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Here’s a question for our design-minded readers: If survey evidence told you that consumers recalled only certain elements of a beloved logo, would you remove the rest, and reduce it to only the most commonly remembered features?


Most likely, your answer doesn’t involve analysis under trademark law.


So, maybe, this post will influence how you think about the answer to that question.


One of the often-ignored principles of trademark law is that the determination of similarity between marks is not made through “side-by-side” comparison.


Rather, marks are evaluated based on all relevant facts pertaining to appearance, sound, and connotation, with the emphasis on the “recollection of the average purchaser, who normally retains a general, rather than specific, impression of trademarks.”


The predecessor court to the Court of Appeals for the Federal Circuit stated it more bluntly in 1969: Consumers “may have but dim recollections.”


Despite this long-standing expression of the law, trademark attorneys for both plaintiffs and defendants still can’t help themselves from making “side-by-side” comparisons, routinely leading with them in pleadings or letters, often setting the marks side-by-side in a table, or one-after-the-other in paragraphs. Here’s an example snipped straight from the pleadings in a previously blogged about case involving a beaver in a ball cap and an alligator in a cowboy hat:



Of course, it’s fair that a plaintiff or defendant would like to point out exactly, side-by-side, the common elements or differences in the marks.


I wondered, how often courts strictly enforce a side-by-side comparison from making its way to a jury, since once the side-by-side comparison is shown, it is sort of hard to unsee, and couldn’t that potentially mislead a jury by giving them a false experience with the marks?


In the Buc-ee’s case, it appears no attempt was made to shield the jury from such exposure, as a slide deck was purportedly used as a demonstrative to the jury during opening and closing statements, it is literally only side-by-side comparisons:



In the wild, with few exceptions, this is not how consumers interact with brands.  Instead, in between the interactions with the alleged rightful brand owner in the first instance and the alleged brand infringer some time after, there is the memory of the consumer, dim as it may be.


Thus, there is infringement when a plaintiff can show that upon seeing the defendant’s junior mark, factoring in the consumer’s fuzzy recollection of the plaintiff’s senior mark, the similarities of the defendant’s mark are such that consumers are likely to be confused, mistakenly believing they are encountering products or services of the plaintiff.


In such situations, the law views the defendant’s enjoyment of the goodwill earned by the plaintiff under its mark as a harm to the plaintiff.


So it seems that if what consumers recollect ultimately drives the infringement analysis, it is important then to understand: Just what do consumers remember about trademarks?


Recently, Van Monster, “the UK’s largest choice of quality used vans” published the results of Motors by Memory, an informal, non-academic, study of British consumers’ recollection of car logos.  The study asked 100 British consumers to draw 10 car logos, purely from memory.


The results are presented along an approximate spectrum of accuracy, and as you might expect range from impressively accurate to incredibly terrible.


Take a look at the results for BMW, below:



As analyzed by Van Monster, in the BMW example, 92% were able to recall the colors white and blue, and 59% drew a quadrant.


However, despite more than 90% drawing a circle of some kind, by my own calculation, only about 20% specifically recalled the black outer circle.


Recently, BMW updated its logo to remove the black outer circle.  Although BMW’s decision was met with mixed reviews, perhaps similar survey results contributed to the controversial redesign?


Below is a side-by-side comparison, old versus new:



Take a look back at consumer recollections of the old BMW logo. Doesn’t it seem that the new logo falls right in the middle of the chart, perhaps representing some sort of mean or median of “consumer recollection?”


Whether or not BWM actually took this approach, I have no idea – but, designers, what would you say about taking this approach to design?


And trademark attorneys, would the new BMW logo, backed potentially by survey evidence about how strongly the elements are recalled, make it that much easier to support enforcement against similar marks using those same elements, without resorting to any side-by-side comparison?


And finally, just curious, if a beloved logo is changed, do those with tattoos care?

Almost forty years ago, that question prompted me to rethink my engineering path after three semesters, knowing an electronic circuits lab awaited my fourth.

Over winter break, thumbing through the University of Iowa catalog in my dad’s office, looking for an alternative, I happily discovered the pharmacy curriculum.

