Acquired Distinctiveness

SteepTea

The grocery aisles are fertile grounds for my keyboard, as you know. And, while I’m generally far more interested in coffee grounds than tea leaves (unless we’re speaking of the iced variety or reading between the lines of court decisions), the above shown box of tea bags caught my eye.

What initially captured my interest is the large yet engaging lower case branding of the word “steep” followed by the diminutive signature line “by BIGELOW” in all caps.

Given the descriptive character of the visually-emphasized word “steep” in connection with tea, and the “by” signature line of the well-known BIGELOW tea brand, my instincts told me a USPTO search would reveal a crowded field of marks containing STEEP, likely fueling my assumption that “steep” couldn’t be owned as a trademark for tea standing alone.

Turns out, STEEP was federally-registered back in 2004, for tea (as a single word mark with no style limitations), pursuant to an apparent showing of acquired distinctiveness under Section 2(f) of the Lanham Act, but the registration expired in 2010 and was cancelled under Section 8 of the Lanham Act in 2010, making way for the crowded field I imagined.

It also turns out, there is more to the story than I have time today to turn over every tea leaf of this one: The apparent principal behind the expired registration is back at the USPTO with a new STEEP application, claiming continuous use of STEEP for tea since 1994.

The irony is that the STEEP BY BIGELOW registration (first use in 2015) is now barring registration of the new STEEP application, here is the recent likelihood of confusion refusal.

So, I’ll leave you with a few questions that come to mind.

First, what’s the next move for the STEEP applicant?

And, looking back in time, did Bigelow add the signature line underneath the prominent use of “steep” to facilitate registration of STEEP BY BIGELOW and perhaps reduce the perceived risk of a trademark conflict with the prior registrant of STEEP for tea?

If so, will Bigelow regret not volunteering a disclaimer of the descriptive word “steep” since the USPTO oddly didn’t ask for one?

Assuming there are prior common law rights in STEEP and Bigelow wants to explain the lack of a disclaimer, might it point to the unitary mark theory?

Better yet, will the ineffective opposition (filed by the apparent principal of the prior registrant of STEEP) bar a future petition to cancel STEEP BY BIGELOW (to clear the path for re-registration of STEEP standing alone)?

If there are, in fact, prior common law rights in STEEP and the principal behind the STEEP application finds a way to federal court, has Bigelow relinquished a classic fair use defense in making “steep” part of its trademark use?

Finally, if risk avoidance is the goal (hoping for a steep slide into neutralizing a likelihood of confusion claim), might it be more effective to play with the meaning of the marks element of a likelihood of confusion claim, perhaps by adding graphic elements that invite other meanings of “steep” as compared to the more obvious one for tea?

World-famous chef Wolfgang Puck recently became embroiled in a trademark battle with Elon Musk’s brother, Kimbal Musk, a venture capitalist and entrepreneur who owns The Kitchen Cafe, a family of restaurants in Boulder, Fort Collins, Denver, Glendale, and Chicago. Puck has opened new restaurants with the names “The Kitchen by Wolfgang Puck” and “The Kitchen Counter by Wolfgang Puck.”

Musk’s company The Kitchen Cafe, LLC (“TKC”) filed a trademark infringement suit in Illinois federal court against Wolfgang Puck Licensing LLC (“Puck”). TKC’s complaint alleged Puck’s restaurant names infringed TKC’s common law trademark “THE KITCHEN.” Puck filed a motion to dismiss and also filed a separate declaratory judgment suit in federal court in the Northern District of Illinois.

In the declaratory judgment complaint, Puck argued that “the phrase ‘the Kitchen’ is fundamentally incapable of protection as a standalone trademark or service mark or as an element of a trademark or service mark because it is generic, or, at best, merely descriptive of such services, and that TKC’s assertion is legally untenable and factually absurd.”

Puck further argued that TKC has not acquired distinctiveness in “THE KITCHEN” as there are “hundreds of other restaurants which use ‘kitchen’ in their names.” Puck emphasized several such examples in the Chicago area, including the Lyfe Kitchen restaurant, which is a block and a half from TKC, the Travelle Kitchen, which is two blocks away, and the One North Kitchen & Bar, which is nine blocks away.

