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.”

M. Shanken Communications, publisher of Wine Spectator — a popular magazine, website and mobile application that offers wine ratings on a 100-point scale — has filed a lawsuit against California-based Modern Wellness, Inc., based on that company’s use of “Weed Spectator” for ratings of cannabis. The federal complaint, filed in New York, alleges claims including trademark infringement, unfair competition, and dilution. The case is M. Shanken Communications, Inc. v. Modern Wellness, Inc. et al., Case No. 18-cv-08050 (S.D.N.Y.).

M. Shanken alleges that the website and social media pages offered by Modern Wellness use the terms “Weed Spectator” and “WS” for cannabis rating publications, which are confusingly similar to M. Shanken’s use of “Wine Spectator” and “WS” marks for its wine rating publications. For example, Modern Wellness also offers a similar 100-point rating scale for cannabis, and the parties’ marks allegedly contain similar font and style. Furthermore, M. Shanken cites to several Modern Wellness pages that associate cannabis with wine.

M. Shanken’s claims will require establishing a likelihood of confusion (except for the dilution claims) based on the Second Circuit’s eight Polaroid factors. Among those factors, two of the most significant are the similarity of the marks and the relatedness (or “competitive proximity”) of the parties’ services. Although there are some similarities of the marks, M. Shanken may have some difficulty establishing likelihood of confusion based on a lack of relatedness between cannabis rating and wine rating.

However, M. Shanken also brought a dilution claim, which does not require a showing that the services are related or competitively proximate. Therefore, M. Shanken may prevail on that claim, if it can prove the use of “Weed Spectator” is likely to cause dilution by blurring or tarnishment. M. Shanken alleged that its marks are tarnished by Weed Spectator because of the association with an illegal drug (under federal law and most states). Nevertheless, the federal dilution claim also requires a showing that M. Shanken’s marks are “famous,” which is a high bar to establish.

What do you think? Would you be confused as to the source of the Weed Spectator mark, or believe there was some affiliation or connection between the parties? Even if not, do you think that M. Shanken’s marks are tarnished or blurred by Weed Spectator? Stay tuned for updates.

Amazon’s patent (U.S. Patent No. 9,280,157) for a “System and Method for Transporting Personnel Within an Active Workspace” has been in the news recently.

The invention is described as a device for keeping human workers safe in an automated (i.e., robotic) work environment.  In the Background, the patent discusses the rapid rise of automation in inventory-handling systems.  “Technological advancements have made an ever-increasing amount of automation possible in inventory-handling and other types of material-handling systems.”  ‘157 patent at col. 1, ll. 7-9.  “However, there may be circumstances where it is necessary for human operators to traverse, or otherwise go onto, an active workspace where the mobile drive units are carrying out their assigned inventory-related tasks.”  ‘157 patent at col. 1, ll. 14-18.  An automated work environment can be dangerous for human workers.  As a solution, the patent proposes a transport device to transport a human worker safely through an automated inventory-handling work area.  The premise, and the described need for the invention, sound reasonable enough.  However, it’s the drawings of this patent that are garnering some unwanted attention.

Amazon worker cages allow users to safely traverse automated work areas.
At least there’s a bench (414) to sit on?

The patent illustrates and describes the transport device as, well, a cage for workers.  The Detailed Description describes the device as a “cage-like structure configured to substantially prevent the user from sticking an appendage through the enclosure.”  ‘157 Patent at col. 13, ll. 51-53.  Importantly, the claims of the patent (i.e. the scope of protection) are relatively broad and do not specifically require the cage-like structure.  Claim 1, for example, is directed to an inventory-handling system to transport a user within a workspace, the system including a first device to transport users within the workspace, a second device to transport users within the workspace, and a management module directing movement of the two devices.  Of course, this doesn’t render the imagery of work cages any less concerning.

A recent study conducted by two artificial intelligence researchers drew attention to the patent.  The authors referred to the patent as: “an extraordinary illustration of worker alienation, a stark moment in the relationship between humans and machines.”  News of the patent quickly reached major outlets and social media.

Amazon’s Senior Vice President of Operations, Dave Clark, responded on Twitter:  “This was never used and we have no plans for usage.”

This patent, the resulting blowback, and Amazon’s response highlight a couple of important points about patent protection.

