Let’s all hope that the Supplemental Trademark Register is not on the death watch.

It appears though to be on life support, at times, and especially with the USPTO’s heightened focus on “merely informational” matter, including laudatory messages.

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.”

Don’t all valid trademarks communicate information? Exactly. How does the USPTO know when at least one of the bits of that information is not about the source?

It cannot be fatal to validity that a mark communicates more information than simply source, see a suggestive mark or a descriptive one that has become distinctive.

Although not a laudatory example, the first precedential decision from the TTAB in 2019 denied Wal-Mart’s application on the Principal Register, for INVESTING IN AMERICAN JOBS, a slogan for retail store services, calling it “merely informational,incapable as a mark:


Wal-Mart recognized that its claimed mark communicated descriptive information, yet it argued that its evidence was sufficient to show acquired distinctiveness.

What’s striking about the Wal-Mart decision is that evidence of descriptiveness was used to support the fatal conclusion that the slogan can never function as a mark.

It relied on a series of prior cases holding certain phrases incapable of functioning as marks (THINK GREEN, GUARANTEED STARTING, DRIVE SAFELY, and others).

It used evidence typically supportive of a descriptiveness refusal to say that Wal-Mart’s slogan would not be perceived as a mark to indicate the source of services.

It also pointed to several examples like “ONCE A MARINE, ALWAYS A MARINE,” “PROUDLY MADE IN THE USA,” and “THE BEST BEER IN AMERICA,” as merely informational or laudatory slogans, incapable of serving a trademark purpose.

Laudatory terms long have been considered merely descriptive (not generic) for the provided goods or services, so they’re ideally suited for the Supplemental Register.

The Supplemental Register exists as a holding cell for merely descriptive phrases not yet distinctive, but capable of becoming distinctive, maybe at some future time.

Incapable matter — subject matter that cannot serve as a trademark — like generic terms and phrases are impossible and hopeless of ever functioning as a valid mark.

TMEP 1202.04(a) actually blends laudatory and informational: “Matter that only conveys general information about the applicant’s identified goods or services, including highly laudatory claims of superiority, fails to function as a mark.”

So, now we’re going to differentiate between garden variety laudatory claims that are descriptive, and “highly laudatory claims of superiority” — the latter being incapable, and the former holding out some hope of having at least a chance?

This unfortunate approach is reminiscent of the widely criticized approach of the “so highly descriptive” category as to be incapable of serving a trademark purpose.

All the way back in 1989, I went on the record, questioning the “so highly descriptive as to be incapable” line of cases in “Putting the Cart Before the Horse in Assessing Trademark Validity — Toward Redefining the Inherently Generic Term,” published in the University of Iowa College of Law’s Journal of Corporation Law.

The problem with the “so highly descriptive” category is it treats descriptive matter as incapable and generic without the rigors of an actual genericness determination.

The poster (or coaster) child for the eerily similar approach is the Federal Circuit’s 1999 decision rejecting Sam Adam’s THE BEST BEER IN AMERICA slogan as incapable, blurring the distinction between descriptive and generic designations:

In that decision, Sam Adams had “not met its burden to show” that the slogan THE BEST BEER IN AMERICA for beer, had acquired distinctiveness/secondary meaning.

Had the TTAB and Federal Circuit stopped there, fair enough, doing so would have allowed Sam Adams to seek a Supplemental Registration and try again later (with more evidence of acquired distinctiveness) for a coveted Principal Registration.

But instead, both the TTAB below and the Federal Circuit on review, went on to editorialize that no amount of evidence could ever turn THE BEST BEER IN AMERICA into a trademark, not because it’s generic, but because it’s incapable.

That’s what courts routinely said about single color marks, they’re impossible and incapable of serving a trademark purpose, until Owens Corning came along with the Pink Panther, to reverse decades of thinking against single color trademarks.

And, if “highly laudatory claims of superiority” are actually incapable of a trademark purpose and outside the possible definition of a trademark, then how can Principal Registration of AMERICA’S BEST BEER DRINKING CITY be explained, or these?