I think it will be a rocky road ahead for TKC to show that the claimed “THE KITCHEN” mark is protectable. Even if it makes it past the genericness hurdle, at the very least it’s descriptive, and it will be difficult to show acquired distinctiveness for several reasons, including the multiple “Kitchen” restaurants in close proximity. What do you think?

Out of curiosity, I also looked around the USPTO for registrations with the word “KITCHEN” that identify restaurant services. It appears the USPTO routinely requires a disclaimer of “KITCHEN” as an unregistrable portion of marks in Class 43 for restaurant services, such as RED RIVER KITCHEN, LIVING KITCHEN, and SECRET KITCHEN. One recent Office Action for the mark SOUTHWEST KITCHEN required a disclaimer of “KITCHEN” and specifically concluded that the word “KITCHEN” is generic for restaurant services. The same conclusion was reached by another Office Action for the mark WOODBERRY KITCHEN.

 

As we have discussed previously, trademark protection isn’t an exclusive club for words and pictures. Shapes, sounds, and even the tactile feel of a product can all qualify for trademark protection. And as a recent application from Hasbro shows, even the smell of a trademark might qualify for trademark protection.

The mark set forth in the application is technically the standard character mark “NON-VISUAL PLAY-DOH SCENT MARK.” After an amendment or a refiling though, Hasbro will provide a more detailed description of the mark. Hasbro did provide a miscellaneous statement that describes the scent in more detail as:

A unique scent formed through the combination of a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough.

Play Doh Fragrance

Scent marks are not unheard of, but can be difficult to successfully register. Legend has it that the first scent mark was registered in 1990, following an appeal to the Trademark Trial and Appeal Board. The mark was described as “high impact, fresh, floral fragrance reminiscent of Plumeria blossoms” used for sewing thread and embroidery yarn (Reg. No. 1,639,128). In re Celia, dba Clarke’s Osewez, 17 USPQ2d 1238 (TTAB 1990).

Like other non-traditional trademarks, registration of a scent mark imposes additional hurdles. A scent mark cannot be inherently distinctive and therefore the Applicant must establish that the mark has acquired distinctiveness, as set forth in the Trademark Manual of Examining Procedure 1202.13. Also, the claimed mark cannot be functional. Accordingly, if the smell is the natural result of a manufacturing process or provides non-reputational related advantages over competitive products, then the mark is likely functional and non-registrable.

Other scent marks have been registered, but not many are on the Principal Register. One company owns a registration for a “bubble gum” scent mark for shoes and flip flops (don’t ask me why). Another entity owns a registration for a cherry scent for automobile lubricants.  There are many more scent marks that could not clear the acquired distinctiveness hurdle, but were not deemed functional so were eligible for registration on the Principal Register. This would include Verizon’s “flowery musk scent” for its retail stores or another company’s strawberry-scented toothbrushes.

Will Hasbro will be able to overcome the functionality hurdle? Presumably some of the ingredients are included in order to get the right consistency. However it seems less likely that the cherry and vanilla fragrances are necessary, so my best guess is that functionality won’t prevent registration. Acquired distinctiveness is the bigger hurdle for scent marks, but I can already imagine the smell of Play-Doh just by thinking about it. The mark certainly has recognition. However to be completely honest, I never noticed the “vanilla” or “cherry” overtones. But maybe my toy clay palate isn’t sufficiently advanced to pick up on those notes.

Little Caesers

Although a precedential decision allowing a “Family of Marks” to be considered in the context of an ex parte prosecution of an application that has been refused under Section 2(e)(1) to show acquired distinctiveness, this ruling could not help Little Caesars overcome the refusal of its application for the mark “DEEP!DEEP! DISH PIZZA.”

Because “Deep Dish” is descriptive of a feature of the good (i.e., the pizza), there was no question the mark was descriptive.  Accordingly, Little Caesars sought to register the mark based on acquired distinctiveness under Section 2(f) of the Lanham Act.  To do so, Little Caesars needed to show that the “relevant public understands the primary significance of the mark as identifying the source of the product (i.e., the primary significance was that the goods are from Little Caesars), rather than the product itself (i.e., that it was pizza).