Had I known that law school would follow pharmacy school, perhaps a few years could have been saved in the serial approach to my 80s educational decade.

And, if a deep focus on trademark law had been in the crystal ball at the outset, shaving a full three years would have been possible, but believe me, no regrets.

This past weekend, I had the opportunity to reflect on the difference between series and parallel again, following the College of Pharmacy’s virtual ELB meeting.

In addition to the exciting things going on at UI Pharmaceuticals, other news reports tout the benefits of parallel work to bring a Covid-19 vaccine to market.

When time is of the essence, running parallel tracks to solve a problem is key. While a parallel approach necessarily produces some waste, the benefits of achieving the goal sooner are considered to outweigh any increased cost.

But when subsequent decisions can only be made best by knowing the outcomes of earlier decisions, actions, or events, calculated serial thinking is essential. Clearly, serial thinking is driving the decision whether and when to reopen society, as that decision only can be made in the context of knowing about the success or failure of last week’s efforts at flattening the curve.

Since these decisions are being made State by State and City by City, in some sense serial thinking is at work in parallel across various portions of the country.

As it turns out in trademark law, although hardly life and death problems or goals, or resembling anything close in terms of financial investment, the same principles that drive whether to use parallel thinking or serial thinking apply.

By way of example, before adoption and use, most often potential trademarks are searched, cleared and considered in parallel, not serially.

Given the variety of business factors that go into the decision of which mark to adopt and use, it is typical to determine the availability of several options at once.

In fact, when the stakes are high, the timeline is tight, and focus group testing is used to compare options, even intent-to-use applications may be filed in parallel.

Since the required bona-fide intent-to-use a trademark can be contingent on future and unknown events at the time of filing, parallel pursuits are plausible.

Parallel thinking is also used when considering where protection will be sought outside the United States, since international trademark law treaties allow for filings to be made in parallel within six months of the U.S. filing, and still benefit from the original U.S. priority date.

Other times, serial thinking is better suited to the trademark problem at hand.

For example, when conditions warrant, it may be wisest to file just a single application narrowly, dipping a toe in so to speak, only to dive in later once the waters of examination and third-party interest have been tested.

Another example where thinking long-term and serially is key is in protecting descriptive and non-traditional marks, where registration on the Supplemental Register is possible first, to be followed by registration on the Principal Register, often five years or more later, after building a record of acquired distinctiveness.

Further along the trademark life-cycle, brand owners may be happy to learn that delays in pursuing infringement actions can be explained when serially pursued.

In other words, courts have excused brand owners from suing multiple infringers at the same time; in this context, it can be reasonable to pursue one at a time.

Brand owners, when preparing to launch a new brand, do you prefer a series or parallel approach to trademark clearance?

Trademark types, how many parallel intent-to-use applications have you filed at once for the same planned product/service?

Baseball fans, what will the World Series look like in 2020?

Finally, how will “parallel play” be impacted by social distancing, if at all?

Photo Credit: G. Baird

The Gong Show was a quirky and absurdly amusing talent show from the 70s.

It was created, produced, and hosted for a number of years by Chuck Barris.

The gong was beaten by one or more judges when they’d had enough of an act.

In reviewing some video of early episodes, shockingly there was no gonging of this mouth percussion, despite the obvious lack of any hand-to-face hygiene.

Until two months ago, Wuhan brand gongs and cymbals were unknown to me.

They reportedly had been used by the late, great Neil Peartdrummer of Rush.

My cymbal arrived a few weeks ago — after being quarantined in our garage, it was wiped down before entering the house for my daughter’s photo shoot.

It will serve as wall-art and a powerful cymbal to never forget this time of pain.

The much larger Wuhan wind gong is still in the garage, but you’ll hear it sound, believe me, when the present crisis is safely in our collective rear-view mirror.

Until then, not surprisingly, there’s a trademark story behind the Wuhan name.

Apparently the Wuhan name is a portmanteau merging portions of the names of three other Chinese cities on the Yangtze river: Wuchang, Hankou, and Hanyang.

