cause confusion. The Lanham Act also protects against trade dress dilution, which includes weakening of the distinctiveness or fame of trade dress or use of trade dress in connection with inferior products. In either case, the plaintiff can seek both damages and an injunction barring further infringement and dilution.

Arguably, Rivian’s masquerading as a Ford F-150 risks liability for trade dress infringement, as well as dilution. As to infringement, there are already reports of confusion on the streets. Though, the harm from infringement is probably minimal because Rivian is not selling any counterfeit electric F-150s.

Rivian’s use of the Ford F-150 body may also dilute the distinctiveness of the F-150’s overall design and Ford’s marks. Indeed, with knowledge of Rivian hiding under the hoods of F-150s, consumers and commentators may be starting to wonder if the F-150s on the road were actually made by Ford. And depending on your view of electric vehicles, use of the Ford and F-150 marks, in addition to the model’s trade dress, could be seen as use in connection with inferior, unrefined products. On the other hand, if you’re like me and are excited about electric vehicles, the use could elevate Ford and the F-150’s overall image to high-tech chic.

But Ford would likely face an up-hill battle arguing the F-150’s trade dress is famous enough to be entitled to protection from dilution. In fact, it appears Rivian chose the F-150 body precisely because it is ubiquitous and generic enough that hiding under it would likely not draw attention. Moreover, Rivian could argue its use of the F-150 trade dress is fair, and therefore statutorily protected, because Rivian is not using the trade dress to designate itself as a source. Rivian’s use also doesn’t seem to fit the mold for what is typically considered “commercial” (or transactional) use. On the other hand, Rivian could probably take simple steps to modify the body of its testing vehicles to reduce the trade dress risks created by its masquerade.

You may recall that DuetsBlog informed you in May of 2016 (here) that Beyoncé filed suit in New York federal court against a company and its owners who were using the mark Feyoncé on apparel and other products, such as mugs. She has now dismissed the lawsuit—likely based on a settlement (although the settlement has not been reported yet, and if there is a confidentiality provision in the agreement we may never know for sure).

Beyoncé was understandably troubled when the company began using both Feyoncé (rhyming with her name, the only difference being the beginning letter) and “Single Ladies,” which is the same name as Beyoncé’s famous Grammy award winning Song of the Year. In her complaint, Beyoncé explains that the song “tells the tale of female empowerment – the protagonist celebrates her newly found status as a single woman in a dance club telling her ex-boyfriend (who is jealous of the attention that she is receiving from other men) that if ‘you liked it, then you shoulda put a ring on it.” Beyoncé alleged that defendants were “seeking to capitalize on the notoriety of ‘Single Ladies’… defendants are selling merchandise bearing the ‘Feyoncé’ mark – a misspelling of ‘fiancé’ intended to call to mind ‘Beyoncé’ and her famous song.”

Beyoncé brought a motion for summary judgment. In denying the motion, the court found that there were genuine questions of fact regarding whether there was a likelihood of confusion. It was not enough that the company had tried to “capitalize off the exceedingly famous ‘Beyoncé’ mark.” There were still questions as to whether consumers would believe that Beyoncé was associated with the ‘Feyoncé’ products.

Beyoncé takes intellectual property rights seriously (as we all should). You may recall we blogged about her efforts to protect intellectual property related to her daughter Blue Ivy Carter, here, here and here.

We have likely not seen the last of Beyoncé’s efforts to protect intellectual property.

Before we think predictions for 2019, let’s consider the vast ground we’ve covered in 2018:

Wow, I’m exhausted, and these highlights are only a small fraction of what we delivered in 2018.

You may recall, earlier this year, I predicted more informational and failure to function decisions.

As our friend John Welch reported, there were more than a few (here, here, here, here, and here).

Stay tuned, on March 13, in New York City, I’ll be diving deeply into the failure to function topic, among others, at Practicing Law Institute’s Advanced Trademark Law 2019: Current Issues.

In terms of my big trademark prediction for 2019, it will be revealed whether the scandalous bar to federal registration is invalidated, whether or not the Supreme Court agrees to hear Brunetti.

So, what is your big trademark prediction for 2019?

It’s fall, and you know what that means: football season! For many, this means a return to the couch each weekend to spectate America’s most-watched sport. But the popularity of doing so appears to be in decline. This shift isn’t only affecting the NFL, but also college football as well, as ticket sales continue to plummet. Increasingly among my own family and friends, it seems as if everyone is more interested in playing their fantasy leagues than watching reality unfold before them. Which is why, one would think, that leagues and other football organizations would want to promote discussion about football, rather than hinder it.

