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, found to be generic?

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

Beyond that,‘s persistence yielded 3 registrations (here, here, and here), despite losing a genericness appeal in 2009, so maybe Guaranteed Rate has 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, 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 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.

Now that we’re back in the blogging business, I’m anxious to be able to harvest some visual trademark stories captured on my iPhone over the past 7 months:

Are you surprised to see the federal registration symbol marking World’s Softest?

After all, the phrase seems to communicate important information about the socks in question, as does the federally-registered slogan: Like Walking on Clouds!

Turns out, not only has the sock maker registered World’s Softest Sock for socks, it has registered different versions of “World’s Softest” 5 different times in 13 years!

In fact, the 2005 registration reveals a claim of partial acquired distinctiveness in the wording “World’s Softest” — avoiding the descriptive disclaimer requirement.

The 2004 registration shows acquired distinctiveness as to the combination of all three words (at another time we’ll tackle that “Sock” doesn’t appear in the photo).

Given that those registrations issued about fifteen years ago, one might wonder how they’d fare today with the heightened focus on informational matter.

This is a common basis for registration refusal nowadays: “Merely informational matter fails to function as a mark to indicate source and thus is not registrable.”

In August, Eddie Bauer lost an appeal to the TTAB, affirming a refusal of “World’s Best Down” as “incapable” of being a trademark for bedding containing down.

Eddie Bauer already had a Supplemental Registration for the same mark for clothing with down, so in 2008 it was treated as merely descriptive, but capable.

To be clear, the federal trademark statute doesn’t include the terms “laudatory”  or “informational,” it does, however, provide direction for descriptive and generic.

Of course, many valid trademarks communicate “information” beyond source, for example, suggestive marks or descriptive ones that have become distinctive.

In fact, the assigned Examining Attorney was clearly persuaded in 2004: “World’s Softest” is not incapable of serving the important purpose of a sock trademark.

Both registrations (2004 and 2005) issued despite the Examining Attorney’s initial reliance on the Federal Circuit’s 1999 decision that “The Best Beer in America” is so highly laudatory that it is incapable of serving as a valid trademark.

At the risk of adding more fuzz on this sock discussion, during prosecution of a pair of World’s Softest & Design registrations (here 2012, and here 2013), World’s Softest was considered merely descriptive and disclaimed, but not incapable.

Moreover, as to the very phrase “World’s Softest,” third parties beyond the above purveyor of socks also enjoy registered rights in marks containing the phrase for bedding (2019 Supplemental Registration), plush toys (acquired distinctiveness in 2019), and towels and sheets ( 2018 Supplemental Registrations) — not incapable.

Back to the Eddie Bauer example, the TTAB was not moved from its conclusion of incapability even though the record showed more than 50 issued registrations for “World’s Best” formative marks, seemingly indicating some level of capability.

So, I’m left wondering, is “World’s Softest” materially different from “World’s Best,” as to the risk of informational/incapability, or are we witnessing subjectivity and different treatment by different Examining Attorneys, or something else?

And, when responding to an informational incapability refusal by pointing to other comparable marks that have been allowed registration, is this canned USPTO response a polite and perhaps more formal way of saying, put a sock in it?

However, prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board.  TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017). Each case is decided on its own facts, and each mark stands on its own merits. In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).

Here’s a question for trademark types: Is the TTAB’s Eddie Bauer decision more or less likely to encourage Examining Attorneys to raise informational incapability?

And for our engaging marketing types, is this mess of unmatched socks, yet one more reason to favor inherently distinctive and suggestive marks?

Last but not least, can we agree that we’re on a path frustrating to both groups? It’s no walk in the park, but even more importantly, it’s no walk on clouds either.

It’s been a while . . . about seven months now.

As you’ll see, a few things have happened since April, when we last left you with these gems on the topic of trademark bullying: Stop Bullying the Entrepreneurs, What does Entrepreneur Mean, Anyway?, and Public Shaming is Not the Solution to Trademark Bullying. Let’s Build One

We’re thankful to be back here, to resume the legal and marketing team dance.