The city of Wuhan has the ninth largest population in China, it is considered the commercial and political center of Central China, and is a manufacturing hub too.

In terms of trademark meaning, under the test applied by USPTO trademark examining attorneys, Wuhan could be considered primarily geographically descriptive, requiring proof of acquired distinctiveness for registration.

At the USPTO, there is only one live application and three Wuhan registrations, none of which required proof of acquired distinctiveness before issuance.

Perhaps, despite its size and importance as a Chinese city, Wuhan was indeed obscure to the average U.S. consumer back in 1997, yet is unlikely to be so now.

The three Wuhan word and stylized trademark registrations are owned by Cardinal Percussion, who reportedly purchased all trademark rights in 2018:

While it appears the cymbals/gongs always have been hand-made in Wuhan, China, the U.S. trademark rights have been held by U.S. companies, with confusion about “fake Wuhans,” gongs coming from other factories in Wuhan, and even litigation in 2016 over Wuhan references to sell competing products.

The registrations are all more than five years old and now incontestable, meaning they cannot be challenged as merely descriptive, but what about genericness?

Incontestable registrations aren’t safe from genericness challenges, so it will be interesting to listen for how this claimed mark might be enforced in the future.

Even if a successful genericness challenge could show the existence of Wuhan as a category of cymbals/gongs, the brand owner likely still could assert logo rights.

Never forget, Miller owns rights in the stylization, for the generic category term:

Given recent events in Wuhan, cymbals and gongs aren’t the only goods that U.S. companies have considered associating with the Wuhan designation.

More than two months ago, in asking whether it is Curtains for Corona, we drew attention to some surprising “Wuhan” intent-to-use trademark applications:

“What puzzles me are the intent-to-use trademark filings last week for Wuhan Vax, Wuhan Corona Vax, Wuhan Mvax, and Wuhan Corona Mvax, all for vaccines.

If a vaccine became available to treat the deadly virus soon, wouldn’t those names be appropriate descriptive or generic vaccine names (not brand or trade names)?

Or, given the USPTO’s heightened focus on incapable informational matter, let’s stay tuned to see how these claimed virus marks are treated during examination.”

We’ll never know for sure how the USPTO would have treated the applications, as the Applicant sounded the gong itself last month, expressly abandoning them all.

We also may never learn if the abandonment was initiated for trademark reasons, or to avoid the debate as to whether using “Wuhan” with the virus stokes racism.

With Section 2(a) of the Lanham Act stripped of its previous protection against scandalous and disparaging marks, even if racist, 2(a) could provide no help now.

For the final act of this (Wuhan) Gong Show, introducing Wuhan Water. Love the alliterative quality, but given recent events, it’s hard to take the filing seriously.

As Barris promised: “We’ll be back, with mor-re ssstuff – right after this message!”

Upon seeing/hearing Orchid, how many will commit Orchard to memory instead?

Based on my experience, in residing on Orchid Lane more than a quarter-century, I’d venture to say, far more than you might believe — a real appreciable number.

Just this past weekend, during the age of “social distancing” guidance, someone having our address to make a delivery was confused, unable to find Orchard Lane.

I’ve noticed this confusion many, many times over the last twenty-five plus years.

More often than not, when a business seeks to verify our loyalty program status, we’ll give our name and phone number, then they’ll try to confirm, “on Orchard?”

I’ve corrected these errors too long, now I simply agree, knowing what is meant.

To make sure it isn’t just me, I asked my daughter whether she’s ever experienced others confusing Orchid with Orchard, she responded, “all the time,” so there it is.

Polling other family members yielded the identical response: “Yes, all the time!”

Funny thing is, we’ve never compared notes on the subject, until I began writing.

So, what does this discovery mean for trademarks and likelihood of confusion?

Trademark likelihood of confusion typically determines a brand owner’s scope of rights, and the similarity of marks factor considers sight, sound, and meaning.

Orchid and Orchard clearly have different meanings, and they sound different, but there must be something about this pair of words that leads to confusion.