Credit: Geek.com

But football organizations are cracking down on, rather than encouraging, use of familiar football names and phrases. Some have questioned, for example, the NFL’s bully-like tactics in aggressively protecting the “Superbowl” name. The annual “big game” is so well-known and such a major event that it’s almost impossible not to use its actual name. Yet, the NFL persists, enforcing more than just its famous name, drawing the ire of commentators each year.

Such tactics appear to have inspired a recent filing by the Heisman Trophy Trust against “HeismanWatch.com,” for trademark and copyright infringement. The Heisman Trophy Trust, the complaint says, is the owner of a slew of federal trademark and service mark registrations related to the Heisman Trophy, “one of the most distinguished, prestigious, and recognized awards in all of sports, and perhaps the most famous of all individual awards in football.” The award is given to the most outstanding collegiate football player, usually a quarterback or running back, each year. You might recognize the trophy by its distinctive “stiff-arm” maneuver captured in bronze:

Credit: The Ringer

Defendant HeismanWatch.com is a website that offers information, analysis, and podcasts about the Heisman trophy award. It is known for its “one-of-a-kind regression model that processes simulated Heisman votes,” to predict in advance who will win the Heisman each year. It reportedly correctly predicted the most recent winner, Baker Mayfield.

The Heisman Trophy Trust, apparently, does not appreciate HeismanWatch.com’s analysis and attention. It alleges that the website is deliberately attempting to free ride on the fame and notoriety of the Heisman Trophy marks, and it says that consumers are likely to believe there is a connection between the website and the actual trophy organization. Of course, the fact that HeismanWatch.com exists at all belies any such connection; the Trophy selection is secretive, but the website helps fans read the field and guess who will win next.

Time will tell whether the Heisman Trophy Trust can prevail against a news reporting and commentary organization like HeismanWatch.com, but it’s not unprecedented. The Academy Awards sued “OscarWatch.com” over a decade ago, prompting the website to change its name to “Awards Daily.” One cannot help but think that HeismanWatch.com has an incredibly strong nominative use defense, though. Under nominative use doctrine, another person can use the trademark of another if:

  1. the thing identified by the trademark (here, a trophy) cannot be readily identified any other way;
  2. the mark is used only as much as is necessary for that identification; and
  3. the use does not suggest sponsorship or endorsement.

The nominative use defense protects free speech and against the need to use “absurd turns of phrase” to avoid liability.

Credit: Wikipedia

It’s difficult to imagine a viable substitute to the name “Heisman,” given the trophy’s actual name–and namesake. What alternatives are there to HeismanWatch.com that do not include the surname? One commentator  offered an idea:

BestOffensivePlayerWithAGreatPRCampaignOnAVerySuccessfulTeamWatch.com.

Of course, this is absurd. And generic alternatives would fail to adequately describe what the website does (e.g., OutstandingCollegiateFootballPlayerWatch.com). One also doesn’t have to look much farther than a simple Google search to find that the media regularly uses “Heisman Watch” as a phrase to discuss anticipation about the next awardee. Even ESPN has a section called “Heisman Watch.” This kind of ubiquity shows the obvious necessity of using the surname. The common use of the phrase also suggests there is a very low likelihood that collegiate football fans are confusing the website–or any other reporting source–with the actual trophy organization. These are hallmarks of fair use.

But setting aside the legal defenses, one has to wonder if organizations such as the Heisman Trophy Trust, NCAA, and NFL ought to relax a little, and encourage the kind of use presented by sites like HeismanWatch.com. These fan centers generate excitement about, and interest in, football. That’s something football desperately needs more of lately.

Credit: Local Solutions

I write today regarding a squirrelly thought: are the benefits of registering a hashtag trademark almost always outweighed by the consequences? In light of a recent Trademark Trial and Appeal Board (“TTAB”) ruling and the Trademark Manual of Examining Procedure’s (“TMEP”) provisions, hashtag marks offer much less protection than traditional character-based marks, such that the latter are preferable in most situations.