Let’s be honest, since the stated test is really to discern how the claimed mark would be perceived by the relevant public, too easily dismissing evidence going to that question, doesn’t help and starts to feel more like an impossible shell game.

I’d rather see the evidence of descriptiveness (which provides information) used to support a descriptiveness refusal, allow a Supplemental Registration, then the USPTO can wage the real evidentiary battle with claims of acquired distinctiveness.

Last week was an incredible opportunity to share some of these thoughts in NYC with those attending Practicing Law Institute’s Advanced Trademark Law 2019 seminar, thanks to PLI, Kenneth Min, and co-chairs Kieran Doyle and Dean Eyler!

In the end, let’s all hope that the USPTO reins in its hyper-focus on expanding the “merely informational” and outcome-determinative category of incapable subject matter, so we don’t have to kiss the Supplemental Register goodbye.

Additional hat tip to Sam Adam’s and its vintage painter’s cap:

 

 

No worries, I’m back at the keyboard, refreshed after a busy January, from the ATA Show in Louisville to Las Vegas for the SHOT Show, then Austin, and well beyond.

2019 is off to a rapid start, not sure where the first half of February went, so I’ll make sure this is a good one, and with a little luck, it might even be a great one:

Did my iPhone capture a production anomaly in the soap on display? Note the disconnect between the word and the stuff that I’m not sure I’d want to rub on me.

How often do we hear, “Oh it’s good enough,” or “Yeah, it’s pretty good”? — Good seems pretty watered down today, bordering on being just OK, a passing grade.

Kind of reminds me of AT&T Wireless’ funny Just OK Is Not OK commercials. Let’s just say, good seems much further from CNP than BGE — Barely Good Enough.

A Friday evening shopping run to Whole Foods provided inspiration for this blog post; as you will recall, it’s not the first, others preceed it, e.g., here, here, and here.

So, imagine my surprise that someone actually would try to “brand” soap as good.

Turns out, that someone has infused more than the common meaning into the word, incorporating the more active “do-good” kind, with a real social impact.

Before learning of that aspect to the brand, I was left wondering, is good — well, enough to serve as a distinctive trademark, in other words, is it ownable, as IP?

Turns out, it apparently is, Good Soap is federally-registered for “sustainably manufactured beauty products, namely fair trade shea butter soap” — no less than 500+ pages of evidence was submitted to establish acquired distinctiveness.

At the end of the day, I’m still left wondering about the reasonable scope of rights?

With the mildly laudatory Good, it’s probably no surprise that other coexisting soap marks have slipped into the same laudatory-themed bubble bath as Good Soap:

Besides all those, why did the USPTO allow this Good soap mark to coexist, much less achieve federal registration without a showing of acquired distinctiveness?

Perhaps another less-than-wonderful style of truncated examination at the USPTO?

With a broader identification of goods, covering simply “soaps” — and no apparent “do-good” double meaning, how did the informational matter refusal slip by too?

Back to what Good might mean to consumers, at first blush, it seems facially about managing normal expectations, but Great is about exceeding them.

Assuming the product attributes live up to the name, wouldn’t a brand rather be great than simply good? In other words, can Good Soap, ever be a Great brand?

By the way, this is not anywhere close to our first soapbox when it comes to getting lathered up over soap trademarks:

You can be the judge of what is good versus great. Yes, lather, rinse and repeat.

–James Mahoney, Razor’s Edge Communications

Back in the ’70s, National Geographic ran a story on Boston firefighters.

The writer mentioned a barb that a fireman tossed his way. “Ya gonna do another silver jets piece, huh?” Adding sarcastically, “Ya know: silver jets of water piercing the dark sky as they bravely battle the inferno…”

I owe that firefighter a debt. Since I read his diss, Silver Jets has been a mental caution sign against veering too far into the preciously romantic. (Well, most of the time, anyway; all us writers occasionally succumb to the siren’s song.)

Which brings me to Moen’s Silver Jets moment: creative work driven by its presumable campaign premise, “It’s about time we recognize all water does for us, and give it the attention it deserves.”