Perhaps the principle that people tend to remember the beginning and the end of things is at work — leaving people to forget or pass over what’s in between?

If so, how is it that Orchid for watches and Orchard for chronometric instruments peacefully coexist on the Principal Register, with no refusal issuing at the USPTO?

I’m not too surprised by the lack of a USPTO refusal, despite this search guidance:

“Don’t forget to use truncation devices (*) or wildcards (?) to look for marks with word stems similar to yours.”

“Consider searching with alternative spellings and homonyms to your mark. Use words that have the same or similar meanings to your mark. Also try words that have similar sounds or appearances or even phonetic equivalents.”

Had the Orchard search disclosed Orchid (it appears not), perhaps the different meanings of the words still would have led to passing over the prior Orchid mark.

When a brand owner may assume a different word mark falls outside its scope of rights, could it inform a strategy by consulting lists of commonly confused words?

I’d like to know whether uniquely confused word pairs like this are overlooked or if they’re routinely swept within normal trademark search protocols, any thoughts?

More simply, based on my observations, if someone were inclined to capitalize on this common word confusion, why not create Orchard to compete with Orchid?

The situations aren’t identical, but could a brand owner find relief in countering a different mark/meaning defense, by relying on typosquatting trademark cases?

Both possible harms to the brand owner might be viewed as seizing the benefit of another’s brand equity by setting traps sprung by very predictable mistakes.

This also may be where the bad faith intent factor plays a role in analyzing all of the likelihood of confusion factors, including the similarity of the marks factor.

Since my frame of reference is that Orchid can make people think Orchard, I’m wondering, is the opposite true too: Does Orchard make people think Orchid?

Or, does the likelihood of confusion door only swing one direction with this pair?

How many other word pairs exist that are demonstrably and readily confused?

Finally, if you managed the Angry Orchard cider brand, would you be bothered by Angry Orchid beer? If so, no worries, that one is discontinued, at least it appears.

Too many questions to ponder, I’ll stop now, as we all continue “social distancing.”

— Mark Prus, Principal Nameflash

About two and a half years ago, Brandless was launched. The company sold “unbranded” household, personal care, baby, and pet products on the cheap and was viewed as a breakthrough in the “anti-branding” movement.

Today, Brandless is dead.

LOS ANGELES, CA – APRIL 30: A general view of atmosphere at the #BrandlessLife Pop-Up With Purpose on April 30, 2018 in Los Angeles, CA. (Photo John Sciulli/Getty Images for Brandless)

Brandless failed to demonstrate proper value to consumers of their products. This is what a good brand can help do, but Brandless failed to establish itself as a quality brand that was worth trusting.

Many people underestimate the placebo effect that a good brand name can provide. Consider the power of a brand like Nike or 3M in this research study.

In this study participants completed a putting task, and half of the respondents were told they were using a Nike putter and the other half did not have a brand specified.  Although all participants used the same golf putter, those who thought they used a Nike putter on average needed significantly fewer putts to sink the golf ball.

Researchers conducted a similar comparison with 3M ear plugs and invited participants to take a math test while wearing a pair of foam ear plugs to minimize distractions and improve concentration. Each participant used the same ear plugs, except that half of participants were told that the ear plugs were made by 3M and the other half were not told a brand.  Those who thought that the ear plugs were made by 3M got significantly more answers right.

Numerous other scientific studies demonstrate what smart marketers know…brands matter!

Shelter in place has delivered attention to meal delivery, prepared food delivery, contactless delivery, not to mention DIY food products, so this Kraft television commercial led me to explore if there may be a trademark story in this brand:

Upon first seeing the ad for Kraft’s Just Crack an EGG breakfast bowls, I was left wondering if Kraft had taken a page from Betty Crocker’s psychology cookbook:

“Against all marketing conventional wisdom, General Mills revised the product instead, making it less convenient. The housewife was charged with adding water and a real egg to the ingredients, creating the perception that the powdered egg had been subtracted. General Mills relaunched the new product with the slogan ‘Add an Egg.’ Sales of Betty Crocker instant cake mix soared.”

