We’ve been down this road before, some themes intersect, and trademark value is filtered out:

The intersecting themes on tap for the day are: Zero, Branding, Trademarks, and Loss of Rights.

ZEROWATER is a perfectly suggestive, inherently distinctive, and federally-registered trademark with “incontestable” status as a source-identifier for “water filtering units for household use.”

Judging from the specimens in the file history at the USPTO, the brand owner appears to have done a nice job leaving consumers to imagine the connection between the mark and the goods.

Branding ZEROWATER with taglines like “For water that’s only water,” “Get more out of your water,”  “If it isn’t zero, zero, zero, it isn’t just water” “If it’s not 000, it’s not ZeroWater,” and “If it’s not all zeros, it’s not ZeroWater,” all help to block Zero from pure and mere descriptiveness:

On the other hand, as the top image of the retail endcap shows (click the image to enlarge), the current packaging and product description adds blunt force to the now obvious meaning of ZERO:

“LEAVES ZERO DISSOLVED SOLIDS BEHIND”

Had this purely descriptive use of ZERO been present at filing, then ZEROWATER easily could have been refused as merely descriptive — why add it now? Especially with this far better existing copy:

“REMOVES VIRTUALLY ALL DISSOLVED SOLIDS”

While ZEROWATER can no longer be challenged as merely descriptive for “water filtering units for household use,” what about future applications having slightly different descriptions of goods?

Given all that Coca-Cola has done to turn ZERO generic in the soft drink category (meaning ZERO Sugars and/or Calories), shouldn’t ZEROWATER remove virtually all opportunities for genericness?

When a brand owner migrates toward descriptiveness with its copy, leaving the consumer with zero need to exercise any imagination as to meaning, there just might be “nothing” left to protect.

One of my passions is to find common and favorable ground between legal and marketing types.

One of the readings during week three of Seth Godin’s intensive altMBA workshop reminded me of a great example to illustrate how a valid marketing goal can align with strong legal protection.

An excerpt from Seth’s All Marketers are Liars book was part of the reading material for a project on How Organizations Change, and this portion of that excerpt made me think of trademark types:

Great stories are subtle. Surprisingly, the less a marketer spells out, the more powerful the story becomes. Talented marketers understand that the prospect is ultimately telling himself the lie, so allowing him (and the rest of the target audience) to draw his own conclusions is far more effective than just announcing the punchline.”

Trademark types can learn a valuable lesson here about the protection of traditional trademarks: Subtlety can yield immediately protectable, inherently distinctive and inherently strong marks.

We’re talking about the difference between suggestive marks on the one hand, the favored hand, and descriptive marks or generic terms on the other hand, the less favored trademark hand.

Let’s keep in mind though, when we’re operating in the realm of non-traditional marks, subtlety may not be your friend, as the story told there needs to be far more blunt, direct and obvious to build and enjoy trademark rights.

In searching our vast content on DuetsBlog, I’m reminded of something similar I wrote more than seven years ago now, and I’m not sure I can say it any better now, so here it is, again:

“We have spoken and written about not “hitting the consumer over the head” in the context of naming and placement on the Spectrum of Distinctiveness, instead, encouraging the use of suggestive as opposed to descriptive names and marks, but, let us not forget, there is a trademark paradox that does appear to reward use of a blunt instrument, called look-for advertising, at least when it comes to developing trademark rights in certain non-traditional marks.”

So, some subtle stories told in a name can make powerful trademarks with a broad scope of immediate protection. And, some will still require the help of an obvious and blunt instrument.

The key is knowing the difference and when each approach is required. My fear is that the USPTO’s growing obsession with failure to function refusals (here, here, and here) and mere information refusals will begin to spill more prominently into traditional trademarks?

Does anyone else see this happening before their very eyes?

In other words, to please the USPTO, are we needing to move toward being more blunt about whether even a traditional word mark is actually designed to perform as a trademark?

Let’s hope not.

Oh, and by the way, I was speaking above with subtlety about being past the half-way point (the dip) in Seth’s altMBA workshop, so I’ll be blunt now, it is amazing, it is transformative, do it!

We’ve written quite a bit over the years about the Spectrum of Distinctiveness for trademarks, and the all-important difference between suggestive marks and merely descriptive ones, with only the former being allowed immediate rights based on first use.

Creativity is what separates the power of suggestion from the weakness and limbo of descriptiveness. Remember the floating feather example and all the silly guesses as to what it might suggest? And, those who persist in smashing an otherwise suggestive brand?

One of my favorite local examples of a great suggestive mark is Murray’s famous Silver Butter Knife trademark for steak. With all the long lines for salad places in the skyway system here in Minneapolis, Murray’s appears to have stepped up its advertising campaign.

But, I’m left wondering, is Silver Butter Knife only a trademark? Or, does it not also function as a service mark too? After all, the steak is prepared in the kitchen and then carved at table-side, Murray’s certainly touts the “experience,” which seems to point to the service.