The Moen website has lots of solid information. Most of it is presented well and unambiguously. That’s a good thing, since we generally want only three things from our faucets: style, function, and reliability. Everything else is on the margins.

And yet, even in commodity markets—and maybe especially there—the urge to creatively distinguish the company runs strong. Channeled and managed well, it can produce good outcomes.

But when the primary focus shifts, unnoticed, to the creative idea from the business objective, you can wind up in Pittsburgh when you intended to go to Minneapolis.*

Here’s how I think that happened at Moen:

  • They wanted a new campaign to distinguish the company.
  • Someone(s) got the idea to “celebrate water.”
  • That led eventually to the premise that “Water designs our life.”
  • That led to some excited creative exploration casting water as the unsung hero/benevolent star of human existence.
  • That led to casting Moen as the combination of Alexander Graham Bell and Frank Lloyd Wright when it comes to water.
  • That led eventually to the campaign theme: “Water designs our life. Who designs for Water?”

(Spoiler alert: Moen’s answer: “Moen designs for Water.” Actual answer: Every company that makes something related to water.)

And that’s where Moen’s creative juices really go Silver Jets. Some examples sprinkled throughout Moen’s website:

  • “With 1.5 trillion gallons of water running through our faucets each year, we feel a tremendous responsibility to make sure every one of your interactions with water is a meaningful one.”
  • “Moen products don’t just make you look smart; they leave you feeling inspired.”
  • “As a company we’ve given over to the power and beauty of water. Throughout our history, we’ve learned to respect and honor it. So that makes us a company that not only celebrates water, but that also happens to make faucets.”
  • “Throughout history, water has shaped the world we live in—where we gather, what we do on the weekends and what rooms we make room for. So it’s about time we recognize all water does for us, and give it the attention it deserves.”

Those are some major-league Silver Jets. They speak to lofty aesthetic. They paint glowing watercolor images. They demonstrate what happens when marketing and creative exploration become unmoored from reality and business objectives.

Last, for now, here’s a piece of SethGodin-bait: Predictably, Moen’s creative drift inevitably culminated in a gorgeous, high-budget, 60-second art film designed to…well, you tell me. You can see it here, or by clicking on the “watch the film” link on Moen’s site.

Where did it all go sideways? Around the fourth bullet of the process described above. Creative freewheeling is a necessary part of producing good work. But so is having at least one person keeping an eye on the compass and able to trim the sails.

* Heading north on the Mississippi River will bring you to Minneapolis unless you lose focus and get sidetracked onto the Ohio River, which will bring you to Pittsburgh.

–James Mahoney, Razor’s Edge Communications

I try to focus my commentary on good creative work. Otherwise, I’d be posting multiple times a day because there’s so much mediocre or outright poor work.

But today, I can’t resist

Moen’s running full-page ads for its new Flo product. On a field of irregularly scattered, different-size circles filled with ones and zeroes—”digital” water, get it?—the headline reads We Hacked Water (So It Can’t Hack You).

Huh?

The body copy is equally puzzling:

“…While [water is] seen as a vital resource that powers life, it’s also a network in your home that can be programmed. Introducing Flo by Moen, a revolutionary device that takes smart home technology to water with the first-of-its-kind whole home water supply control system. Intuitive design gives you the power to control, conserve and secure your water to protect the things you love.”

Okayyyy… So nefarious characters may hack into my water pipes and open the floodgates of my faucets? Or add some unhealthy stuff to my water so it “hacks” me, like security consultants say could happen to municipal water-treatment plants?

Since that doesn’t make any sense at all, I knew I had to DuetsBlog about it, and so headed to the Moen website.

Turns out that Flo is a control valve that detects whether there’s a leak somewhere in your home’s water system. Via smartphone (of course) it notifies you if it detects one. Moen notes some pretty good reasons why this might be a good idea.

In fact, the website offers a lot of good nuggets that you could use to build a compelling argument. So why on earth would Moen and the creative team go with such an opaque and confusing storyline, especially when introducing a unique and useful new product line?

I suspect a couple of factors diverted them.

