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?

Since the origin of trademark use guidelines, there has been immutable, black and white legal direction against using brand names (and the trademarks that protect them), as nouns or verbs. If you’ve seen more flexible rules, please share.

Yet, marketers have recognized the power verbs have over nouns and adjectives.

Highlighting the legal need for flexibility and creativity in support of discerning marketers, and advocating for the analysis of realistic risks while trying to manage the risk of genericide, I’ve written about brandverbing for more than a decade.

Simple do’s and don’ts may have obtained unchallenged obedience in the past, but as I’ve documented here with many real brandverbing examples, the trend to at least flirt with brandverbing doesn’t appear on the decline, enter Rolo candy:

Rolo’s television commercial called, “Rolling Out of Control,” is described like this:

“A man out hiking gets suddenly struck by a frisbee. The shock sends him rolling out of control down a steep long slope. All the rolling reminds him of the Rolos he has tucked in his shirt pocket. The rich chocolate candy and creamy caramel are enough for him to enjoy his roll down the hill.”

It features a tagline (“That’s How You Rolo“) that is presently unregistered (contrary to this National Law Review direction), but what are the odds the ad begins with a flying Frisbee, a toy trademark actually on the Genericide Watch.

Ironically, another brandverb hit my screen today; I’ve decided to Aleve it for later:

So, what brands/trademarks have you spotted being used as verbs? Concerned?

“It’s curtains” clearly means “the end” or “an adverse ending to something.”

So, the more ambiguous portion of my opening question is, which Corona?

The present news cycle would have us believe there are two: a virus and a beer.

Both the beer and virus names come from the Latin translation to “crown.”

Last week there were some odd suggestions that the two have become one.

Actually, the suggestions about confusion derived from a spike in internet searches for “corona beer virus” and “beer virus,” between January 22 and 30.

A more sober analysis may reveal the searching spike was from those looking for silly memes to share, not evidencing any mistaken belief of a real connection.

Indeed, the beer brand is not concerned about confusion: “Consumers, by and large, understand there’s no linkage between the virus and our beer/business.”

Cartoonist Geoff Coates knows the difference, and offers a funny take on the topic.

But, back to the original question, let’s hope it’s curtains for the coronavirus soon, it is a serious health problem that seems to be growing in scope, not shrinking.

As to the beer brand, despite a late night comedian’s assertion that Corona beer sales actually have suffered from confusion, curtains aren’t likely for the brand.

Actually, even if there was a drop in January Corona beer sales, it might be better explained by the growing interest in drinking less during Dry January.

On January 8, 2020, Corona filed this logo — had it come two weeks later, perhaps it would have included another type of needed protection, given the virus crisis:

Truth be told, there are actually lots of Corona brands and trademarks out there.

“Corona” is presently federally-registered in the U.S. by a multitude of others for products and services as diverse as chocolates, wine, jewelry, cotton fabric, corn-grinders, meat choppers, plastic food product containers, dinnerware, toilets, toothbrushes, ointment, pruning shears, book-binding machines, accordions, electric heaters, oil stoves, personal headlamps, spectrometers, laboratory instruments, paint brushes, environmental services, gymnastic mats, computer software, animal shampoo, dog and cat food, and order fulfillment services.

Apparently there is a common marketing and business interest across many different industries to suggest a brand is royal or perhaps crown-worthy.

Maybe a silver lining in the story for Corona beer, is that the unsolicited media attention may indicate strong trademark rights in the face of this crowded field.

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.

After all, the virus is also called Wuhan Virus, as it was first found in Wuhan, China.

In the end, when it’s curtain call for the vaccine, will the Corona Curtain be raised?

A belated thanks to Candice Kim and Professor Leah Chan Grinvald for sharing their insights and perspectives in our recent webinar on trademark bullying.

One topic we discussed is Backcountry.com’s recent back-down to backlash over its trademark enforcement activities concerning the Backcountry mark.

The example is a harsh reminder to trademark counsel of the worst case scenario when a trademark enforcement campaign comes under fierce public attack.

In response to the boycott and backlash, Backcountry.com not only issued a public apology, it admitted to fumbling how it pursued trademark claims, it admitted to making a mistake and to misjudging the impact of its actions.

Backcountry.com even made a public promise to make amends with those adversely impacted by its actions, and it has taken steps to rebuild public trust.

Last but not least, especially for all the trademark types in the crowd, news reports in November were that Backcountry.com had fired its trademark counsel.

Last week Backcountry.com revoked the power of attorney for its prior trademark counsel and appointed new USPTO counsel, doing the same at the TTAB too.

Not knowing the facts of how or where things may have gone wrong with prior counsel, it will be interesting to see what enforcement will occur going forward.

Back to the webinar, we also focused attention on strategies and tactics brand owners can employ to develop intelligent trademark enforcement campaigns.

One slide that webinar attendees really liked from our backpack is this one:

It visually illustrates how a brand owner might consider analyzing watch reports.