With pizza being one of my absolute favorite foods, I am very familiar with Little Caesar’s

Pizza Pizza

trademark.   The fourth largest pizza chain argued that the applied for mark “DEEP!DEEP! DISH PIZZA” should be viewed in light of its “family” of double word marks with explanation marks.  Unfortunately, the Board found that Little Caesars did not meet the substantial burden of showing such a family of marks.  Mere ownership of marks is not enough.

The Board discussed a prior decision wherein they rejected a company’s claim of a family of marks based on ownership of “SICLE” marks through ownership of the marks CREAMSICLE, FUDGSICLE and FRUITSICLE (among others).   In Consolidated Foods Corp. v. Sherwood Med. Indus., 177 U.S.P.Q. 279 (TTAB 1973).

You might ask what is a family of marks that has been recognized.  The Board observed that the common characteristics of a family of marks is typically the same suffix or prefix.   The most famous is probably the “MC” family of marks owned by McDonald’s.  For example, the company owns:

However, the Board noted that the concept of a “family” of marks was not necessarily limited to prefixes and suffixes.

What is your favorite “family” of marks?   Or, what do you think should be considered a “family” of marks?

We’ve written a lot about single color trademarks here over the years. Weems, the owner of the Flexilla brand has unleashed its federally-registered chartreuse-colored non-traditional trademark for “compressed air hoses” against Plews for selling air hoses with a “bright florescent green color” — a color that Plews claims online “reduces chances of tripping while on a job site.

Weems owns a non-traditional trademark registration on the Principal Register for chartreuse in connection with “compressed air hoses” — but, it recently abandoned a single color trademark application for electrical power extension cords, and it hasn’t yet obtained a registration on the Principal Register for chartreuse in connection with garden variety hoses (i.e., garden hoses):

FlexillaHose

Weems owns a pair of Supplemental Registrations for the chartreuse color (one having a black stripe, the other having a green stripe) in connection with watering hoses and garden hoses, but two months ago its attempt to achieve Principal Registration for chartreuse in connection with those goods and others was refused by the USPTO (Weems has until April 2017 to respond to the failure to function as a trademark and lack of distinctiveness refusals).

More thoughts on this case tomorrow, but in the meantime, do you think Plews tripped into this trademark dispute, or does it likely have a plan and a valid defense?

Hat tip to Jason for flagging the Weems v. Plews trademark complaint for us, currently pending in the Northern District of Iowa.

Above the Law recently published a Techdirt story reporting that the USPTO denied Whole Foods‘ attempt to federally-register the laudatory trademark: “World’s Healthiest Grocery Store“.

The Techdirt story incorrectly seems to suggest that the global nature of the phrase is what caused the application to be refused, since Whole Foods has not yet achieved a truly global reach, according to a Washington Post article.

Truth be told, actually there is no connection between the extent of Whole Foods’ global reach and the USPTO’s decision to initially refuse registration, contrary to the Techdirt story.

In fact, the USPTO didn’t focus on whether the phrase is true, because it is laudatory and “merely describes a feature or characteristic of applicant’s services,” such that the consuming public would view it as mere puffery, not susceptible to actual proof of its truth.

Had the USPTO thought the phrase was capable of proof and it disbelieved the claim, it would have sought to refuse registration under the deceptiveness registration bar of Section 2(a) of the Lanham Act, but it didn’t.

In fact, the USPTO offered up to Whole Foods — once it puts in evidence of its use of the phrase as a trademark — an amendment from the Principal to the Supplemental Register, a more suitable address for non-deceptive marks capable of becoming distinctive in the future.

Of course, one of the principal benefits of a Supplemental Registration is that it prevents others from registering confusingly similar marks while the brand owner works to build and acquire the requisite distinctiveness needed for a Principal Registration.

In the end, it will be interesting to see how Whole Foods responds to the USPTO’s laudatory and descriptiveness registration refusal.

I’m thinking before it jumps at the USPTO’s Supplemental Register offer, it may try to argue against the descriptiveness refusal in the same way it successfully did for its federally-registered “America’s Healthiest Grocery Store” trademark application, when back in 2010 it overcame a similar laudatory and merely descriptive registration refusal of the highly similar mark.