Elsewhere on its website, Moen’s trying to chart new marketing waters with a lofty corporate story about being a company that has “given over to the power and beauty of water…[and] that also happens to make faucets.” (Commenting further on this is a subject for another day.)

Since they apparently want to be seen as the spiritual lovechild of water and more than just a fixture manufacturer, leading with the practical value of Flo isn’t hip enough. Rather, Flo advertising needs to signal that Moen’s in step with the brave new “smart” world.

And that leads to seductive creative ideas that make sense only when you know how they got there. I’m certain that everyone involved thinks this ad nails it because they know what they intend to communicate. Meanwhile, many of us scratch our heads to try to figure out what they heck they’re talking about.

Contrast that with this on the website: “Runs daily tests to ensure your home plumbing network is running efficiently. Continuously checks for leaks and potential vulnerabilities in your pipes. Automatically shuts off water to your home in the event of catastrophic failure.”

Freud said, “Sometimes a cigar is just a cigar.” And sometimes, the best campaign is one that just says it plain.

– Mark Prus, Principal, NameFlash

Last year I wrote a “Change Your Name Already” blog post about Overstock.com on DuetsBlog which described the painful way that Overstock.com was trying to communicate that their name did not fit what they were doing as a business…”we are so much more!” My response was to politely suggest that they call me to help them find a new name that did fit their business model.

Recently MailChimp launched an ad campaign that approached the “our name does not fit our business model” issue from a different angle. In this effort, they celebrate the fact that they have outgrown their name and tell prospective customers that they would like to help them do the same thing.

Brilliant…simply brilliant. Both Overstock.com and MailChimp have outgrown their names, but Overstock.com communicates it in a way that makes the potential customer feel stupid (“you thought we only sold overstock items but you are stupid…we actually do more!”). MailChimp admits they do more than what their name implies and desire to have the same impact on the prospective customer’s business, thereby leaving prospective customers feeling hopeful. Big difference.

So the CEO of Overstock.com should still call me to initiate a name development project…but the CEO of MailChimp can just take a bow!

We’ve had a lot of nothing — meaning zero, and the trademark meaning, if any, of zero — on our mind lately, so imagine my surprise to see this soap “brand” for the first time last week in a hotel:

Not sure how to pronounce it, but as we know, there really is no “correct” way to pronounce a trademark, so it could be Zero, or perhaps a telescoped version of Zero Percent, who knows?

What we do know for sure is that neither Zero nor Zero Percent functions as an inherently distinctive trademark to identify, distinguish, and indicate a single source of this body collection:

Why Applicant’s Mark is Deemed Descriptive

“Applicant seeks to register the designation “ZERO%” for bath soaps in liquid solid and gel form; Body lotions; Hair shampoos and conditioners; Shower Gel.” Had applicant not applied under 1(a) and submitted specimens of use consisting of the bottles for shampoo, conditioner, body lotion, shower gel and hair 2 in 1, the mark would likely not have been seen as descriptive.

However the specimen bottles show graphically just what “ZERO%” describes about the applicant’s product. On each bottle is the following legend, explaining the mark:

 “ZERO sulfates

 ZERO parabens

 ZERO phthalates

 ZERO artificial colours

 ZERO animal testing”        

Thus it appears that “ZERO%” refers to the ingredients that are NOT present in applicant’s soaps and hair care and body lotion and shower gel products.  Sulfates and parabens have long been regarded as suspect with respect to human skin. Testing on animals is considered cruel. The ZERO% describes a certain purity in applicant’s products and a certain ethical sensibility about not making money from suffering animals.

In a parallel situation Diet Coke did very well when Coca Cola produced a ZERO caffeine soda, with, of course, zero calories.  Both caffeine and calories are enemies of healthful ingestion.

Applicant is applying the same logic to its toiletries and hair care products. This is to be applauded, however, the mark chosen, “ZERO%,” even without benefit of an explanation on every bottle, would have to have referred to SOMEthing about the goods. “ZERO%” of what? would be the logical question. And there is the answer, front and center, on the bottle.