Obviously a precursor to its development would be a trademark strength analysis.

Keep in mind, this particular graphic is only an illustration; the perfectly spaced concentric circles should not be interpreted as trademark lines, as we know trademark lines are more subjective than measurable real estate property lines.

The final graphic for a brand would reflect not only an intelligent and defensible trademark enforcement strategy, but attempts to balance any PR concerns too.

Last week I had the fortune of spending the week at the Shot Show in Las Vegas, capturing this brand collage of exhibitors for an event at a restaurant in my hotel:

Interestingly, Kryptek has a Battlefield to Backcountry registration due for USPTO maintenance in days, and surprisingly, it was never opposed by Backcountry.com.

With all binoculars on Backcountry.com’s promise that “[w]e only want what’s best for the whole community and we want every person and business in it to thrive” time will tell what tools may remain in new trademark counsel’s backpack.

One of the problems with “trademark bullying” can be a failure to comprehend the legal standard governing most trademark disputes: Likelihood of confusion.

Another is a failure to appreciate the subjective nature of whether the legal line has been crossed or whether there has been an attempted trademark overreach.

Understanding that trademark rights are dynamic (not static, meaning they can grow or shrink over time) and that this type of intellectual property is not amenable to precise demarcation like a real estate property line, is key.

Likelihood of confusion is a fact-intensive determination that seeks to weigh multiple factors beyond actual confusion or an emotionally-charged intent factor.

That said, when I’m helping a client respond to overreach, besides sticking to the facts and avoiding an emotional response, I’ve found Rorschach can help too:

The Rorschach inkblot test recognizes that different people can see different things when looking at the very same thing, sometimes wildly different things.

Likelihood of confusion is a surrogate to predict consumer perceptions, so when a demand exhibits an unhealthy preoccupation of the brand owner’s mind, say so.

One trademark demander quietly went away after receiving this partial response:

“Setting aside how a relevant customer would view the design, the design looks no more like the letter N (with an extraneous line) than it does the letter X within parallel lines, or a plus sign within parallel lines, or a stylized number 8, or a stylized lemniscate, or a tilted hour glass, or a spindle, or a bowtie, or a stylized 4b, or any number of other equally strained possibilities. With a good imagination, one can pick out a lot of things when confronted with a design element, but a Rorschach exercise isn’t the test for trademark infringement or confusing similarity.”

Join us next week for a vibrant discussion about how to avoid the “trademark bullying” label, when designing a coherent trademark enforcement strategy.

One example we’ll analyze is the Backcountry.com back-down to backlash.

Another is the example Seth Godin wrote about on DuetsBlog in April 2019.

I’m thankful for the opportunity to discuss this important trademark topic with one of my talented partners at GT, Candice Kim, and we’re also joined by the learned Leah Chan Grinvald, Professor of Law, at Suffolk University in Boston, who authored Shaming Trademark Bullies.

The Strafford webinar takes place at noon CST, Thursday January 16.

Here is a link on how to sign up, or let me know if you’d like a complementary pass, we still have a few to share with some of our loyal readers.

Some commands support trademark ownership (Just Do It), and others don’t.

As you know, I’m not a fan of the USPTO’s trend toward informational refusals, especially when the “evidence” more supports a mere descriptiveness refusal.

Having said that, this RENT ME informational command screams incapable:

Rent Me caught my eye, because bigger words don’t always make it a trademark:

This Rent Me command is informational, incapable, and not ownable as a mark.

OK, then how can this registration be explained without a disclaimer of Rent Me!?

Another quick USPTO examination, another time, or something else less visible?

What is visible is that Yolo Board hasn’t registered You Only Live Once, by itself.

Its only registration containing You Only Live Once is tied to the YOLO brand name, despite the above physically separate uses on the paddle boards.

I get tethering a leash to your board, why tether a tagline to your brand name?

It may not be a formal commandment or trademark gospel, but it’s probably best to register your tagline untethered too, if possible, and there’s nothing blocking it.

One of my friends, when playing blackjack and asked to “cut the deck” after it has been shuffled, consistently admonishes without hesitation: “Thin to win.”

Given the trademark story for today, you may end up believing the opposite.

A 6-year trademark fight between Frito-Lay and Real Foods ended this month.

Frito-Lay opposed Real Foods’ applications to register Rice Thins and Corn Thins:

 

Real Foods apparently decided not to appeal the TTAB’s September 2019 decision, finding both claimed marks generic and incapable of trademark status, thereby allowing the genericness decision to become the final story.

The TTAB concluded, in the context of the records for those claimed marks, “thins” added zero or nothing in terms of distinctiveness.

“[W]e find that the combination of CORN THINS and RICE THINS as a whole imparts no new meaning and that the relevant public will understand CORN THINS and RICE THINS to refer to a subcategory or key aspect of crackers, or ‘crispbread slices predominantly of corn, namely popped corn cakes’ and ‘crispbread slices primarily made of rice, namely rice cakes,’ respectively. CORN THINS and RICE THINS are, therefore, generic terms and are incapable of identifying the source of such products; purchasers will understand and will use such terms to refer to as a subcategory of crackers.”