We’ve all seen hashtag words and phrases (without spaces between the words) in social media, most commonly on Twitter–but also now on other sites, such as Facebook and Instagram. By affixing a hash symbol (#) to a word or phrase in a post, users can garner attention, join in a movement, and possibly “go viral.” Popular recent trending examples are #MeToo and #TakeAKnee. And of course, who could forget:

#selfie

Hashtags serve filtering, identifying, and promoting functions that have commercial advertising value. Thus, it is no surprise that hundreds of individuals and companies have applied for trademarks on “hashtag marks,” seeking to control the use of certain hash-preceded words and phrases. In fact, at the time of writing, there are over 1,900 such registrations. Hashtags are hip, and everyone wants one–or so they think.

In 2016, the USPTO added TMEP § 1202.18, which explains when “hashtag marks” may be registered:

A mark consisting of or containing the hash symbol (#) or the term HASHTAG is registrable as a trademark or service mark only if it functions as an identifier of the source of the applicant’s goods or services. . . . Generally, the hash symbol and the wording HASHTAG do not provide any source-indicating function because they merely facilitate categorization and searching within online social media . . . .Therefore, the addition of the term HASHTAG or the hash symbol (#) to an otherwise unregistrable mark typically will not render it registrable.

Recently, the TTAB applied this rule and other doctrines, holding that the addition of hashtags usually do nothing to make a mark distinctive. In the case, the TTAB rejected singer Will.I.Am’s application for a hashtag mark for #WILLPOWER because it was too similar to other registered marks containing”willpower,” and the hash symbol had no source-indicating distinctiveness, merely operating as a metadata tag for social media platforms.

The TTAB decision and TMEP provisions greatly narrow the registrability of hashtag marks, as well as their enforcement scope, such that it seems as if there is very little upside to applying for such a mark in most circumstances. An applicant does not need to register an otherwise-registrable mark as a hashtag mark in order to protect the mark if hashed. In such cases, a hashtag registration provides no more protection than a traditional character registration; the hash adds no additional layer of distinctiveness, just as it would not lend distinctiveness to an unregistrable word or phrase. Thus, an applicant should only apply for a hashtag mark in instances in which the non-hashed word or phrase lacks distinctiveness without the hash. If there is a case to be made for a traditional mark, the applicant should pursue that mark instead because traditional marks can be enforced more broadly.

If an applicant applies, however, only for a hashtag mark, then non-distinctiveness absent the hashtag will work to preclude the registrant from enforcing the mark in non-hashed situations. Even if the hashtag mark could be a mark on its own without the hash, the fact that the hashtag mark is either the first or only mark could result in a presumption against non-hashed distinctiveness–after all, why apply for a hashtag mark at all in such circumstances? It may also be more difficult to prove that non-hashed phrases, which in their non-hashed form are separated by spaces, infringe the hashtag mark. Imagine, for example, two competing phrases (the first example of which is a registered hashtag mark):

#lifeofabusyexecutive

Life of a Busy Executive

If the hash provides the distinctiveness for the first example (and perhaps in tandem with the lowercase and squished text), then presumably the second phrase without the hash (and with spaces) would not tread on that distinctiveness, working against a showing of consumer confusion and infringement. Of course, the holder of the hashtag mark could prevent identical use by competitors in commerce, but not similar non-hashed uses.

Emerging trademark law teaches that hashtag marks are extremely narrow–intentionally so–and as we’ve discussed before, hashtag marks are also greatly susceptible to fair use defenses. There appear to be few upsides to seeking such marks, at least without first trying for a traditional mark. So although trademark commentary as of late has focused on the trendiness of obtaining a hashtag mark, the more important question is whether it is worth doing so. In most cases, the answer will probably be “no.”

As Steve blogged earlier this week, we’ve had a lot of “zero” on the mind lately—marks related to the word and numeral. It got me thinking about the letter ‘O,’ especially since it has been in recent trademark news.

If you missed it, The Ohio State University and Oklahoma State University are now dueling it out at the USPTO over Oklahoma’s trademark application related to the block ‘O.’ Specifically, Oklahoma is attempting to register a mark of “a drum major marching while leaning back with head tilted back”:

According to Oklahoma, it has been using the singular block ‘O’ since 2001, most notably on the jersey of its band’s drum major (but also on sports memorabelia):

But in an opposition to the mark, Ohio says it has been using the same letter since as early as 1898, and it’s current main athletics logo includes the block ‘O’ in the background:

According to Ohio, Oklahoma’s use of the leaning and tilted ‘O’ is likely to cause confusion. I wonder if any other O-state institutions will weigh in—looking at you, Oregon.