So, in the spirit of counting our abundant blessings, especially this week, I’d like to share with you how continuously thankful I am for:

Tiffany, Draeke, Tucker and I, with the help of others, will no doubt have some fun, thought-provoking posts for you as we look ahead to 2020, and we are so thankful to be doing so as part of the GT platform, just named U.S. News and World Report’s only Law Firm of the Year in Trademark Law for 2020.

Thank you, Susan Heller and Joel Feldman, for your incredible leadership of GT’s Trademark and Brand Management Group.

Dear readers, I am truly, continuously thankful for the ability and opportunity to stay engaged with you.

What or who are you thankful for?

Jason Voiovich

Last week, we saw the latest installment in the “trademark bullying” saga. But this time was different. Instead of lawyers fighting amongst themselves, DuetsBlog brought out the big gun: Seth Godin. You can read the entire piece here. I like Seth Godin, and so do lots of other people (hence, the “big gun”). I read the comments (over 30 from my count). It seems to make people feel better to have someone with credibility give voice to their frustration.

I’m not against feeling better; mental health is a big deal. But as I read situation after situation, I am struck by how cases of trademark bullying almost always turn out: The small business loses.

Perhaps they don’t lose in the legal sense, but they lose in nearly every sense that matters to a small business: Time, Energy, Money, Resources, and Attention. Every moment addressing a trademark issue is a moment not invested in their business. Small businesses do not have any of those assets to spare. Large organizations do. They have legal teams that shield their workers from the ongoing drama. They have marketing budgets to drown out negative publicity. If all else fails, they have the resources to outlast you. In over 10 years of public attention, is it any wonder their behavior hasn’t changed?

Public shaming feels good, but it is not working.

It’s time to act.

To act, small business owners need reliable information about their risks. They need that information in advance of a trademark filing, and even in advance of first usage – after-the-fact litigation or advertising insurance don’t solve the problem. And finally, they need accessible and affordable information – calling your lawyer before each decision is not realistic.

In other words, small business owners need an ounce of (affordable) prevention, not a pound of cure.

Here’s my proposal.

To explain it, I am going to adapt Guy Kawasaki’s new business pitch format. At the end, I am going to ask you to invest. Let’s go.

Define the problem.

Trademark owners rightfully defend what they’ve built. However, when they overstep, there is no downside for their behavior. Even if they “lose” in court, they don’t really lose. They create a “chilling effect” for future conflicts. Additionally, they can restrict the distraction in their organization to only their legal team (who, to them, this is not a distraction). By contrast, there is plenty of downside for the small business owner. An unfavorable result in a lawsuit can put a small company out of business. But even if you win, you lose. Distractions are killers.

How does your product solve that problem?

Prevention is the best cure. Imagine a “Trademark Risk Score” much like a credit score. At “1” might be a name you completely invent from random characters. At “100” might be naming your tech company “Big Apple Computers” – an algorithm automatically scores everything in between.

Underlying magic or technology.

Building the algorithm seems easy, but it is not. Factors could include the number of existing trademarks, the size of the companies with those marks, matches in categories of use, length of trademark ownership, recent court decisions or filings, etc. But those factors don’t make an algorithm any more than ingredients don’t make a recipe. The “magic” here is using professional attorneys to “train” the algorithm and improve it.

Business model.

Small business owners could buy access to the system as a one-time purchase (like a “risk check”) or as a subscription (like a “regular checkup”). Accelerators and angels offer this subscription as a service to their startups. I could even see entrepreneurial publications (cough, cough) providing this to their subscribers as an add-on. Lawyers could advertise their services. You get the idea.

Go-To-Market plan.

Aggregators of small businesses are key to the strategy; reaching them 1:1 is cost prohibitive. Fortunately, there are plenty of accelerators, gig economy supporters (e.g. WeWork), and trademark lawyers in the world.

Competitive advantages.

The biggest competitor to this idea is a data aggregator named Trademarkia. However, their service still relies on you as the small business owner to know what you’re looking for (and I don’t think their search functions or aggregation is all that “smart”). If you’re confused, they offer expensive add-on services ranging in cost up to $10,000. That’s not going to fly for the average small business owner. They need something easier to understand and digest.