Another way to look at this is: if using the name of an ingredient of the goods is descriptive use, then surely using a term that indicates the absence of unhealthy or unethical ingredients would also be descriptive.

Two major reasons for not protecting descriptive marks are (1) to prevent the owner of a descriptive mark from inhibiting competition in the marketplace and (2) to avoid the possibility of costly infringement suits brought by the trademark or service mark owner.  In re Abcor Dev. Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); TMEP §1209.  Businesses and competitors should be free to use descriptive language when describing their own goods and/or services to the public in advertising and marketing materials.  See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001).”

This descriptiveness refusal might be the most conversational and empathetic explanation I’ve seen over the course of my trademark career. Nicely done, USPTO Examining Attorney Jill C. Alt.

More than 6 years ago, Applicant Gilchrist & Soames, accepted the Examining Attorney’s invitation to amend to the Supplemental Register, for marks only “capable” of becoming distinctive.

In most cases, the attentive owner of a Supplemental Registration, in use for 5 consecutive years, already would have filed for Principal Registration, arguing in favor of acquired distinctiveness.

Gilchrist & Soames hasn’t (yet), and given what Zero has evolved to mean, will the noted parallel to Coca Cola’s Zero soda, cleanse zero to mean “incapable” of trademark status as a soap type?


In terms of zero sum games, in the trademark world, even if Zero and Zero Percent turn out to be generic, perhaps Gilchrist & Soames gained more in marketing than they would lose in trademark.

As we share another Labor Day together on DuetsBlog, we’re thankful for the emotional labor of those on this journey with us, and we hope you agree this effort is a win-win, no zero sum game.

– Mark Prus, Principal, NameFlash

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

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

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

Consider this manufacturer of pool maintenance products.

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

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

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

-Mark Prus, Principal, NameFlash Name Development

About 6 months ago I wrote a blog post about the future of name development and the use of Artificial Intelligence to name things. I also made a prediction that AI was going to get better and better as it practices name development.

Since that time, AI is getting better at developing names. Check out these potential names for tomato varieties from a recent post by Janelle Shane.

  • Floranta
  • Sweet Lightning
  • Speckled Boy
  • Flavelle
  • Pinkery Plum
  • Market Days
  • Fancy Bell
  • Mountain Gem
  • Garden Sunrise
  • Honey Basket
  • Cold Brandy
  • Sun Heart
  • Flaminga
  • Sunberry
  • Special Baby
  • Golden Pow

I’m pretty impressed by some of these!

Of course, AI also generates names that might be considered to be bad choices, like these examples:

  • Birdabee
  • Sandwoot
  • Shampy
  • Bear Plum
  • The Bango
  • Grannywine
  • Sun Burger
  • Bungersine
  • First No.4
  • Smoll Pineapple
  • The Ball
  • Golden Cherry Striped Rock
  • Eggs
  • Old German Baby
  • Frankster Black
  • Bumbertime
  • Ranny Blue Ribber
  • Adoly Pepp Of The Wonder
  • Cherry, End Students
  • Small Of The Elf
  • Champ German Ponder
  • Pearly Pemper
  • Green Zebra Pleaser
  • Flute First

As predicted, AI is getting better at developing names. And this should increase the demand for professional branding services by experienced human beings! When AI was generating bad names it was easy to separate the stupid names from the barely acceptable names.

But now that AI is doing a better job, clients will have a harder time choosing a name because the list of 100 names contains 85 good ones! Clients will need the assistance of a branding expert to help make a branding decision, and perhaps a research expert to get consumer feedback on names.

–James Mahoney, Razor’s Edge Communications

Recently, I came across a snappy-looking website with unconventional design for a small consulting company. It’s cleverly done, easy to navigate, and appears to have good information.

I say “appears to have” because there’s one slight problem: it’s challenging to read it. The design motif has small white type on large circles that are color-coded for the different sections. You have to be very motivated to read more than a few paragraphs on some of those circles.

It reminded me of an anecdote related by a writer colleague that occurred at a design staff meeting. The creative head held up a print piece the group had recently produced, and asked, “What’s wrong with this?”