So, while it’s clear that the truth of the phrases comprising the those “healthiest” marks had nothing to do with the initial laudatory/merely descriptive registration refusals, what’s not clear to me is why the USPTO didn’t refuse registration based on a prior Supplemental Registration for “The World’s Healthiest Foods” mark — owned by these folks.

-Wes Anderson, Attorney

No company’s branding strategy is studied more meticulously than Apple, Inc.’s — and of late, Apple has taken a turn for the descriptive with its various operating systems.

Every company wants its brands to be distinctive — and the arbitrary APPLE mark is among the most well-known. But its new operating system naming strategy has relied on descriptive (if not generic) wording.

From a naming standpoint, everything started out well with the Macintosh Operating System — or Mac OS (first coined in 1996) for its various desktop and portable computers, Macintosh and “Mac” already being famous trademarks. Then, when iPhone OS became “iOS” in 2010, it took the “iDevice” naming convention from the iMac, iBook, iPod, iPhone, and iPad and brought it to software. But Apple didn’t use this name without conflict — in fact, it licenses the iOS trademark from Cisco.

From there, Apple has continued to enter new markets — including smartwatches (with the Apple Watch) and set-top streaming devices (with the Apple TV). With them, new operating systems followed, this time named simply “watchOS” and “tvOS.”

Screen Shot 2016-04-22 at 7.25.35 AM

Perhaps these descriptive names were intended to ward off conflict with any other Silicon Valley brand owners, but Apple has put a different spin on this in public. Phil Schiller, senior vice president of worldwide marketing at Apple, said the following in a Q&A last year (bolding added for emphasis):

Gruber: watchOS, with a lower-case “w”. Are you trying to kill me?

[Laughs.]

Schiller: [laughs] It’s, um… I think it works really well. I think it’s nice, it’s ownable, it’s special

I think, you’ll see. Give us time, we’ve been through many fun naming things. This is an easy one. There have been many fun naming things through the years — some very emotional, some very easy — and most of the time, when all’s said and done, you look back years later, people say “Yeah, you guys were right, it all made sense together.”

So I think we’re doing the right thing.

It’s not clear whether Schiller is referring to the use of a lower-case first letter or the entire mark, but the question still stands: is “watchOS” truly an ownable mark? No, or at least not yet.

Apple has a Supplemental Register registration for WATCHOS, which is the “junior” register for marks that are capable of trademark significance, but are merely descriptive at the time of registration. Apple’s also filed two pending applications for the same mark on the Principal Register (in classes 9 and 42), but each just received office actions earlier this week refusing registration on grounds of mere descriptiveness.

It’s clear WATCH OS is descriptive wording — it’s arguably even generic in the context of smartwatch operating systems. To overcome these refusals, Apple would either need to settle for the Supplemental Register again or prove to the Trademark Office that, just a year since its first use, “WATCHOS” has acquired secondary meaning as a brand name to the public.

Apple, in short, has yet to really prove that watchOS is truly “ownable.” We’ll see if Apple is able to put its enormous weight and brand equity behind WATCHOS and obtain Principal Register registrations. For the rest of us, it’s important to remember what’s ownable is not necessarily available, and what’s available is not necessarily ownable.

 

Life is full of ups and downs. The world of trademarks often tends to mirror life. Yet, for the time being, the USPTO currently recognizes only one brand and mark as living solely on ups:

United_Parcel_Service_logo_2014_svgAs it turns out, those three letters form a pretty powerful brand and trademark. Although there may have been two previous federal registrations for the same letter-string, one covering socks and another covering “retail marketing programs for products of others,” those have long since expired, and the USPTO database now is surprisingly clear of any others, to the point where even goods like specialty metal pipes and carpet and rugs can’t find a path to registration.