On the one hand, the block styling of the Oklahoma ‘O’ could cause consumers to accidentally purchase sports gear from the wrong institution. On the other hand, the letter ‘O’ is such a fundamental unit of the English language that it’s hard to argue just one institution should be entitled to its exclusive use—even if it’s only in the college sports context. And Oklahoma is only seeking registration of a mark which uses ‘O’ in a minor fashion. However, Oklahoma’s marching ‘O’ mark could run into issues related to the requirement that the mark be used in commerce. After all, it’s a mark representing the band major, who wears an ‘O.’ How does Oklahoma otherwise use the mark or plan to use it commerce?

It turns out that the letter ‘O’ is not widely used as a mark on its own. There are some recognizable uses, though. Perhaps the most distinctive use of the letter ‘O’ is the Oprah Magazine:

In 2001, a German magazine also named ‘O’ sued Oprah’s ‘O’ magazine, but the suit appears to have gone nowhere, and Oprah’s ‘O’ lives on.

The only other major ‘O’ competitor appears to be Cirque du Soleil:

Maybe there’s some potential for confusion between the Oklahoma drum major and the high-flying circus performers. Though, I’m guessing the audiences for both don’t substantially overlap.

I think the few recognizable instances of ‘O’ marks can be explained by the overall minor distinctiveness a single letter can generate when used in connection with a brand. This is the up-hill battle both Ohio and Oklahoma will face in arguing their sides of the trademark dispute. Stronger letter marks are paired with other words, such as O Magazine and O Cirque du Soleil. Another example comes to mind: Toys ‘R Us (also in the news lately).

The trademark ST. ROCH MARKET is at the heart of a dispute in New Orleans (aka NOLA).  The City of New Orleans is battling in court with the current lessee of the building associated with the trademark.

ROCH MARKET has been associated with a popular market in New Orleans since 1875. Prior to Hurricane Katrina, the market sold fresh seafood. After begin devastated by the hurricane, the City pumped over $3.2 million dollars to transform the place into a food hall with vendors selling seafood, confections, coffee, alcoholic drinks, streetfood, and other food.  Renowned food expert ZAGAT states that it is “An absolute must visit.”  I intend to do so when I visit my friend in NOLA this fall.

Following the renovation, Bayou Secret, LLC leased the building to operate a full service neighborhood restaurant with multiple vendors in a stalls concept.   The company’s sole member Helpful Hound, LLC applied to register the ST. ROCH MARKET mark in April 2017 in connection with food kiosk services and retail vending stand services (Bayou Secret, LLC, and Helpful Hound, LLC and certain individuals associated with the entitityes will collectively be referred to as the “Bayou Secret Parties”).  Because the term ST. ROCH MARKET is descriptive of an actual place, the mark could not be registered on the Principal Register of the United States Patent and Trademark Office.  However, registration for the mark was secured on the Supplemental Register at U.S. Reg. No. 5,293,244 based on the mark’s secondary meaning.

The Bayou Secret Parties launched a similar food hall in Miami in April 2018 and planned to expand into Chicago and Nashville.  Within days of each other in April 2018, the City of NOLA and Bayou Secret Parties filed lawsuits against each other.  The Court consolidated the two cases which involve allegations that Bayou Secret Parties infringed the City of NOLA’s trademark, that the famous trademark was being diluted, among others.

The City of NOLA also filed its own application for the ST. ROCH MARKET in April 2018 in connection with the leasing and management of space for food and drink vendors in a public market at Ser. No. 87/890,988.

In August, the City of NOLA and its management company (NOBC) secured a preliminary injunction that barred the Bayou Secret Parties from using the ST. ROCH MARKET mark for food hall locations other than in NOLA and its newly opened food hall in Miami.

The Bayou Secret Parties brought a motion to dismiss on various grounds.  The City of NOLA defeated the motion with the exception of having its claim for trademark dilution dismissed.  The court found the allegation that the mark “is widely recognized by the general consuming public of the United States” was merely conclusory.

Do you think the EATALY® mark associated with food halls would fare better?  (See U.S. Ser. Nos. 3,065,012; 3,567,939).  It might.  The mark is associated with the well known food halls located near the iconic Flatiron building in New York, downtown Chicago and other locations.

