Acquired Distinctiveness

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.

In April, news broke that two iconic alcohol brands were joining forces to create a remarkable new beer: Jim Beam Budweiser Copper Lager. Fruit of the joint labor is now available for consumption:

The unique combination doesn’t appear destined to fall flat, as in the early days since launch, it seems to be attracting even self-professed “craft beer snobs,” which is probably the point for Bud.

When iconic brands come together in a co-branding arrangement, it’s interesting to note visual manifestations of the joint trademark use guidelines, a peek into who’s steering the Clydesdales.

Not surprisingly, the reigns of the Clydesdales appear most closely held by Budweiser, as the Copper Lager is beer, not whiskey, and BUDWEISER is the largest wording on the packaging.

That said, the Jim Beam brand name and logo does adorn the six pack carton’s front face with top line prominence, suggesting the brand power it brings to the party – liquid version of Intel Inside?

Figuratively though, not literally, as the Copper Lager isn’t a boilermaker beer cocktail, instead the Jim Beam name and logo indicates aging of the lager on genuine Jim Beam bourbon barrel staves.

One of the things the packaging does well, from a trademark perspective, is keeping the visual identities of the brands separate and distinct, as they appear together in this joint branding effort.

It’s really not a good idea, from a trademark perspective, to mix and blend the combined brands into a single new visual identity, as doing so raises questions of ownership and how to untangle.

So, the packaging does a nice job of keeping each sides trademark elements physically separable while communicating why Budweiser invited Jim Beam to team up for this Copper Lager party.

The trademark filings tell stories too. The only filings currently on the USPTO database that contain the terms Copper and Lager in a mark are owned by Budweiser parent, Anheuser-Busch.

So, Anheuser-Busch views the Copper Lager name to be part of the Budweiser Copper Lager and Budweiser Reserve Copper Lager trademarks, but it disclaims exclusive rights in Copper Lager.

What we don’t know (yet) from the disclaimers, is whether Copper Lager is descriptive (capable of being owned as a trademark element), or generic (you know, meaning zero trademark rights).

If Copper Lager is not a category of beer (i.e., generic and incapable of trademark status), and instead descriptive, since this isn’t Anheuser-Busch’s first such rodeo: acquired distinctiveness?

Either way, this joint effort does appear to be Jim Beam’s first rodeo when it comes to beer, as evidenced by the intent-to-use Jim Beam trademark application it filed in April 2018 for beer.

Thankfully these brand owners are sophisticated enough not to combine Jim Beam and Budweiser into a single trademark filing, sadly I’ve seen commingling before, and it isn’t much fun to unwind.

What do you think, is this joint effort a remarkable one? Is it likely to last, stand the test of time?

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.

We’ve been writing about the COKE ZERO trademark for nearly a decade now, noting in 2014:

“[I]t will be worth watching to see whether the [TTAB] finds that ‘ZERO’ primarily means Coke or just a soft drink having ‘no calories, you know, a drink about nothing . . . .’”

Turns out, in May 2016, Coke obtained a favorable decision from the TTAB, ruling that ZERO is not generic for a soft drink category, instead it is descriptive and Coke has secondary meaning in it.

With that victory in hand, we then questioned Coke’s thinking in launching obvious generic use of ZERO, welcoming Coke Zero to the Genericide Watch, given this categorical and non-brand use:

Then, two months ago, the CAFC decided — on appeal — that the TTAB got it wrong, ruling it:

“[F]ailed to consider whether consumers would consider the term ZERO to be generic for a subcategory of the claimed genus of beverages – i.e., the subcategory of the claimed beverages encompassing the specialty beverage categories of drinks with few or no calories or few or no carbohydrates.”

We’re now back to the question we asked in 2014: “[I]s ZERO like LIGHT for beer, STONE OVEN for pizza — basically denoting the name of a product category instead of a source identifier?”

As to the next steps, the CAFC sent the case back to the TTAB, instructing it to “examine whether the term ZERO, when appended to a beverage mark, refers to a key aspect of the genus.”

TM types, is Professor McCarthy right that the CAFC ruling makes it too easy to find genericness?

I’m left wondering, given the floodgates that have opened up to other beverage brands also using ZERO as a generic category term for “no calories” or “no sugar” — is fighting for ZERO worth it?

 

 


 

 


Will Coke continue to fight for ZERO as a trademark? Or, should it make better soda instead?

How can The Coca-Cola Company even keep the trademark pursuit of ZERO going, when it already appears to have made the choice of making a better soda through its independent unit, Honest?