“Betty Crocker’s egg teaches us a powerful lesson about consumer psychology. Many other companies sell goods and services that come prepackaged. They too might be able to innovate with the ‘subtraction technique’ by taking out a key component and adding back a little activity for the consumer.”

Leaving the answer of my wondering to any food scientists in the crowd, together Kraft and Betty Crocker inspire a trademark story to devour, no matter the answer.

This trademark story re-serves a prior dish illustrating the key difference between immediately ownable, inherently distinctive marks, and merely descriptive ones:

“[A] place on the spectrum of distinctiveness where both trademark and marketing types can have their cake and eat it too, is the delicious category of suggestive trademarks.”

“[S]uggestive marks are immediately protectable and generally enjoy the additional benefit of their inherent strength. On the marketing side . . . suggestive marks communicate something about the goods (but not as directly or immediately as descriptive marks do), so the marketer need not start from scratch in educating the consumer, as one must do with coined marks.”

Kraft’s Just Crack an EGG mark appears to be viewed by the USPTO as suggestive, recognizing that evidence of use will cause further examination once submitted.

In addition, no trademark applications were filed by Kraft for the other descriptive or informational phrases appearing on the package, like: ADD A FRESH EGG!

There is also no record at the USPTO of General Mills ever filing for registration of the historically referenced slogan “Add an Egg,” for cake mixes or anything else.

When others have filed for phrases like Just Add Eggs for meal kits, they have been considered merely descriptive and relegated to the Supplemental Register.

And, when another sought registration of a distinctive logo containing the phrase Just Add Water for dry veggie burger mixes, it was disclaimed as not distinctive.

On the other hand, sometimes the “just add whatever” phrase can be considered sufficiently imaginative and suggestive when the claimed goods might warrant it:

It may be the Just Add Coffee and Just Add Yogurt examples are less suggestive than the others, but still so, because of the inherent “tail wagging the dog” idea?

Actually this all really boils down to the critical difference between inclusion of the suggestive word “crack” instead of the descriptive term “add” — for egg meals.

So, if Just Crack an EGG is suggestive for meal kits, this creates a strong incentive for the brand to keep the mark on the inherently distinctive side of the line:

“[T]aking a suggestive name, mark, or tag-line, and using it descriptively in a sentence on labels, packaging, ad copy, or the internet, unfortunately can move it to the left (and wrong) side of the line and render it merely descriptive.”

It seems reasonably guarded from descriptive “just crack an egg” use in ad copy:

“With Just Crack an Egg breakfast bowls, you’re less than two minutes from hot, fluffy scrambled eggs packed with all the fixings. Simply crack a fresh egg over our chopped veggies, shredded cheese, hearty meats and Ore Ida Potatoes, then stir, microwave, and enjoy. Explore all of our scrambled egg breakfast bowls and prepare for love at first bite.” (emphasis added)

Having said that, might Kraft further reduce risk by substituting the word “add” for “crack,” as it did here — returning to sender — any descriptiveness challenge?

“With Just Crack an Egg, you’re less than two minutes away from hot, fluffy breakfast scramble bowl any day of the week – just add a fresh egg! Learn more about our breakfast scramble bowls and see why breakfast love conquers all.” (emphasis added)

While we’re editing, would it further reduce cracks in the suggestive trademark shell-ter by tweaking the info-graphic to once again substitute “add” for “crack”?





Marketers, how much would you lose, if these suggested changes were made?

Hello DuetsBlog readers! As Steve recently said, we continue to be thankful that you’ve stuck with us, including during our pause and transition to our new firm. I’m so excited to be part of the amazing team of people at Greenberg Traurig, and to continue reaching new heights in our trademark practice.

Although our blogging team is still getting off the ground, it’s great to see we’re still a top-ranked blog, so thanks for continuing to read. For my first post, I’ll share a couple updates on my most recent posts since we went offline.

But before the trademark updates, I hope all of our readers are staying healthy and safe. The growing impact of the COVID-19 pandemic affects all of us, including the legal field, but we will get through it together. So far, many courts have ordered temporary stays and other protective measures to deal with this health crisis, such as postponing in-person hearings.