 

United_Parcel_Service_logo_(1961–2003)

As a young child in the late sixties I recall a distinct curiosity about the brown delivery trucks called “ups” — as opposed to “downs,” I figured. Little did I know that “ups” should have been pronounced “u-p-s” not “ups,” so I can picture my imagination running wild, thinking the letters suggested the thrill of receiving packages from brown delivery vans (long before hearing about what Brown could do for me), then one day, my imagination probably was shattered to learn that UPS actually just meant United Parcel Service:

UnitedParcelServiceToyTruck

At the time, with UPS, I saw a word, and I probably didn’t appreciate what an acronym or initialism was, and I’m certain I didn’t appreciate the difference between them. Even more, I’m certain I knew nothing about the TMEP (initialism for Trademark Manual of Examining Procedure, not an acronym), explaining why a trademark savvy brand owner might not want to link its acronym or initialism trademark to the words it is derived from:

“As a general rule, an acronym or initialism cannot be considered descriptive unless the wording it stands for is merely descriptive of the goods or services, and the acronym or initialism is readily understood by relevant purchasers to be “substantially synonymous” with the merely descriptive wording it represents. A mark consisting of an abbreviation, initialism, or acronym will be considered substantially synonymous with descriptive wording if: (1) the applied-for mark is an abbreviation, initialism, or acronym for specific wording; (2) the specific wording is merely descriptive of applicant’s goods and/or services; and (3) a relevant consumer viewing the abbreviation, initialism, or acronym in connection with applicant’s goods and/or services will recognize it as an abbreviation, initialism, or acronym of the merely descriptive wording that it represents. Thus, without additional evidence, an applicant’s proprietary use of an acronym is not sufficient to establish that the acronym is readily understood to be substantially synonymous with the descriptive wording it represents.”

Does that help explain why the words United Parcel Service have either vanished or become far less conspicuous on those busy brown vans? From a trademark perspective, probably not, after all, United Parcel Service is not a merely descriptive phrase, as it was federally-registered without evidence of aquired distinctiveness. Any marketing types know or want to hazard a guess as to why the linkage is either gone or more subtle now?

UPSTruck

My sense, from a trademark perspective, is that ambiguity as to precise meaning and pronunciation probably help to broaden the scope of trademark rights. Assuming distinctiveness exists, to the extent all three — word, acronym, and initialism — plausibly apply to UPS, it may help explain, in part, why more marks of others might be snared in the trademark owner’s likelihood of confusion net.

So, if you’re planning on creating a brand based on the letter-string UPS as an acronym or initialism derived from a company name or some other phrase, it’s best to first confirm the acronym isn’t descriptive or generic, and then show UPS in a graphically distinct manner while keeping it closely linked to the fully spelled out words, as this one did:

UnitedPropertiesSouthwestIn case you’re wondering what inspired this delivery of information to our loyal readers today, it hasn’t escaped me that UPS is now apparently linking the meaning of UPS to United Problem Solvers in television advertisements, so some digging seemed appropriate. Perhaps having multiple possible meanings to UPS encouraged by the trademark owner is yet one more way to broaden the scope of rights in UPS. What do you think?

As always, stay tuned, as it turns out, UPS’ United Problem Solvers federal trademark applications may be refused registration by the USPTO (another initialism, not acronym, for United States Patent and Trademark Office) based on another’s prior pending trademark application for Problem Solvers in connection with highly similar services: “Freight logistics management; Transportation logistics services, namely, arranging the transportation of goods for others; Transportation logistics services, namely, planning and scheduling shipments for users of transportation services.”

Anyway, it looks like Big Brown is solving this problem by opposing registration of Problem Solvers, alleging likelihood of confusion with its prior registration for Packaging Problem Solvers.

Jelly Belly_Template.inddLast week Jelly Belly Candy Company filed a non-traditional trademark application with the USPTO to federally register the shape of its Jelly Belly candies. The claimed mark is drawn like this:

JellyBellyDrawingAnd, described like this: “The mark consists of a candy having a rounded squat kidney-like shape, with one longer side being a continuous arc and the opposite side have a slight depression or dimple in its arc, the center diameter and height of the candy being approximately half its length.”

The application claims use since July 15, 1976, and asserts acquired distinctiveness based on “substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.”

As robust as the Jelly Belly trademark portfolio is shown to be on the USPTO database, the application referenced above surprisingly doesn’t claim prior existing registrations owned by Jelly Belly that appear to reinforce the distinctiveness of the shape. Can you say, look for?