In this proposal, you plug in a few details, the algorithm spits out a risk score. Is it perfect? No. Will it protect you? No. But it will give you critical information you need to make an informed decision on next steps based on your risk tolerance.

Management team.

This solution will require three key groups of people – tech (to write the learning algorithm), lawyers (to train it), and marketers (to promote it). I wonder if I know any of those people who might be reading this?

Financial projections.

Based on the 300,000 (or so) new businesses started in the United States each year, and a 20% penetration rate for my TAM, and a $100 subscription price, I calculate about $6 million in annual revenue. Back of the napkin, but it’s a business.

Rollout plan and milestones.

I am putting my money where my mouth is – with hard cash. I am committing publicly to the first $1,000. That’s (obviously) not enough to get started, and there is hardly enough detail in this “proposal” to make a formal investment decision, but perhaps it’s enough to get others interested and begin the conversation.

Hate this idea? Awesome! Use it (copyright free) to come up with your own idea.

Just don’t keep public shaming. That’s not helping anyone.

Let’s be very clear, today is April Fools’ Day, but this is not an April Fools’ Joke.

It’s not every day Seth Godin volunteers a guest post, but Thursday was that day.

Friday we published Stop Bullying the Entrepreneurs, 33 comments and counting.

This isn’t the first time Seth has spoken out against trademark bullying, he’s on record before noting: “When a brand becomes a bully, it loses something vital.

And: “If you want to keep the taco place down the street from infringing on your business, don’t hire lawyers to hate on their slogan. Make better tacos instead.”

On Friday Seth went to public bat for kindred spirit and entrepreneur Jen Lehner:

Seth called out Entrepreneur Magazine for going after the name and mark for Jen’s podcast, “The Front Row Entrepreneur” — described by Jen this way: “The Front Row Entrepreneur gives you a front row seat to all of the most exciting people and happenings in online marketing and entrepreneurship.”

To Seth’s point, it’s difficult to create a podcast designed for an entire class of people known as entrepreneurs and not have the ability to include “entrepreneur” in the name, because it is: “One of the only words available to describe a person who builds an enterprise bigger than herself, often using outside resources.”

Actually, that’s a fair point, given the special meaning of the word — no other word that I could find with a thesaurus really captures the same and complete essence of the word “entrepreneur,” not “administrator, contractor, executive, manager, producer, backer, businessperson, founder, industrialist, organizer, promoter,” etc.

In fact, the Examining Attorney who approved Jen’s application to register THE FRONT ROW ENTREPRENEUR as a mark for podcasts, recognized the special meaning of the word, noting it to be descriptive of Jen’s podcasts: “A person who organizes, operates, and assumes the risk for a business venture.”

So, the USPTO told Jen to disclaim exclusive rights in the term ENTREPRENEUR in THE FRONT ROW ENTREPRENEUR mark for podcasts, and she did, but to satisfy Entrepreneur Magazine she also apparently needed to withdraw her registration application and, in terms of future use, contort the more efficient name into the more wordy mouthful: THE FRONT ROW PODCAST FOR ENTREPRENEURS.

So, what does ENTREPRENEUR mean anyway? Clearly much more than a particular magazine or other offerings of that magazine. Might it even designate a category or perhaps a subgroup of magazines — those about and for an entrepreneur?

If Entrepreneur Magazine is not careful, one of these days, it might find itself in a position tangling with an enforcement target willing to go the distance, finding out the hard way, if ENTREPRENEUR has become generic (part of the public domain).

Seth Godin

It’s not good marketing and I’m pretty sure it’s not good law, either.

It seems as though Entrepreneur magazine (who should know better) is working with Latham and Watkins (who should certainly know better) to persist in their relentless efforts to bully entrepreneurs to stop using the word ‘entrepreneur’.

And yes, it’s a word.

Not a fanciful or inherently distinctive trademark, a word. Almost 800,000,000 matches in Google.

One of the only words available to describe a person who builds an enterprise bigger than herself, often using outside resources.

Without that word, it’s hard to describe the work.