These lime green building sites caught my eye and jogged my trademark memory. First, the future home of the University of Iowa College of Pharmacy, at beam signing, on May 4, 2018:

Second, the expansion of the Metro Transit headquarters near downtown Minneapolis, on June 12:

Of course, the obviously common element of both building sites, besides my iPhone, is the same lime green sheathing, both also branded with the USG and SECUROCK word trademarks.

Then poof, they’re gone, after being covered by some black-colored sheathing, on August 2, 2018:

What’s my point? Actually, I have a few that immediately come to mind, so bear with me.

First, do you suppose United States Gypsum Company views the lime green color of its gypsum panels to be a trademark? Apparently there are no look-for statements on the product itself:

In looking for look-for ads that might draw attention to this particular shade of green as a brand, Green Means Go (scroll down after linking), is the closest I’ve found.

Let’s just say, USG has been far more effective in owning the color red as a band or stripe applied to packaging for plaster products, and the supporting look-for-like TOP RED word mark.

Still, it’s difficult to tell what USG thinks from the general legend used in its online brochures:

“The trademarks USG, FIRECODE, SECUROCK, IT’S YOUR WORLD. BUILD IT., the USG logo, the design elements and colors, and related marks are trademarks of USG Corporation or its affiliates.”

It’s even harder to tell, despite the “colors” mentioned in the legend above, after searching the USPTO, since USG allowed its Supplemental Registration — for what I’m calling the “lime green sheathing” — to expire without first obtaining, or at least, filing for Principal Registration.

The Supplemental Registration described the mark as “the color yellow green (Pantone 375) as applied to the goods.” Namely, “non-metal water-resistant boards and panels for construction.”

Why let it go?

I’m sure the color green is considered difficult to protect for sustainable building materials, but this color mark was narrowed down to the particular Pantone shade. Perhaps the shade changed?

Typically, a Supplemental Registration is considered valuable to a brand owner, while it works to build the evidence necessary to establish acquired distinctiveness for Principal Registration.

In addition, the Supplemental Registration for Pantone 375 was some indication that the USPTO did not view that shade of green as being functional even for sustainable building materials.

We’ll keep watching to see if Principal Registration is pursued.

In the meantime, let us know if you discover any better look-for advertising for USG’s SECUROCK gypsum panel sheathing. Loyal readers know how important look-for ads are for trademark colors.

Last, the now-you-see-them-now-you-don’t green gypsum panels remind me of the lavender color registration I convinced the USPTO to issue for spray in place insulation in 1994, oh the memories!

As I’ve been known to do long before now, this past weekend I found myself gazing intently, this time, into the front label and back copy on this S. Pellegrino sparkling natural mineral water bottle:

Putting aside the question of the shiny red star logo, which we already have bloviated about, here, a few years back — my focus is centered on the surrounding Enhance Your Moments tagline.

No gold star for the brand’s failure to capture federally-registered protection for it, despite the obvious association with SanPellegrino, as shown in results of a simple Google search, here.

Another “no gold star” moment that needs a modicum of enhancement would be the back copy:

Why? As you can see, SanPellegrino has taken a perfectly fine, inherently distinctive, and suggestive trademark, and used it in a sentence (without brand emphasis) in a descriptive sense.

Make sense?

Two businesses in Indiana are squaring off in a trademark lawsuit over the right to use the term Square Donuts for…well, square-shaped donuts.

Back in 2005, Square Donuts, a cafe with four locations in Indiana, sent a letter to Family Express (a convenience store chain with 70 locations in Indiana), demanding that Family Express cease the use of the term “Square Donuts” for the square-shaped donuts sold in its stores.

The parties wrangled for years about a potential co-existence agreement, in which Square Donuts would allow Family Express to use the “square donuts” term, but they never reached an agreement.

Later, Square Donuts filed a federal trademark application for the word mark SQUARE DONUTS for “cafe services,” claiming use since 1968, and obtained registration in 2013. (Reg. No. 4341135). The USPTO initially refused registration based on mere descriptiveness, but the refusal was overcome when Square Donuts claimed acquired distinctiveness (secondary meaning based on long and substantially exclusive use).

A couple years ago, Family Express filed a preemptive, declaratory-judgment complaint in Indiana federal court, on several grounds–including that the term “square donuts” is generic, and therefore, Square Donuts’s trademark registration No. 4341135 should be cancelled, and Family Express has the right to use that generic term. Additionally, Family Express filed last year a petition for cancellation before the Trademark Trial and Appeal Board (TTAB), also claiming this registration should be cancelled based on genericness. (The TTAB proceeding is currently suspended based on the federal court action.)

