A local real estate agent has argued that the above design is unique enough to make the SOLD! designation distinctive and registrable as a service mark for “information in the field of real estate and real estate services,” among other goods and services. The USPTO wasn’t sold on the idea, but not for the expected reason.

Given the USPTO’s growing love for the “merely informational matter” category of incapable subject matter — essentially contending the subject matter fails to function as a trademark or service mark — I fully expected to find that refusal in the file history of the application, prior to abandonment of the application, but no.

Instead, the USPTO denied registration based on two prior marks owned by unrelated entities: (1) SOLD.COM for “providing access to, and information on, specific real estate listings and related products and services via a global computer network;” and (2) SOLD IN 32 DAYS for “real estate brokerage” services.

The USPTO surprisingly failed to raise the merely informational, failure to function refusal; perhaps it would have arisen had the Applicant been able to overcome the likelihood of confusion refusals, as the remaining descriptiveness refusal couldn’t prevent the Applicant from amending capable matter to the Supplemental Register.

It’s hard to conceive any rendition of SOLD! being considered inherently distinctive for much of anything in the field of real estate; even if the design elements were so unique to make the distinctiveness sale fly, it would still require that the wording SOLD! be disclaimed as non-distinctive matter — either descriptive or incapable.

What do you think? Are SOLD.COM and SOLD IN 32 DAYS really capable of serving as service marks for real estate services? If so, do you agree that SOLD! is capable, but properly refused registration because it’s too close to both of the prior marks? If they can coexist peacefully, then why can’t SOLD! peacefully coexist too?

I’m not a fan of the USPTO’s growing emphasis on the merely informational, failure to function refusal, as incapable matter, but here I am thinking it may have been the most appropriate refusal for each of these claimed marks, which would have allowed them to peacefully coexist and kept them off the Supplemental Register.

I’ve heard about how some believe they are so gifted they can sell ice to an Eskimo, but that doesn’t necessarily mean the USPTO is in the market. Having said that, if SOLD! was worth giving it the old college try, then why not honor our previous tempting invitation to test this wingspan pose with the USPTO?

I don’t think LeBron or Nike would mind, do you?

 

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 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.

 

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.

-Wes Anderson, Attorney

Exult, lovers of autumn and decorative gourds – the air is crisp and the leaves are changing. And, in the treasured annual tradition, this week marked the release of Starbucks’ Pumpkin Spice Latte – or PSL® as they may prefer to call it.

In the spirit of the season, I sought to see if any zealous trademark applicants had sought to claim ownership over the phrasing “PUMPKIN SPICE” or “PUMPKIN SPICE LATTE.” Sure enough, there are a couple of notable marks – PUMPKIN SPICE CAPPUCCINO (a composite mark disclaiming all of the wording) and a pending application for YOU HAD ME AT PUMPKIN SPICE chief among them.

For its part, Starbucks itself seems to recognize the descriptive (if not generic) nature of the name for its most popular drink, a crucial spark to fall sales. But, it does hold a rather curious registration for PSL. The registration identifies “dairy-based food beverages; soy-based food beverages used as a milk substitute” and “coffee and espresso beverages; beverages made with a base of coffee and/or espresso.”

For its part, the Trademark Office did issue an information request during examination, asking Starbucks to “specify whether the letters ‘PSL’ have any significance in the foods or beverages trade or industry or as applied to the goods described in the application, or if such letters represent a ‘term of art’ within applicant’s industry.” Starbucks answered honestly enough, stating in its response:

The Examining Attorney has requested whether the letters PSL have any significance in the foods or beverages trade or as applied to the goods described in the application, or if such letters represent a “term of art” within Applicant’s industry. Applicant notes that the letters PSL stand for Pumpkin Spiced [sic] Latte.

Generally speaking, acronyms that connote descriptive wording are not registrable. According to the Trademark Manual of Examining Procedure:

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.

So here, Starbucks has made of record evidence that PSL stands for Pumpkin Spice[d] Latte. And there’s replete evidence online of Starbucks creating an association between the acronym and the descriptive wording. But what did the Trademark Office do? Nothing – it approved the application for registration. And come 2020, the registration will no longer be eligible for cancellation on grounds of mere descriptiveness.