Poignantly, it’s interesting to see that they’re not going after people with a ton of resources. If Brian Koppelman, David Levien and Showtime started going after billionaires for using the word ‘Billions’, I’d call it a fair fight. A dumb fight, but a fair one.

But deep in the bowels of the Latham offices in San Diego (which, fortunately, hasn’t been sued by the producers of Anchorman for trademark infringement) there are young lawyers, early in their career, sending nasty letters to entrepreneurs (there’s that word again) like Jen Lehner. You can see her work here:

Apparently, the powers that be decided that her podcast called “Front Row Entrepreneur” somehow infringed on a magazine that hit its peak in 2013. How?

“Front Row” modifies the noun. The trademark is the modifier, not the noun. Front Row™ is a trademark. Entrepreneur is simply a word.

With great cost and hassle, fledgling entrepreneurs (there’s that word again) who have finally gotten their business off the ground now have to dig in to either fight a huge law firm and their misguided but well-funded lawyers–or spend the money to change what they already built.

Who, exactly, does this help?

By engaging in this behavior, Entrepreneur might think it is building a strong trademark; instead, it is throwing away the very purpose of any trademark: To be a symbol of goodwill within a community. Amongst entrepreneurs, it is simply becoming a hated one.

Better, I think, to spend the time and the money building something that entrepreneurs actually like and respect.

The saltiest trademark news in the last week surrounds singer Cardi B’s application to register the marks “Okurr” and “Okurrr,” both slang for “Okay???”–but pronounced in a hip, rolled-r trill, sometimes with a shady tone. Or, as Cardi describes, it: the sound of a “cold pigeon in New York City.” If you haven’t heard it said before, search no further than these humorous and fully-extra renditions by a few popular drag queens:

As with most seemingly-overreaching trademark applications, Cardi’s registration of these popular words–particularly in the drag queen community–has been met with criticism. The public backlash is understandable; it brings to mind the concern that trademarking a term will take it out of the public domain and inhibit free speech and fair use. Though, to be fair, Cardi’s applications only seek to preclude use of the word on clothing and merchandise. But she acknowledges the registrations are, essentially, a cash grab.

Indeed, trademarking common words appears to be a regular strategy for celebrities seeking to capitalize on words’ popularity. I’m reminded by the recent example of singer Will.I.Am attempting to trademark the phrase “willpower,” which was cancelled by the Trademark Trial and Appeal Board because the mark was too similar to other existing marks and had no source-indicating distinctiveness. That is, the public did not strongly associate the word “willpower” with Will.I.Am, so Will.I.Am cannot claim exclusive use of the mark in commerce. But Cardi argues that “Okurrr” has become her famous slogan, buoyed by a Superbowl Pepsi ad featuring her using the phrase and instructing others on how to pronounce it correctly.

And that brings me to the “T”–the truth–of the enforceability of Cardi’s registrations: it is unlikely that the general public would identify Cardi as the source of goods beat with “Okurrr” or similar marks because, in fact, “Cardi can’t honestly make the argument that she created the word.” Rather, according to the fiercest drag queen of them all, RuPaul, the credit goes to Broadway actress Laura Bell Bundy–even though RuPaul and other drag queens brought the phrase, which may have roots in African-American culture, to the runway, where it was picked up by the Kardashians and, now, Cardi B.

The contextual history of Okurrr is important and cannot be overlooked in the distinctiveness and goodwill analysis. It not only undermines Cardi’s legitimate claim to exclusive nation-wide use of the mark in commerce, but also seriously calls into question the appropriateness of restricting use of the word by all others, including the communities from which it originates–and which much of the public likely identify as earlier or actual sources of the word. Thus, trademarking “Okurrr” is likely to lose from both a legal and PR standpoint. That’s a sickening realness, but not in a “feeling the fantasy” kind of way.

Whether Cardi’s tuck-under will be allowed to stand, or the gag will be up, remains to be seen. At least one drag queen, Alaska, who is also known for her rendition of “Okurrr,” plans to clock Cardi’s conduct, potentially by challenging the registrations in court. Time will tell whether Cardi’s gambit will stay, or be asked to “sashay away.”