First, patents (and, typically, patent applications) are publicly accessible documents.  At the heart of the patent system is an exchange.  The inventor obtains the right to exclude anyone from making or using the invention, but in exchange, must disclose that invention to the world.  Thus a company seeking to obtain a patent, and particularly a high profile company like Amazon, should keep in mind that every word and drawing will be viewable by the public.

Second, Clark’s statement that the company has no plans to implement the cages is a reminder of the value a patent can have.  A patent grants the owner a right to exclude others from practicing the invention.  A patent owner need not actively practice the invention herself in order to enforce it against others.  Even when a company is not looking to implement a particular invention, an issued patent on the concept may provide a leg up on competitors.  The relatively broad claims of the Amazon patent, which do not rely on the cage design, allow Amazon to exclude its competitors from employing a system for transporting humans through an automated work space.

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).

Everyone knows if you really want to get zero calories from a beverage without any strings attached, you have to drink water. But what if you hate water? Try sparkling water! Look how exciting it is:

If sparkling water is the remedy to plain old boring water, why are some trademarks for sparkling water so … flat?

Back in May, Steve wrote about a new Pepsi sparkling water product branded as bubly™. That’s “bubbly” misspelled “bubly.” For sparkling water, it’s also descriptive, probably generic, and definitely not a conceptually strong trademark. Just look at this snip from the Wikipedia page for “carbonated water,” listing “bubbly water” as a generic alternative term:

Then earlier this month, it was announced that Pepsi has agreed to buy SodaStream, the popular manufacturer of at-home sparkling water makers, its most economical model branded Fizzi™.  That’s “fizzy” misspelled “Fizzi.”

De ja vu, anyone?  Take a look at the Wikipedia page again, if you have to:

So, here we have another descriptive, probably generic, definitely not conceptually strong trademark that lacks any suggestive, inherently distinct sparkle. And if there’s any doubt, check out the descriptive uses of the word “fizz” right on the product packaging:

And on the label attached to the machine:

And on the product website:

And in the consumer comments:

And in the FAQs:

Do marketers of sparkling water hate trademarks? (And why are they such bad spellers?)

Perhaps we’ll never know. Or perhaps the answer is simply that these marketing types just wanted to avoid this:

Video: link

Or this:

But what’s the fun in something so flat!

Marketing-types, what would you do? Would you bottle the brand that is so flat it needs no imagination for its meaning to bubble up in the minds of consumers? Or would you go with the brand that nobody knows how to say but plenty of folks enjoy . . . and enjoy poking fun at?

Procter & Gamble (P&G) has filed federal trademark applications to register several well-known (at least among millennials) acronyms used in text messages, including LOL (laughing out load); NBD (no big deal); WTF (what the f***); and FML (f*** my life). The applications identify cleaning products, including liquid soap, dish detergents, surface cleaners, and air fresheners. P&G’s products include brands such as Febreze air freshener, Dawn dish detergent, and Mr. Clean surface cleaner, so perhaps the applied-for marks would be used in association with those existing products. But that’s just a guess, as the applications were filed with an intent-to-use basis, meaning no specimens of use are provided yet.

Earlier this month, the USPTO issued initial Office Action refusals for all four applications, primarily involving minor clarification issues related to the identifications of the cleaning products. However, one of the applications, for FML, received a likelihood-of-confusion refusal, citing previous “FML” registrations, so we’ll see how that pans out. Additionally, two of the applications, LOL and NBD, received requests for information regarding the meaning of the acronyms. (Perhaps the Examining Attorney is not a text-savvy millennial?) Otherwise, it appears that the majority of these four applications will probably be approved for publication eventually, pending resolution of the clarifications and requests for information.

Nevertheless, even if the marks register, the decision to seek registration for these ubiquitous acronyms might seem questionable from a branding perspective, for a couple reasons. First, these acronyms are so commonly used in a variety of contexts, and have such a well-known informational meaning, that it may be difficult for the marks to become strongly recognized by consumers as distinctive source indicators, pointing to P&G and their cleaning products. Second, it is difficult to discern any logical or beneficial association between the well-known meaning of the acronyms and cleaning products. In particular, two of the acronyms have a relatively negative or vulgar meaning (WTF and FML), so it is questionable why the company would want such meanings associated with their products. Perhaps some tenuous play on the acronyms being “dirty” words that would be cleaned up by P&G’s products? Then again, I’m more a legal than marketing type, so perhaps there is a more creative strategy that I’m not thinking of — and again, it’s hard to guess how the marks will be used at the intent-to-use stage.