The most obvious ones involve the Jelly Belly logo registrations depicting the candy shape in two dimensions. But, what I was really surprised to find is that Jelly Belly has already run around the non-traditional trademark track a few times with other configuration trademark registrations that reinforce the shape of the Jelly Belly candy on packaging and several other non-candy food products (burger and sandwich buns; meat patties; and pizza):

JellyBellyCafe

To the extent the USPTO wants more evidence of acquired distinctiveness than a mere five year substantially exclusive use claim, those little gems ought to help.

Any predictions on how sweet the Jelly Belly configuration trademark application will turn out to be for candy? Stay tuned, the application should be examined in about 3-4 months.

Earlier this month Southwest Airlines launched a brand new ad campaign called “Transfarency,” which is said to highlight the airline’s “low-fare credo and its lack of bag fees, change fees or hidden fees for passengers.

TransfarencyChartTransparency seems to be the buzz word in branding and marketing circles lately, so what better way to communicate it than through coining a new word that tries to makes you think of it?

Sounds complicated, why not just say, Bags Fly Free, you ask? One answer might be, been there, done that. Another might be, someone was bored. But most likely, the Transfarency campaign appears to build on and broaden the previous success of the narrower Bags Fly Free campaign: “Transfarency is not a new chapter for us, but another tone to the bell that we’ve been ringing for more than 44 years.

Let’s just say, that’s Strategery at its finest!

The airline’s Transfarency website speaks of “Low fares. Nothing to hide.” It goes on to explain: “We’re all about being open and honest with Customers and making sure pesky fees stay away from our low fares.”

Under the clever hashtag “FeesDontFly” the airline taunts the competition: “Are you over other airlines charging you first and second checked bag fees, change fees, and what-the-heck-was-that-even-for fees? At Southwest we do things differently.”

A Southwest Airline executive is quoted as saying: “People are tired of being nickeled and dimed and it’s time to remind people that there is a different airline out there.” And, in doing so, one of the ads says: “We don’t dream up ways of tricking you into paying more.

It will be interesting to see whether any of Southwest’s named competitors try to ground any of these statements as false or misleading advertising.

As much as I can’t stand the nickeling and diming by other airlines, I’m not sure it’s fair to call those fees hidden, or tricks? I’d call them painful, annoying, maybe more than irritating, at times.

Now, back to the Bags Fly Free tagline for a moment. It’s not surprising to me that the BAGS FLY FREE tagline initially registered on the Supplemental Trademark Register, back in 2009, as a merely descriptive mark lacking inherent or acquired distinctiveness.

What was a bit surprising to learn is the current status of the more recent BAGS FLY FREE registration on the Principal Register. While the USPTO’s online TESS page shows the mark to be registered under Section 2(f) of the Lanham Act, meaning the mark has acquired distinctiveness since its first use back in 2009, the TSDR Page and the registration itself bears no reference to Section 2(f).

Southwest argued for inherent distinctiveness, contrary to its previous acceptance of a Supplemental Registration in 2009, with arguments for suggestiveness gems like this:

“The phrase ‘bags fly’ creates a mental image of flying suitcases. There is, however, no instantaneous association of one specific service to Applicant’s mark because of the literal meaning of ‘bags fly,’ which is nonsensical. For this reason, thought and imagination is required to understand the relationship between the Applicant’s mark and its services.”

But Southwest, at the same time, hedged its bet on this argument, also arguing in favor of acquired distinctiveness under Section 2(f), in the alternative, putting in significant evidence in favor of establishing that the mark has acquired distinctiveness.

The question remains, did the USPTO intend for the most recent BAGS FLY FREE registration to issue on the Principal Register as an inherently distinctive mark, without a showing of acquired distinctiveness, or was it an oversight, and did the USPTO really intend for the mark to register under Section 2(f), as the TESS page appears to indicate?

A little transparency on whether the USPTO actually bought the suggestiveness ticket about flying suitcases would be nice. I’m thinking, most Examining Attorneys would have checked that one at the baggage claim.

Either way, one more possible advantage of Southwest’s Transfarency approach is that there is no reasonable question about whether that mark is inherently distinctive — so, no need for any showing of acquired distinctiveness is required.