Significantly, famous chef Mario Batali is a partner with the Italian owner of the EATALY mark that was first used in Turin, Italy for a food and wine market before traveling to the United States.

— Jessica Gutierrez Alm, Attorney

 

Earlier this month, the United States Postal Service (USPS) was ordered to pay $3.5 million in damages to a sculptor for copyright infringement.

Seeking a unique redesign for its “Forever” stamps, the USPS searched stock photos for images of the Statue of Liberty.  They found a particularly striking photo on Getty Images and paid $1,500 for a license.  Between 2010 and 2014, the USPS produced and sold 4.9 billion Forever stamps featuring the Statue of Liberty photo obtained through Getty Images.  There was only one problem—this was not the Statue of Liberty.  Instead, the photo was of the Lady Liberty replica statue displayed in front of the New York-New York Hotel & Casino in Las Vegas.  The differences may be subtle, but on a side-by-side comparison, the distinction becomes clear.

On close inspection, you can even see the small plaque affixed to the crown of the Las Vegas statue.  “This one’s for you, mom”–the sculptor’s dedication to his mother-in-law.

The USPS discovered the mix-up in 2011 after only a few months of production.  They stated that they still would have selected the image had they known it depicted the Las Vegas statue, and continued producing the stamps.  Robert Davidson is the sculptor of the Las Vegas replica statue.  Recognizing that the USPS was profiting from his original work of art, Davidson sued the USPS for copyright infringement.

After a two-week bench trial, the court found in favor of Davidson.  The $3.5 million damages amount was calculated as a 5% royalty on the USPS’s profits on the stamp.

 

How can someone claim copyright on a replica of a famous statue?

The short answer is: it’s not an exact replica.  As the court in this case explained, “a work of art need not be wholly original to be copyrightable.”  Rather “it need only be a new and original expression of some previous work or idea.”  The standard for obtaining any copyright protection is relatively low.  To demonstrate that Davidson’s statue is eligible for copyright protection, he need only show a “modicum of creativity.”  In a 1991 case, the Supreme Court described the level of creativity required as “extremely low” and stated that “even a slight amount will suffice.”  Feist Publ’ns, Inc. v. Rural Tel Serv. Co., 499 U.S. 340, 345 (1991).  In addition, to obtain protection for his sculpture, Davidson needed to show some nontrivial variation from the New York statue that distinguishes it in some meaningful way.

The court found that Davidson met this burden.  The court seemed particularly persuaded by Davidson’s testimony that he sought to give his sculpture a more “feminine” and “fresh” face, as compared with the “harsher” and “more masculine” look of the original.  Questions about the application of societal beauty standards to the Statue of Liberty aside, the court determined that the softened jaw line, rounded face, and modified eyes and lips were sufficient for copyright protection in the derivative work.

 

Since the USPS obtained rights to the image through Getty Images and paid a licensing fee, how was this an infringement?

This was my first question when I learned the USPS paid a licensing fee for the photo.  However, it turns out the photo itself was an infringing work.  According to Davidson’s complaint, the photographer took the photo and posted it for sale on Getty Images without Davidson’s permission.  Thus although USPS paid a licensing fee to the photographer, the license was still based on use of an infringing, unauthorized work.  Continued sale and distribution of the photograph, whether by the photographer or USPS, constituted additional infringement.

 

Isn’t this protected fair use?

The USPS raised the issue of fair use as a defense to the infringement.  Fair use does not have a clear-cut definition.  In determining whether an otherwise infringing use constitutes fair use, courts look to four factors: (1) The purpose and character of the use; (2) The nature of the copyrighted work; (3) The amount of the copyrighted work that was used; and (4) The effect of the use on the author’s market.  The USPS’s argument for fair use relied in part on its low profit margin on the stamps and a lack of any harm to Davidson’s ability to capitalize on the sculpture.  The court sided with Davidson.  As the court explained, although the profit margin for individual stamps was low, the USPS collected over $70 million in pure profit from the stamps.  The court also noted that the USPS never offered a public attribution or apology to Davidson.

 

Shouldn’t the sculptor have sued the photographer instead of the USPS?

It seems Davidson had options here.  Both the photographer and the USPS unlawfully used Davidson’s work.  The photographer produced and sold a derivative work (the photo) based on the original copyrighted work (the sculpture).  The USPS then reproduced and sold the same infringing photo.  Both the photographer and USPS used, and profited from, Davidson’s underlying original work.  It is likely that Davidson also could have sued Getty Images for displaying and licensing the infringing work.  It seems Davidson probably made the strategic decision to sue the U.S. government, rather than the photographer or Getty, as the potential for damages was considerably higher.