What do you think about P&G’s decisions to file these trademark applications for their cleaning products, from either a trademark or branding perspective?

Trademark enforcement, particularly in an age of social media and internet shaming, is tricky business.  Some brands (I’m looking at you, Louis Vuitton) seem to have enough market share to ignore the social backlash from their heavy-handed demand letters.  But companies that lack that kind of brand power could benefit from a bit more finesse in their enforcement efforts.

Aloha Poke Co. is a Chicago-based poke restaurant.  Poke—a traditional Hawaiian dish of raw fish—has spread through the mainland in the form of fast-casual rice bowls topped with colorful veggies and sauces.  Aloha Poke opened its first store in 2016.  The company now boasts 15 locations across the U.S., including one right here in Minneapolis.  Aloha Poke holds two trademark registrations, one of which is a word mark for ALOHA POKE.  Despite the questionable trademark use of a word as ubiquitous as “Aloha,” the Trademark Office registered the mark without a single Office Action.  The Trademark Office only required Aloha Poke to disclaim rights to the word “poke.”

Recently, Aloha Poke sent cease and desist letters to various poke shops across the country having “Aloha” in their names.  “Aloha Poke would prefer to settle this matter amicably and without court intervention,” the letter read.  “We therefore request that you immediately stop all use of ‘Aloha’ and ‘Aloha Poke.’”  That doesn’t sound particularly amicable.

At least some of the restaurants receiving the letter were native Hawaiian-owned.  Tasha Kahele is a native Hawaiian and the owner of what was formerly the Aloha Poke Stop in Anchorage, Alaska.  After receiving Aloha’s letter, she changed her shop’s name to Lei’s Poke Stop.  Aloha Poke’s demands that native Hawaiian people stop using two Hawaiian terms is not sitting well with many.  Many have called Aloha Poke’s efforts a clear case of cultural appropriation.  An online petition demanding that Aloha Poke stop using “Aloha” and “poke” has garnered over 150,000 signatures.  Last week, hundreds of people gathered in protest outside the company’s Chicago headquarters.

In a statement on its Facebook page, Aloha Poke explained its reasons for sending the letters, indicated its respect for the Hawaiian culture, and apologized for “the confusion that this has caused.”

A company is wise to monitor and enforce its trademark rights.  And indeed, Aloha Poke’s potential claims against poke restaurants with similar names do not appear legally frivolous on their face.  But in terms of public image and even cultural awareness, Aloha Poke could have gone about its enforcement in a different way.

– Mark Prus, Principal, NameFlash

A portmanteau is a linguistic blend of words in which parts of multiple words are combined into a new word. Common language examples include smog, which is a combination of the words smoke and fog, and motel which combines motor and hotel.

Some big companies used the portmanteau technique to develop their names. Microsoft is a portmanteau of microcomputer and software. Groupon combines group and coupon.

However, sometimes companies refuse to admit that their portmanteau name doesn’t work.

Consider this manufacturer of pool maintenance products.

Yes, I get that they slammed “pool” and “life” together to get their name, but no matter how many times you look at this name it is hard to not see “Poo Life” isn’t it? And who wants to live a “poo life” anyway?

Here is another one. Yes, I see what they did here by combining “smart” and “tours.” But step away from the page for a second and look at it…what the heck is a “smar Tour” (or did you mean “smarT ours)?

Portmanteau names can be very good when the combination makes sense, but you have to have some common sense (as in most things in life). Combining words together to make a brand name can work or can look very stupid. Don’t be stupid!

I’ve been thinking about the nature of language lately, ever since I listened to a podcast about various philosophers who devoted their study to language. For example, Ludwig Wittgenstein, one of the most influential philosophers of the twentieth century, is famous for his work on the logic of language. A fundamental premise to his philosophy is that “the limits of my language mean the limits of my world.” In other words, language, although purposed on painting a picture of reality, is fundamentally limited in its ability to describe and do so fully and accurately. For Wittgenstein, this primarily meant that language cannot help us answer pressing metaphysical questions, but the realization has practical importance in branding.

