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.

As you know, I enjoy telling trademark stories about soaps encountered on my various trips:

Lather® (brand) soap recently caught my eye — and the lens of my iPhone — while in Palo Alto.

Interestingly, the USPTO has treated the word as inherently distinctive, in Lather’s registrations.

In other words, not merely descriptive, even though using the product surely produces some.

So, some imagination, thought, or perception is needed to understand the connection with soap?

If so, I’m thinking Lather® soap is certainly close to the line between descriptive and suggestive:

Brand managers, would you be in a lather if faced with these other “lather”-styled soap marks?

Trademark types, what gets you all lathered up when it comes to trademark enforcement?

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.

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?

While many other places in the country are enjoying signs of spring, here in the Twin Cities, we’re hanging on to the white stuff, for a while longer; we shoveled 22 inches worth this past weekend!

There’s something about our long winter here that makes fresh fruit in the grocery store all the more appealing, interesting, and engaging, especially when it’s an ordeal to even get to the store:

So, it’s not exactly Buddha’s Hand, but the enormous SUMO Citrus displays have caught my attention and interest this winter. This time, the brand name is actually the largest wording:

SUMO as a brand of food, has the initial challenge of overcoming the frequent “you are what you eat” admonition, and any resulting fear of the mark describing the results of over-consumption.

And, the promotion as “the sweetest citrus you’ll ever eat,” perhaps reinforces the concern, but the silly rotund shape of the fruit itself and the informative tagline helps prove a different meaning.

The combination of those additional brand elements helped convince me of its overall cleverness and suggestiveness, especially after reading the SUMO Citrus story, and seeing the “top-knot”:

“It is the biggest mandarin you’ve ever seen. It has a distinctive shape with a prominent “top-knot.” The peel is bright orange, bumpy and loose so it peels effortlessly. The delicate sections separate easily. It’s seedless, juicy without being messy, and it is quite probably the sweetest citrus you’ll ever eat.”

SUMO kudos to the creative who saw the Japanese “knot-top” (a/k/a “man bun“) in the fruit.

Less kudos for the apparent decision to only seek registration of the composite SUMO CITRUS, and not the broader and stronger SUMO mark itself without the other generic wording or man bun.

It is frequently becoming more and more difficult to remember all the topics we’ve covered here over the last — almost — nine years. A recent Snickers end cap display jogged my memory:

Turns out, eight months into this little adventure we call DuetsBlog, I wrote a blog post called Delicious Trademarks: Candy Bar Cross-Section Trademarks? Then, a year later I wrote this one.

My only friendly amendment to the above point of sale end cap convenience store display is to swap the ™ notice for the coveted (or not so, under certain circumstances) ® registration symbol.

Wow, I have been asleep at the switch on this topic, my sincere apologies dear readers. Nearly a year after my second post on this topic, Mars filed an application to register this trademark:

After a couple rounds of descriptiveness office actions, Mars was able to persuade the Trademark Office that the claimed non-verbal candy bar depiction had acquired distinctiveness.

But, that wasn’t the end of the story, because as is often the case when unusual trademark protection is sought, a direct competitor came knocking, in this case, Hershey Chocolate opposed.

Our friend Marty Schwimmer over at the Trademark Blog was johnny-on-the-spot back in 2013 as Hershey opposed the day before Halloween, while I was distracted with this cheesy topic.

The functionality opposition continued for roughly three years until Hershey was able to extract some pretty sweet concessions from Mars, as revealed in this Consented Withdrawal of Opposition Without Prejudice Contingent Upon Amendment of Application.

So, after a little interpretation and modification by the Board, the registration issued with these express limitations:

“The mark consists of a cross-section of a candy bar showing layers within the candy, namely, a middle light brown layer containing several tan-colored peanut shapes and a bottom tan layer, all surrounded by a brown layer. The mark depicts a distinctive two-dimensional cross-sectional view of a candy bar.”

“No claim is made to the exclusive right to use the following apart from the mark as shown: THE SELECTION OF CANDY BAR INGREDIENTS DEPICTED IN THE MARK OR TO THE CONFIGURATION OF A CANDY BAR CONTAINING THOSE INGREDIENTS, EXCEPT AS DEPICTED IN THE APPLIED-FOR MARK.”

Now, there’s a mouthful. Suddenly, the actual issued trademark registration, doesn’t seem all that non-traditional, non-verbal yes, but clearly a two dimensional slice of, let’s say, non-configuration.

Given that, would you be speechless explaining to a client (anyone other than Hershey) what it can and can’t do in advertising food looking something like that when broken in half?

Another question, why doesn’t the end cap display of the cross-section match the drawing of the registered mark? For what it’s worth, I’m more tempted by the end cap than the registration.

Last question, what about Mars’ representation that the claimed mark “always appears in exactly the same manner when used by Applicant.” Maybe it was true when made, don’t know for sure.

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?

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!

 

The above advertising billboard is plastered all over the Twin Cities at the moment, and it got me thinking, so here I am, once again, writing about Coke Zero, remember this can?

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

So, why on earth has Coke positioned SUGAR immediately next to the word ZERO beneath the Coca-Cola script in widespread billboard advertising and packaging?

Putting the key trademark issue aside, it doesn’t even look like there is a good business case for it?

Had the above billboard advertisement and depicted bottle been part of the TTAB case decided last year, instead of specimens like the above can, seems probable we’d have seen a different result.

Has Coke forgotten that like functionality for non-traditional trademarks, genericness can be raised as a validity challenge for word marks, at any time?

Coke Zero, welcome to the Genericide Watch.