Lots of designers chimed in with thoughts, each of which she dismissed with a “Nope.”

My colleague, who was the only writer in the room and had known right away what the problem was, finally spoke: “You can’t read it.”

“Right!” said the design chief.

Like the website, it was an interesting design and looked good. But as often happens, the designer(s) saw text as simply a design element and failed to remember that the copy needs to be readable, too.

Vampire video falls into a similar trap. It starts out as a good idea for communicating marketing information. But somewhere along the line, both the creative team and the marketers get seduced by the idea itself, and lose sight of the communications objective.

You usually wind up with a really well-produced video that’s interesting and even fun to watch—so much so that the original marketing objective has inadvertently taken a distant second place to the idea.

So how does this happen? Whether we’re predominantly on the visual or the writing side, even the most pragmatic among us chose this career because we love the creative part of the business.

Most marketers do, too. As one once told me, “You guys get to do all the fun stuff.” (Hard to remember that when it’s midnight and you’re still banging away to meet an 8 a.m. deadline.)

When solving communications problems with creative ideas is your stock in trade, it’s no surprise that some of those ideas will sweep you down a very different pathway than the one you set out for. It’s a seduction that we need to be continually on guard against.

Of course, neither showcase design nor vampire video has ever occurred in any of my projects. (Cue the trombones.)

-Mark Prus, Principal, NameFlash Name Development

A lot of entrepreneurs launch businesses behind a name they developed on their own. I get the fact that the name of the startup is intensely personal for the founders. Also money is tight in a startup and spending money to develop a name and do trademark research on it seems like a “nice to have” versus a “must do.”

But when you think about it, the company/product/service name is the first point of contact for a potential consumer and what could be more important than that?

I won’t suggest that founders abandon any hope of developing the name on their own. I will suggest that at a minimum founders need to get a “second opinion” on the names they develop.

Why is this important? Founders tend to have a very narrow view of the world that revolves around their particular product or service. Most entrepreneurs suffer from the “curse of knowledge” where they know a lot about their topic area and blindly assume that everyone else has a high level of understanding about their product or service.

My favorite example of this is Xobni (pronounced “zob-nee”). The company was founded in 2006 and made software for mobile and email applications. It raised millions of dollars from venture capitalists and was acquired by Yahoo in 2013. After incorporating some of its features into Yahoo Mail, Xobni was shut down. While Xobni disappeared, it remained famous as a prime example of the “curse of insider knowledge.” In other words, the founders developed the name and lived with it on a daily basis, but failed to take into account the fact that most consumers could not relate to the name in any way. The founders of Xobni loved the name because it was inbox spelled backwards. They also assumed that people would fall in love with the name in the same way that they did.

If you are interested in the science behind the “curse of knowledge” you will find more details in my book The Science of Branding which is available on Amazon.com.

There is another reason why founders should get a second opinion on their branding and that is because Google makes you stupid. OK, technically Google doesn’t make you stupid, but it does shield you from diversity. And a lack of diversity in branding will limit the appeal of your product or service.

This phenomenon is described in the book The Filter Bubble: How the New Personalized Web Is Changing What We Read and How We Think.” The internet was developed as a means for humans to gain a broader view of the world. However, the use of AI by companies such as Google and Facebook is doing exactly the opposite. Because Google and Facebook are driven by advertising revenue, they intentionally provide you with a narrow view of the world because they think that will enhance their revenues. In most cases, people will enjoy their web browsing experience if they are presented with web pages that agree with their view of the world. Over time, you are exposed to highly filtered results that tend to sound familiar because your viewing horizon is limited by your web browsing experience. You will see fewer contrary points of view because Google serves up a world that aligns with your browsing history.

That is precisely why a “second branding opinion” is necessary. When I conduct a name development project I always ensure that I have a diverse panel of freelancers working on a project. I might have an artist, a scientist, a musician, a professional name developer, a pharmacist, and a NY Times best-selling author working on a project. Sometimes the best names come from the most unexpected places!

Entrepreneurs should expand their horizons for branding and at a minimum make sure they get a second opinion on the names for their company/product/service!