Consider Wittgenstein’s insight in tandem with the desire to promote recall and recognition in a name without causing customers to confuse the name with another source, and you are presented with the challenge underlying all word-based marks: to turn a generally-known and familiar word (or prefix or suffix or otherwise) into a distinctive identifier so that it means something different or more than its generic definition. No small task, especially given language’s inherent descriptive limitations, and this is evidenced by the finite universe of words and combinations to choose from. There is bound to be some overlap in naming. Hence, we regularly witness “trademark twins”–the same or similar words used as marks for different sources of goods and services.

One example of trademark twinning has garnered attention in the press recently, arising from a trademark infringement suit between the Billy Goat Tavern and the Billy Goat Chip Company. The Billy Goat Tavern is a fast-food restaurant in Chicago which gained notoriety when its founder brought his goat to a Cubs game, but was asked to leave (with his goat), casting the “Billy Goat’s Gruff” curse on the Chicago Cubs. Saturday Night Live also parodied the experience of eating there–accurately, I can attest.


Credit: Fox 32

The Billy Goat Chip Company, out of St. Louis, has no affiliation with the Tavern, but the Tavern took issue with the Chip Company’s similar name after the Chip Company’s crisps started showing up in Chicago. Recently, a federal judge rejected the Chip Company’s defense that the Tavern delayed too long in suing the Chip Company, after having notice of the similar name for several years. It is worth noting that although the companies’ names begin with the same two words, their logos set them apart:

But the similarity of the names in the context of food may be more likely to cause confusion than if the names were used in completely different industries. On a continuum of “identical” to “fraternal” (non-identical) twins, it’s hard to pinpoint where the marks fall–and, thus, whether trademark law would require a bit more distinguishing. There is a possibility that consumers would think of the chips, for example, as having some affiliation with the Billy Goat Tavern as a source. This is even more likely when one realizes that the Billy Goat Tavern has never sold fries, only chips with its signature “cheezborger.” Coincidence? I’ve written about stranger coincidences before. Even then, though, how many consumers are that knowledgeable about the Billy Goat Tavern to make the connection? I’m thinking these twins are fraternal.

Numerous other examples of trademark twins abound: Domino’s Pizza and Domino Sugar, Dove Soap and Dove Chocolate, Pom Wonderful and Wonderful Pistachios–just to name a few! Speaking of three, how about some trademark triplets: Apple (iPhone), Apple Records, and Apple Paints. Or quadruplets: Delta Airlines, Delta Dental, Delta Faucet, and Delta Power. These twins, triplets, and quadruplets all borrow similar common words as names, but use them in different industries–making it unlikely that consumers will confuse the companies as one source. Their use in dissimilar markets and in connection with unique logos mitigates the legal danger presented by the intersection of the limits of language, fleetingness of human memory, and protections afforded by trademark law. But industry and logo are just two ways in which their genes differ.

Can you think of additional trademark twins or otherwise? How are they fraternal or identical? What do you think is most important when balancing simplicity, familiarity, notoriety, and legality?

Two months ago, our attention seized on a nutty and woefully deficient USPTO examination of a trademark application to register — Mr. Wonderful — for roasted nuts, and nut-based snack foods, among other food products, given the prior WONDERFUL trademark rights owned by these folks:

Just like clockwork, events now appear to be playing out as expected, so keep your eyes peeled and your watches synchronized. Last Friday, The Wonderful Company LLC, filed an extension of time to oppose registration, so the new deadline for opposition is September 8, 2018.

We’ll likely soon see whether a Letter of Protest was filed behind the scenes, giving the USPTO a chance to correct this mistake and issue a likelihood of confusion refusal —  as it’s hard to imagine the Examining Attorney’s failure to issue a refusal won’t be considered clear error, so stay tuned.

Wonderful likely has made contact with Mr. Wonderful by now — my question would be, how hard will Mr. Wonderful play to salvage the other food items currently in the identification of goods?

What do you think, are these goods sufficiently related to roasted nuts to become toast, as well?

Jellies and jams; Banana chips; Dried fruit-based snacks; Fruit preserved in alcohol; Nut butters; Olive oil for food; Potato chips; and Yogurts.