What’s more, in terms of scope of rights, if Silver Butter Knife had also been registered for restaurant services, do you suppose the USPTO might have done some heavy lifting for Murray’s and refused registration of BUTTERKNIFE WINES for wine?

Oh well, either way, it looks like BUTTER brand wine is going to stand in the way of BUTTERKNIFE WINES instead of the USPTO, and perhaps do Murray’s bidding for them.

By the way, would anyone like a serrated knife to cut through all this trademark clutter?

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.

 

InterstateBattery

An oil change and tire rotation over the holiday yielded a little free time for me in our local Goodyear dealer’s waiting room, and it left me wondering about the Outrageously Dependable tagline of Interstate Batteries, so I captured the above image to tell a little blogworthy — if not blimpworthy — trademark story.

My question was whether the Outrageously Dependable tagline is federally-registered on the Principal Register, and if so, whether acquired distinctiveness was required to achieve this status, since Outrageously Good Coffee was recently refused registration, as it “merely describes, in a laudatory manner, a feature of the coffee—how good the coffee is.”

Turns out Outrageously Dependable is registered on the Principal Register without a showing under Section 2(f) — no acquired distinctiveness needed, so it is apparently considered inherently distinctive and suggestive of a desirable quality of the goods, not merely descriptive.

For some reason, Outrageously Dependable, does not merely describe, in a laudatory manner a feature of the batteries– how good or dependable they are, instead it is creative enough to suggest this without connecting all the leads and wires for the consumer.

Ponder that through the end of the year, and let us know whether you agree.

SmashBurgerPromoWhy does Smashburger continue down this road of smashing its trademark rights?

Especially, despite our previous cautions:

Another Marketing Pitfall: How to Crush a Smashing Brand Name & Trademark

Can Anyone Smash a Burger?

Crushing a Perfectly Good Brand Name?

In the meantime, we’ll keep watching out for marketing pitfalls and unnecessary marketing copy that pushes a perfectly good suggestive mark across the line to mere descriptiveness.

There aren’t too many things I enjoy more than speaking about the legal implications of branding.

Our friends at BlackCoffee captured a talk I gave to a group of marketing types a while back, on black and white film (thank goodness), and they have graciously posted a 34 minute excerpt, here.

Some of the topics I discussed include:

I’d love to hear any feedback on the talk.

I’d also love to hear from you if you have a group or team that might be interested in having me deliver a talk on trademarks and the legal implications of branding.

–Susan Perera, Attorney

Every once in awhile I run across a product and find myself wondering… why did they name it this?  I recently ran across the Duck Tape brand shown below.  My first reaction was “duck” is a commonly misused term to identify what should be called “duct” tape, and this brand owner interestingly chose to use that common misconception to create a brand.

Surprisingly, there are quite a few online resources that assert the product was first called “duck tape” when it was developed during World War II as a waterproof tape for military purposes, that repelled water like a duck.

However when the Duck Tape trademark was registered in 1983, it didn’t identify that the goods were previously commonly referred to as “duck tape.”  Rather the application originally listed its goods as “elongated tape having a pressure sensitive adhesive on one side; duct tape.” (Currently the identification of goods does not include the term “duct tape.”)

The mark was initially refused registration on the grounds the mark was merely descriptive of the goods, namely, duct tape, and “duck” was a phonetic equivalent of “duct.”  However, the applicant was able to argue around this refusal, putting forth arguments that the “duck” and “duct” are not equivalents.

Putting aside its prosecution history, what do you think of the naming choice?  Do you think “duck tape” is descriptive of the product, or maybe you would go as far as calling it… generic?   And, what are your thoughts about using a common misconception as a brand?

 

In the wake of all the discussion and debate over “trademark bullying,” NFIB (National Federation of Independent Businesses), the self-proclaimed Voice of Small Business, recently offered its members and followers “5 Steps to Avoid Corporate Trademark Bullying“:

  1. Do Your Homework;
  2. Choose a Descriptive Business Name;
  3. Use Common Sense;
  4. Consider Buying Intellectual Property Insurance; and
  5. When in Doubt, Consult an Attorney.

I suppose it’s kind of hard to argue, in general, with doing your homework, using common sense, buying insurance, and when in doubt, consulting an attorney, but choosing a descriptive business name to avoid a trademark conflict? That’s taking it a bit too far, don’t you think?

Actually, when you drill down below each step, there is much more to say about each of them, and I’ll make sure to do so later, but for today, I’ll focus on what I call, “dreadful Step Number 2.”

As you know, we don’t like the D-word here, and as you will recall from a couple of years ago in my prior posts, “A Legal Perspective on the Pros and Cons of Name Styles,” and “Staying on the Right Side of the Line: Suggestive v. Descriptive,” we established the strong preference for suggestive as opposed to merely descriptive names and marks, and we addressed the all-important Spectrum of Distinctiveness for trademarks:

Nevertheless, NFIB, in support of mere descriptiveness, indicates:

If you’re deciding what to name your business, you’re more likely to prevent a trademark infringement lawsuit if you pick a general name that describes your business’ services—Plumbing Contractors Inc. or Accounting Services LLC, for example—instead of something more specific. While your business name may overlap with another’s, there is less chance for them to stake a claim on those terms. Just make sure that your business name still stands out.