When can a brand owner lawfully use a competitor’s trademark on the brand owner’s product?

Over the years, we’ve lifted away a lot of dust on the hairy subjects of classic trademark fair use, nominative fair use, and comparative advertising, especially in the context of billboard ads.

It isn’t every day we see comparative billboard ads actually affixed to a product in question, so I can’t resist sharing this vacuum cleaner canister that captures all of these legal allergens at once:

For those unfamilar with the fierce competition between the Shark and Dyson vacuum brands, above is a cropped photo of a Shark Lift-Away canister vacuum, from my home closet.

As you can see, the label affixed to the canister portion of the vacuum actually refers to the competing Dyson brand twice. Just imagine what our friend James Mahoney might be thinking.

Why would the leading household vacuum cleaner brand — Shark — stoop to give its competitor Dyson free mentions (albeit negative) and publicity? Isn’t that kind of like punching down?

Actually, I’m not sure whether Shark had yet surpassed Dyson as market leader, when the canister left the store and entered our closet, so the above label might have been a punch up?

And, if comparative advertising induces sales, why does someone who already purchased the product need more reminders — with each use — that Dyson sucks, in more ways than one?

Turns out, the label shown above, as we now know, is fairly easily removed, so I suppose the joke is really on us, for leaving this comparative advertising on the product for more than a long while.

One of the dangers in affixing comparative advertising claims or content to the product itself may be, over time the claim might lose its original truth; perhaps that’s why the label is removable?

Hawaii seems to be on the mind here at DuetsBlog lately. Last week, I had the pleasure of visiting three Hawaiian islands for the first time. While there, I quickly became acquainted with Hawaiian life and language. It’s a beautiful place; I recommend everyone visit.

When I first landed on Kauai, the “garden island,” I was quickly greeted with “Aloha,” in sound, sight, and mind. Although most understand “Aloha” to be a friendly greeting, the word has much greater meaning. It also means love, affection, peace, compassion, and mercy. In one word, it embodies Hawaii–and, indeed, the State of Hawaii has declared that Aloha is its official spirit. It is “more than a word of greeting or farewell or a salutation. . . . ‘Aloha’ means mutual regard and affection and extends warmth in caring with no obligation in return. ‘Aloha’ is the essence of relationships in which each person is important to every other person for collective existence. ‘Aloha’ means to hear what is not said, to see what cannot be seen and to know the unknowable.” Haw. Rev. Stat. § 5-7.5(a). All government employees are instructed to “contemplate and reside with the life force and give consideration to the ‘Aloha Spirit.'” Haw. Rev. Stat. § 5-7.5(b). I guess they don’t call it the “Aloha State” for nothing!

With such importance to native Hawaiians, citizens of Hawaii, and the state themselves, it is no wonder that “Aloha” has also become a popular company, place, product, and service name on the islands. Throughout my journey there, I began to notice Aloha almost everywhere I went. See, for example, the following:

And the list goes on… In fact, a basic USPTO search revealed almost 500 live Aloha marks, and a search on the Hawaii Department of Commerce and Consumer Affairs revealed over 10,000!

Seeing Aloha used so frequently caused me to ponder the potential risks of choosing a word like ‘Aloha’ for use in a brand. On the one hand, the word used in connection with most goods, services, and places is arbitrary or fanciful. What is, for example, “Aloha Tofu?” And the word may be suggestive or descriptive of Hawaiian roots. But on the other hand, the word “Aloha” is so ubiquitous that it can hardly be said to be inherently distinctive. Its common use, standing alone, does not immediately identify a single source and seemingly undermines the ability to develop secondary meaning in the minds of at least a Hawaiian public constantly bombarded with the word. Tying additional words to Aloha (e.g., “Aloha Fridays” or “Liquid Aloha”) might create more distinctiveness. But there seems to be an overarching risk that the mark’s initial generic non-distinctiveness will never be overcome. This risk is akin to genericide, but not due to expropriation–rather, widespread appropriation.

I enjoy the Aloha spirit and hope it spreads far and wide. But its ubiquitous adoption could turn a word which means quite a bit (see above), into a word which means very little when it comes to trademark law.