I’ve noticed that, even in contentious litigation, people have generally been quite cooperative with adjusting case schedules and modifying procedures in response to the pandemic to support public health and safety.

One notable exception is this recent story of a litigant who lost perspective of what was actually an “emergency” in a counterfeiting case involving unicorn drawings. The plaintiff filed an emergency motion for a temporary restraining order, followed by another emergency motion to reconsider the scheduling of the hearing on that TRO motion, which the court had set back a few weeks for safety reasons due to the COVID-19 pandemic.

The court unsurprisingly denied the motions, noting that the plaintiff should “keep in perspective the costs and benefits of forcing everyone to drop what they’re doing to stop the sale of knock-off unicorn products, in the midst of a pandemic.” The court concluded that the plaintiff “should stop,” as “the world is facing a real emergency,” but “plaintiff is not.” (Thanks Kyle Kroll for sharing.) That is a good reminder to maintain a clear perspective on the important things in life, especially now. For more on adjusting our perspective during these difficult times, see this very helpful blog post, which was written recently by a doctor at Mayo. (Thanks Steve for sharing.)

In other news, here the trademark updates from a couple of my most recent posts before the break.

MoMA v. MoMaCha: Several of my previous posts followed the trademark infringement lawsuit brought by the Museum of Modern Art (“MoMA”) against the cafe and art gallery, MoMaCha, in New York City. Since my last post, which covered the court granting MoMA’s motion for a preliminary injunction, the parties settled and stipulated to an order granting a permanent injunction in November 2018, which restrained the defendant from further use of the name MoMaCha. Soon after, MoMaCha rebranded to the slightly different name “MaMaCha.” However, their cafe business, which sold CBD-infused hemp drinks, did not last long under the new name. The cafe was permanently closed in July 2019 amid a CBD crackdown by the New York City Department of Health.

Wine Spectator v. Weed Spectator: My last post discussed the trademark infringement complaint filed by M. Shanken Communications, publisher of Wine Spectator (a popular magazine, website and mobile app that offers wine ratings on a 100-point scale) against California-based Modern Wellness, Inc., who used the name “Weed Spectator” for ratings of cannabis. The complaint alleged claims of trademark infringement, unfair competition, and dilution. The infringement claim raised interesting questions about the relatedness between wine and cannabis. Unfortunately for us, those questions remain unanswered, as the parties reached a confidential settlement agreement. We could speculate, however, that the settlement agreement favored Wine Spectator, and required Modern Wellness to cease using “Weed Spectator,” because their website ( and Facebook page under that name are no longer accessible.

Until next time, thanks again for reading, and please stay safe out there.

We’ve covered many trademark and brand management themes over the last eleven years, this falls in the category: The Right-Sizing of Trademark Protection?

As reports emerge about the recent Coronavirus fear driving people to clear store shelves to stock their home pantries and freezers, a Hot Pockets TV ad hit me.

Clearly consumer packaged goods and non-perishable or frozen food products, like Hot Pockets, are likely to enjoy an uptick in demand, at least in the short term.

The Hot Pockets package provides yet another example of the common practice of adding the word “brand” on packaging to help address any fear of genericide.

Even the logo used on packaging during the early 2000s, according to Wikipedia, reminded of the “brand,” generically calling the products “stuffed sandwiches”:

Loyal DuetsBlog followers appreciate our theme that calling something a brand doesn’t necessarily make it so, or keep it so, but it can help to influence meaning.

Yet, noticing that theme in this current example isn’t the point today, except to say it led to today’s unwrapping of existing Hot Pockets trademark protection.

We are fully mindful, of course, that there is no one-size-fits-all approach to trademark protection, but what is true for all, is the need to craft a strategy.

For some brands that might mean a robust portfolio of registered marks, with robust trademark watching/policing, for others it might mean quite a bit less.

There is more and more discussion of “right-sizing” trademark portfolios to help control cost, right-sizing will mean different things, depending on the strategy.

So, as we unwrap what is left of the trademark portfolio for the Hot Pockets brand, we fully appreciate we can’t know the strategy, but assume there to be one.