There is quite a bit of detail to the 6-year story for trademark types, with the case ending this way, but our friend John Welch has covered the history far too well to repeat, so if you’re interested, please see here and here, and here, instead.

Yet, for our discussion, if Rice Thins and Corn Thins are truly generic and incapable of performing as trademarks, what kind of a hand might that signal to others?

As Seth Godin has said, in “The thing about elephants,” they don’t hide well, so when one is in the room, if you simply mention it’s there, it just might leave.

Just saying, what does all of this mean for Good Thins® or Wheat Thins®?

Might there be a more creative, perhaps suggestive way to convey thinness?

This creative team may have a card up its sleeve and be holding the winning hand with this inherently distinctive take on the concept of thin, a/k/a Thinsters®:

What do you think, does Thinsters® hold the winning hand on creativity?

‘Tis the season for gratitude and thankfulness, and avoiding conflict and fruitcake.

From a trademark perspective, every season is for avoiding genericness, right?

After all, generic designations are part of the public domain, they aren’t own-able.

So, why is Guaranteed Rate continuing to invest in Rate.com, found to be generic?

Perhaps because, for an online business, a generic domain name is quite valuable.

Beyond that, Hotels.com‘s persistence yielded 3 registrations (here, here, and here), despite losing a genericness appeal in 2009, so maybe Guaranteed Rate has Hotels.com-like optimism for a possible chance to prove acquired distinctiveness.

And, while it is true that the deck is pretty stacked against federal registration of claimed marks like Rate.com, it is also presently true that:

“[T]here is no per se rule that the addition of a non-source-identifying gTLD to an otherwise generic term can never under any circumstances operate to create a registrable mark. The [Federal Circuit] has held that in rare, exceptional circumstances, a term that is not distinctive by itself may acquire some additional meaning from the addition of a gTLD such as ‘.com’ or ‘.net’ that will render it ‘sufficiently distinctive for trademark registration.'”

In the coming year, we’ll have an opportunity to see whether that remains true.

The U.S. Supreme Court will decide this question in the Booking.com case:

“Whether, when the Lanham Act states generic terms may not be registered as trademarks, the addition by an online business of a generic top-level domain (‘.com’) to an otherwise generic term can create a protectable trademark.”

Interestingly, the very nature of a domain, as an online address, makes it singular.

And, it is important to keep in mind that a trademark not only identifies goods and distinguishes them from those of others, it also points to a singular source.

So, perhaps generic dot com brands should be considered at least capable.

The legal test ought to focus on consumer perceptions about distinctiveness.

Trademark types, will the Court permit generic dot coms to serve as marks?

Marketing types, when do you value domain names that can’t be trademarks?

And, when does putting a bow on genericness make business sense to you?

When thinking about brands comprising religious matter, I think of EZEKIEL 4:9.

The EZEKIEL 4:9 brand has been registered as a trademark for bread since 1990.

The brand owner had to clear some chaff from the Principal Register to do so, threshing this EZEKIEL as abandoned, and gaining this EZEKIEL by assignment.

It presently owns five federal registrations for depictions of the EZEKIEL 4:9 mark.

The above EZEKIEL 4:9 packaging explains the meaning behind the brand name:

“AS DESCRIBED IN THE HOLY SCRIPTURE VERSE: ‘Take also unto thee wheat, and barley, and beans, and lentils, and millet, and spelt, and put them in one vessel, and make bread of it …’ Ezekiel 4:9″ (emphasis added)

Despite use of the dreaded D-word on packaging, all five registrations issued without descriptiveness refusals or the need to show acquired distinctiveness.

So given that easy-button background at the USPTO, one might expect that a brand new application by the brand owner for EZEKIEL 4:9, expanding coverage to include nutritional supplement bars and beverages would be, well, easy.

You’d be wrong, because the USPTO issued an informational/incapable refusal, claiming after “further examination” EZEKIEL 4:9 is incapable as a trademark:

“Registration is refused because the applied-for mark is merely informational and constitutes a citation from a religious text that is used in the marketplace; it does not function as a trademark or service mark to indicate the source of applicant’s goods and/or services and to identify and distinguish them from others.”

The good news for this brand owner is the USPTO withdrew the refusal and approved the mark for publication, but only after a weighty 41-page response.

So, what if the Examining Attorney had held firm and required an appeal?

As I’ve hinted before, since disparaging and scandalous marks cannot be denied USPTO registration on First Amendment grounds, what about religious matter?

Would the USPTO be able to defend the constitutionality of denying trademark registration as comprising some forbidden fruit or matter from religious texts?

After all the First Amendment protects not only free speech, but free exercise of religion too, so the federal government cannot prefer non-religion over religion.