Putting aside the unanswered question of how a small business may hope to “stand out” if it follows “dreadful Step Number 2,” let us not forget, Subway recently convinced the U.S. Trademark Office it has exclusive rights in the term “footlong” for submarine sandwiches, claiming that it has acquired distinctiveness in the “merely descriptive” term, and is asserting those claimed rights against Casey’s General Store, among others.

If a small business really wants to have a hope for avoiding any and all possible trademark conflicts, it needs to live in the generic category (Dan’s take, here), not the descriptive one (where there is the real potential for the acquisition of exclusive rights by others and where there are naturally more legal claims that actually surprise their targets), but who wants to be generic?

I can’t and don’t embrace the message of waving the white surrender flag, conceding any hope of naming creativity or any hope of clearing and adopting a truly distinctive name or mark. Even small businesses with limited budgets can and should do better.

If a small business uses common sense, does its homework, and consults a competent and experienced trademark attorney, there is no reason to limit itself or place false hope in pursuing “dreadful Step Number 2.”

If nothing else, I think we may have found another D-word.

Hat tip to Mark Prus who flagged this topic for me and even offered up a portion of the title, minus the question mark.

This scene from the Minnesota State Fair reveals how the “About a . . . Foot Long Hot Dog” stand is a “State Fair Taste Tradition. . . .” With respect to the name, I have always believed that the “About a . . .” qualifier is lawyer-driven to avoid false advertising lawsuits if a ruler might reveal a stretching of the truth and/or the wiener unintentionally coming up short on the promised twelve inches.

Turns out, we have much more to fear in the world of “Foot Longs” than literally false trademark claims or even stubby wieners in a bun at the State Fair, so, let’s name that fear: Subway.

Yes, Subway claims to own the word “footlong” as a trademark for sub sandwiches. Now, I fully appreciate that Subway has probably spent lots and lots of money on television advertising for its “$5 Footlongs” promotion, but to claim exclusive rights in the word “footlong” for subs is ridiculous (especially when the ads themselves have multiple references to the fact the term is directed to the length of the sub), in my not so humble opinion. Let’s not forget that Lite is generic for beer.

Subway’s cease and desist letter prompted Casey’s General Store (a convenience store chain based in Des Moines, Iowa) to bring a declaratory judgment lawsuit:

“Specifically, this action seeks, inter alia, a declaration that Casey’s use of the generic term “footlong” to describe a footlong submarine sandwich, commonly referred to as a “sub”, is not a violation of any right currently owned by Subway; and it requests an order so saying and declaring that “footlong” for description of sandwiches including submarine sandwiches is generic. Further Casey’s seeks an order that Subway’s attempt to assert trademark rights against Casey’s for its use of “footlong” for sandwiches and/or restaurant services is frivolous litigation and seeks an award of damages and attorney’s fees against Subway.”

If Casey’s is right, this could satisfy the exceptional case provision of the Lanham Act, which could result in Subway being ordered to pay Casey’s attorneys fees in defending against the claim.

It appears that Casey’s aggressive response to the cease and desist letter is designed to take advantage of all the current focus and attention on “trademark bullying” — although that specific phrase does not appear anywhere in the complaint.

As you may recall, I have suggested that “there seem to be enough existing legal tools to handle a real trademark bully, namely, one that brings frivolous, bad faith, vexatious or objectively baseless litigation.” Casey’s appears uniquely poised to test this proposition.

In support of its claim of frivolity, Casey’s relies, in part, on a transcript from a 2009 Subway case where a federal district court judge in the Eastern District of Virginia indicated he thought that “footlong” should be considered generic for subs.

With respect to Subway’s pending trademark and service mark applications for “Footlong” at the USPTO, Casey’s has this to say:

Subway has sought trademark protection for “footlong” for sandwiches and restaurant services in trademark application Nos. 77/752,328 (“Footlong” for restaurant services) and 77/324,328 (“Footlong” for sandwiches). The application for “footlong” for sandwiches was approved for publication by the trademark examiner, but has not issued as a registration because there are many ongoing opposition proceedings filed by the likes of Long John Silvers, Taco Bell Corporation, Kentucky Fried Chicken, Dairy Queen, Pizza Hut, Inc., and Domino’s, just to name a few. The application for “footlong” for restaurant services is currently under rejection as a mark that consists of the generic name for something that is served in providing restaurant services. A true and correct copy of the rejection issued by the trademark examiner is attached hereto as Exhibit C. Subway’s attempt to establish an acquired distinctiveness under § 2(f) of the Lanham Act has to date failed.

Here’s a question, how on earth did the word “footlong” for sub sandwiches get approved for publication at the USPTO?

Here’s another, does Subway deserve to have each and every customer measure the length of their purchased sub to see if it comes up short, and if so, suffer the consequences failing to add the “About a” qualifier too?