Hot Pockets has enjoyed great commercial success over the years, leading Nestle to purchase Chef America, then brand owner, for $2.6 Billion in cash, back in 2002.

Nestle still describes the importance of the brand this way:

“What started as a sandwich 30 years ago has evolved into an iconic American brand that’s become a staple in American pop culture!”

While it has been the butt-of-jokes in some comedic circles, it also has enjoyed enormous favorable film mentions, both typical signs of a pretty famous brand.

For example, in Austin Powers: The Spy Who Shagged Me, released in 1999 (video here), Dr. Evil, lovingly inquires: “Mini Me, You Hungry? Not even a Hot Pocket?

Given the enormous value of the brand, I admit surprise to find only four live U.S. trademark registrations for Hot Pocket(s); and just two being owned by Nestle:

  • HOT-POCKETS for “pre-cooked, ready-to eat, frozen bread having a fruit, meat, cheese and/or vegetable filling;” (owned by Nestle)
  • HOT POCKETS for a variety of merchandise items, now spanning four classes of goods (originally seven classes of goods); (record owner is Nestle)
  • HOT POCKETS for “Warmer pads for medical purposes;” (record owner is an individual in California); and
  • HOT POCKET HAND WARMERS for “Non-electric pocket warmers, namely, chemically-activated heating packets for warming hands.” (record owner is a company in Tempe, Arizona).

Another question worth asking may be why Nestle’s multi-class HOT POCKETS registration never has been asserted in a TTAB case, despite fifteen such Nestle oppositions over the past 20 years. It may be that Nestle is strategically trying to streamline opposition proceedings and narrow the scope of discovery; most of the oppositions involve the proposed registration of “POCKET(S)” for food items. Or, for skeptics, it might be avoidance of a deadwood challenge.

If deadwood – we won’t likely know until the 2022 renewal is due – but, after cancellation the USPTO won’t be able to conduct non-food product enforcement for HOT POCKETS (without Nestle lifting a finger), as it did in 2011, refusing registration of HotPocket for panties, based on Nestle’s multi-class registration.

Another question perhaps worth pondering is what the strategy might have been to allow a 1984 registration to expire in 2004, instead of attempting amendment to an updated stylization, contending the commercial impression is the same:

We admittedly don’t know why this early registration was allowed to expire without the registrant attempting amendment, but let’s not assume it was impossible, as it looks more than possible, in fact, it looks probable to me.

A significant benefit of seeking amendment to keep an old stylized registration is hedging against the risk of a more rigorous USPTO examination of a new filing.

At one time the Hot Pockets brand was the center of an entire family of related Pocket-formative brands: Lean Pockets, Croissant Pockets, Deli Pockets, Lunch Pockets, Pocket Meals, Pocket Stix, Healthy Pockets, among others (not without controversy) — yet now it appears to be a pair: Hot Pockets and Lean Pockets.

Over the years, nearly a baker’s dozen of trademark registrations for Hot Pockets and marks containing Hot Pockets — all for the sandwich brand — have expired.

The description of goods chosen is a strategic decision too, and 20/20 hindsight is unfair, especially when all facts existing at the time are not available to us, yet many, including myself, advocate for the broadest description of goods possible. So why not register HOT POCKETS for “sandwiches” — without building into the description of goods details of their physical state, composition, or ingredients?

In fact, the USPTO has allowed applicants to broadly claim “sandwiches” without further description since August 2002; the Nestle description registered for the food mark is not only confusing, but more than a mouthful: “Pre-cooked, ready-to eat, frozen bread having a fruit, meat, cheese and/or vegetable filling.”

Let’s be clear, I’m not saying Nestle’s Hot Pockets brand is an empty shell devoid of any valuable legal trademark ingredients, or that the registration pantry is bare, but the quantity of tools for protecting it have declined over the years, begging the question of whether this has been a conscious decision, and if so, why?

There’s been great discussion of “trademark singularity” over at our friend Ron Coleman’s Likelihood of Confusion blog, a topic relevant to this discussion too.