The genericness claim is interesting for a couple reasons. First, in both its federal court complaint, and the TTAB petition, Family Express claims the SQUARE DONUTS registration should be cancelled because the term “square donuts” has become “generic…for square-shaped donuts.” But as discussed in previous posts, the genericness inquiry must be tied to the particular goods or services for which the trademark rights are claimed and registered. Magic Wand Inc. v. RDB Inc., 19 USPQ2d 1551, 1553 (Fed. Cir. 1991). Square Donuts registered and claims rights to the mark SQUARE DONUTS for its “cafe services,” particularly as the name of its cafe.

Indeed, in the Board’s order suspending the TTAB proceeding, the Board left a footnote that was critical of Family Express’s genericness claim, and suggested it must be re-pleaded in an amended petition, if the suspension is lifted, because the genericness inquiry must be “based on the recited services in the registration at issue,” namely cafe services, not “square-shaped donuts.” However, as also correctly noted by the Board, a term can be generic for a genus of services, such as cafe services, if the relevant public understands the term to refer to a key or featured good that characterizes that genus of services (e.g., serving square-shaped donuts).  In re Cordua Rests., Inc., 118 USPQ2d 1632, 1637 (Fed. Cir. 2016).

Therefore, the appropriate genericness inquiry here — which will be more difficult for Family Express to establish — is whether the term “square donuts” has become generic for the genus of “cafe services.” In other words, do the relevant consumers refer generally to the genus of cafes (even cafes that feature square donuts), as “square donuts”?

Second, another interesting point is that Family Express still appears to be claiming trademark rights to “Square Donuts” as a brand for their donuts, while arguing the term is generic at the same time. The Family Express website, “Our Brands,” prominently features a section discussing their “Square Donuts” brand, with an introductory paragraph about “our proprietary brands.” This cuts against their argument that the term is generic, meaning it’s not a “brand,” and no party can claim exclusive, “proprietary” rights. I wonder if that website will show up as an exhibit at some point.

What do you think? Will Family Express be able to establish genericness here? Stay tuned for further updates on this dispute.

 

A couple of years ago, our friend John Welch over at the TTABlog reported about a white color trademark that had acquired distinctiveness, according to a rare precedential TTAB decision:

No, that’s not a roll of toilet paper, it’s a preformed gunpowder charge for use in muzzleloading rifles. And the applied-for mark was described as “the color white applied to gunpowder.”

The application was filed almost five years ago. And after multiple responses over the years to various USPTO refusals, in 2015 the Applicant appealed the lack of acquired distinctiveness.

And, as John reported, the TTAB reversed the lack of distinctiveness refusal, instead being persuaded that Applicant’s look-for advertising and other evidence established distinctiveness:

But, that’s not the end of the story. Turns out there is a relevant utility patent, called White Propellant Compositions, which led to the filing of a weighty 50-page Notice of Opposition.

It spells out in dramatic detail the functionality of the color white for the gunpowder charges, among other grounds for registration refusal, and judgment has been entered against Applicant.

In case you’re wondering, yes, we were privileged to light the match on this one. Word to the wise, never forget the timeless ticking time bomb of functionality. It kills trademarks in its tracks.

Kaboom, but judge for yourself whether the claimed mark is looking more like toilet paper now.

Last year we took a whiff of Hasbro’s application to register the smell of its Play-Doh® for “toy modeling compounds.” We didn’t think the application was ripe for a functionality refusal, but a refusal on the ground of a lack of acquired distinctiveness seemed like a certainty.

An Office Action issued on May 26th, 2017, refusing the application on the ground of a lack of acquired distinctiveness. The Office Action also included a number of Requests for Information to determine whether a functionality should issue, too.

For the uninitiated, a trademark must be distinctive in order to be protectable. Because a scent mark cannot be inherently distinctive, an applicant must establish “acquired distinctiveness,” also known as “secondary meaning,” to obtain a registration. Essentially, acquired distinctiveness means that the claimed mark may not have been a symbol of the source of the goods, but because of advertising, commercial success, publicity, etc., the public has come to recognize the claimed mark as a identifying a particular source for the goods.

For attorneys looking for a good playbook as to how to establish acquired distinctiveness, look no further than Hasbro’s Response, filed on November 27. The Response includes pretty much every piece of evidence that you could ask for.

It included the classics:

  • Sales numbers, more than a billion since 2004 in the U.S.
  • Advertising numbers, $77 million since 2004 in the U.S.
  • Longstanding use, since the year 1956
  • Unsolicited media attention referencing Play-Doh’s “unique and distinctive smell” and its “legendary scent”

It included new hits, like screenshots of social media of consumers talking about the memory of the smell of Play-Doh as a child. It also included “blogs written by experienced attorneys who opine on the source-identifying function and registrability of the applied-for mark.” Looking at those articles, you might even recognize a familiar blog post. No need for any thanks, Hasbro. But on a completely unrelated note, this R2-D2 Play-Doh set looks pretty great. Just saying.