While it is pretty clear now that Hot Pockets (just the words), is not singular in meaning, it would appear difficult to deny that the logo rendition of those words creates a singular trademark, with a meaning pointing to only one source:So, why has that singular depiction of the Hot Pockets brand not been federally-registered? Given the long delay in trying, it might relate to this Office Action, which initially refused the mark as merely descriptive, and for some reason, no attempt was made to overcome it, so the application was abandoned.

Perhaps this illustrates one of the challenges in seeking new registrations when the USPTO can view the original wording/content very differently decades later.

In the end, it’s about crafting an appropriate strategy to the brand in question, and while “right-sizing” should always be a goal, it is a conclusion, not a strategy.

Brand owners and managers, when is the last time you directed your trademark team to audit the appropriate level of your protection for an important brand?

Trademark types, when did you last recommend doing one, and how did it go?

A week ago, over at The Fashion Law, an Independent Source for Law, Business and Culture, an enjoyable trip down memory lane was published about the history of trademark protection regarding Louboutin’s red-colored sole mark.

What I hadn’t seen before now is Christian Louboutin’s quote “then it popped”:

“The concept shoe, with its stacked heel and floral applique, was missing something. As the story goes, the designer, Mr. Christian Louboutin, reached for a bottle of red nail polish — ‘Thank God, there was this girl painting her nails at the time,’ he told the New Yorker — and with that, the shoe’s sole went from a dull black to a striking red. ‘Then it popped,’ and the foundation of a footwear revolution was born.”

As you may recall, we’ve written quite a bit about this very topic over the years:

Louboutin Red: Blending Into the Background

Louboutin Red-Sole & Surrounding Contrast: An Implied Trademark Limitation

Louboutin: Still Waiting on the Second Circuit Court of Appeals

Louboutin Wins Second Circuit Appeal, Sort Of . . . .

Louboutin & Lessons Learned

Let’s not forget this word jumble gem, visually illustrating the key point of how another’s mark can be invisible depending on the context and surroundings:

Then, voila, when the circumstances, surroundings, and emphasis are just right, the allegedly infringing mark may “pop” and suddenly come into visibility:

We found the above illustration helpful to explain why Louboutin’s red sole mark could not reach or prevent the sale of Yves Saint Laurent’s monochrome red shoe:

Louboutin Red-Sole Shoes
Louboutin Red-Sole Shoes
Yves Saint Laurent Monochrome Red Shoes

As I wrote, eight years ago:

“In fact, I’m left wondering whether an average consumer would even discern Louboutin’s red sole mark in Yves Saint Laurent’s monochrome red high heel shoes, anymore than they would notice the LOUBOUTIN mark in the colorless letter grid at the top of this post, or whether they would more likely and simply see a harmless sea of letters and a harmless sea of red throughout the entire shoe.”

So, the “pop” is not only important in the context of whether another’s mark is actually being used and is subject to a charge of infringement, but the “pop” is also important in determining whether the non-traditional single-color mark exists in the first place, and if so, what the appropriate limitations are on it:

“Equally important to explaining why there is no valid trademark claim, is what I believe to be an inherent or implied limitation in Louboutin’s red-sole single-color trademark registration: The critical need for visual contrast between the red-sole and the surrounding portions of the shoe.”

And, that implied limitation is consistent with how Louboutin’s U.S. trademark registration was expressly modified and narrowed in scope, from broadly being described as “The mark consists of a lacquered red sole on footwear” to more narrowly, as: “The mark consists of a red lacquered outsole on footwear that contrasts with the color of the adjoining (“upper”) portion of the shoe.

Interestingly, The Fashion Law also reports that Louboutin has made progress on seeking registration of the red sole mark in China, after a decade of appeals. It doesn’t appear though that any “contrast” or “pop” is built into the application, so stay tuned, we’ll need to await seeing whether Louboutin’s claimed mark pops into registration, or whether its bubble is popped on securing ownership in China.

Last, as to another kind of “pop,” as you know, I grew up in Iowa, so “pop” meant and still means any old carbonated soft drink, so what do you call that drink?