The Response also included the obligatory declaration from a Hasbro head honcho to support these claims. The declarations always have at least one over-the-top assertion that you just can’t help but include. Here, it was the reference that Play-Doh for some people is “as identifiable as their mother’s faces.” Might be a bit of a stretch, not that I’m saying I wouldn’t have included it though. For me, the gem is the strange but unforgettable fact that since 1956 more than 950 million pounds of Play-Doh had been sold. If only it had included a reference as to how big that Play-Doh boulder would be.

And yes, the Response even included the coveted, but not always available “look for advertising”:

I’m not entirely convinced this qualifies as “look for advertising” though. It doesn’t direct consumers to the claimed trademark like a “look for the purple cap!” might do. Just looking at the advertising doesn’t tell me what type of smell I’m looking for. It’s close enough though, and the rest of the evidence is pretty compelling.

So, do you think the evidence was successful? Could the examiner smell what Hasbro was cooking? If you guessed yes, then congrats. The application published on February 27. Now all that is left is to see whether any of Hasbro’s competitors file an opposition to the application.

It’s certainly possible that a competitor might feel that providing Hasbro with ownership of the “scent of a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough” might put them at a non-reputational, competitive disadvantage. In theory, it doesn’t seem like granting Hasbro the registration will be problematic, but in practice it will depend upon how broadly Hasbro interprets its rights.

But that may be parting the cart before the horse. Let’s wait and see how the next 35 days go before we start talking enforcement.

I’ve been meaning to write about a TV commercial for a while, but I keep forgetting to do it.

Perhaps I need the very product being advertised in the commercial, because what gained my attention was the clever tagline following the brand name: Prevagen. The Name to Remember.

Given the goods being sold, it struck me as a clever play on words, literally descriptive, but figuratively not, so the double meaning allows it to be registered without acquired distinctiveness:

Prevagen (apoaequorin) is clinically shown to help with mild memory problems associated with Aging.

I’ve never tried it, but since I’ve seen this ad more than a few times, I’m left wondering if I’m within their target market? So, I know I’m AARP eligible, but I can’t recall if I’m really a member.

Yet, I’m left wondering why the Prevagen folks haven’t sought separate registration for the tagline, standing alone, apart from the Prevagen brand name, as their specimen of use shows.

I don’t know, maybe they forgot?

Aaron Keller of Capsule noted, in another context, that “memory decay is abhorrent” for brands.

Anyway, going through this exercise has reminded me that we need to submit evidence of our continued use of this clever tagline — that I think I designed myself — for our legal services:

If You Want to Protect Your Name Remember this One®

And, when I search for the word “memory” on Ron Coleman’s Likelihood of Confusion® blog, this gem keeps coming up, perhaps the repetition exists for those with “mild memory problems.”

You might be wishing I’d be done by now, hoping I’ve disremembered what’s next, but I’m really feeling it currently, and our friend James Mahoney, has provided me with a hot tip that Tom Rush, American Folk Icon, will be performing at the Dakota Jazz Club in Minneapolis later this week.

You guessed it, or perhaps you’ve never memorized Rush’s hits or play list, but he’s the guy who has his Remember Song on YouTube, currently showing over 7 million views.

And, there’s more, before I omit something else, our friend Seth Godin also has weighed in on the subject of memory, I’m sure he hasn’t forgotten this one, nor has Nancy Friedman for that matter.

The good news is, as John Welch — from the TTABlog — reported way back in 2007, thanks to genericness, it would appear that anyone could sell card games called, you guessed it: Memory.

Apparently though, times and circumstances have changed, or the Rhode Island decision John discussed was not the final word, or perhaps someone simply failed to remember, because Hasbro, in fact, still maintains federally-registered rights in Memory for a card matching game.

Oh, by the way, back to our federally-registered tagline, searching the USPTO database for marks with both “name” and “memory” yields surprisingly few live ones, so broad rights, right?

Well, I’m not making this up, but as it turns out, there is presently a trademark fight, between two law firms, going on now for nearly five years at the TTAB and in Philadelphia federal district court, over the claimed mark: Remember This Name. Well, imagine that, and then commit it to memory.

Larry Pitts & Associates, P.C. is arguing that Lundy Law’s claimed Remember This Name mark is generic, and part of the public domain for anyone to use, oral argument is likely in January 2018.

There might have been more I wanted to say on this subject, I’m not sure, but I’m thinking that this has been plenty for a pleasant stroll down memory lane, at least for now. Do you agree?