Are there PSL lovers at the PTO? Quite possibly. We’ll have to keep our eyes out this fall to see if Starbucks finds any enforcement targets for its (arguably) descriptive acronym.

Last month, Amazon Web Services (“AWS”) announced a new application, Amazon Chime, for online meetings, including video and voice conferencing, chat, and screen sharing. Amazon Chime will compete against a crowd of other well-established products with similar services, such as GoToMeeting, Cisco WebEx, and Skype.

Just two weeks after Amazon Chime was announced, on February 22, AWS was sued by CafeX Communications for common law trademark infringement. CafeX’s complaint asserted the marks CHIME and CAFEX CHIME, based on its CafeX Chime online conferencing application. CafeX Chime, which offers video and voice conferencing, chat, and document sharing, was launched in February 2016. It won the “Best Of Enterprise Connect” award at the 2016 Enterprise Connect trade show in March 2016.

CafeX brought a motion for a preliminary injunction, arguing a likelihood of success based in part on the parties’ “virtually identical” marks and “identical” products and services. CafeX also argued that AWS was aware of CafeX’s “CHIME” mark and adopted the Amazon Chime mark in bad faith. Regarding irreparable harm, CafeX repeatedly referred to the upcoming 2017 Enterprise Connect trade show in Orlando next week (March 27-29), at which CafeX Chime is the defending “best of” award winner, and at which both parties will be presenting their respective “Chime” products at booths facing each other, a mere 30 feet apart–see the exhibit map below:Exhibitor Booth Map

AWS’s opposing brief argues that CafeX is unlikely to succeed on the merits based on several arguments, including for example: (1) CafeX has not made use in commerce of its asserted marks; (2) CafeX has no protectable trademarks as “Chime” is descriptive for business communication services; (3) the marks are dissimilar based on the “prominent use of [defendant’s] well-known [Amazon] house brand”; (4) there are some differences in the parties’ products; and (5) AWS obtained an Eveready survey that found 0% confusion.  (Note that CafeX vigorously disputes the validity and methodology of AWS’s survey in its reply brief.)

AWS also disputes CafeX’s bad faith argument, stating that although an Amazon employee visited the CafeX Chime booth at the 2016 Enterprise Connect trade show, that employee “had nothing to do with naming Amazon Chime and had never worked on the Amazon Chime team” and that “to the best of Amazon’s knowledge, CafeX was never mentioned by anyone on the Amazon Chime product or branding team” until this litigation. However, AWS concedes that a trademark clearance search was conducted, and then seems to imply that AWS was aware of the CAFEX CHIME mark.

Regarding the balance of equities between the parties (a factor in whether a preliminary injunction is appropriate), AWS stresses that it would be forced to spend hundreds of thousands of dollars and months of time to rebrand its product, reprogram its application, revise websites and marketing materials, and reshoot promotional videos, and that it would be practically impossible to reverse such a re-branding if AWS later prevailed at trial.

What do you think?  Stay tuned for updates on this contentious and high-stakes dispute.  The motion hearing is scheduled for tomorrow, March 24.

mypillowWe had some great questions from the audience during the Mastering U.S. Trademark Registration Practice seminar in Minneapolis a few weeks ago. During the session on genericness, someone asked about MyPillow, expressing amazement that it could be federally-registered.

Having now seen the MyPillow television advertisement probably a dozen times since then, I’ve finally gotten around to looking into the situation a bit so we can hopefully put this important question safely to rest, so to speak. But, before getting too deeply into details that might leave some counting sheep, I’m reminded of a few from our archives on the ubiquity of My branding:

My, my, my . . .

My Goodness, More “My” Branding & Marks

As these gems from the archives confirm, building a brand around the word My, raises serious questions, not about genericness, but about a limited scope of rights, given how commonly the term appears as part of trademarks.

Just because a term is common doesn’t make it generic. Even commonly used words can be descriptive, suggestive, and/or arbitrary for the goods/services in question. Remember the Spectrum of Distinctiveness and how the Suggestive/Descriptive line can be challenging?

While it is clear that Pillow is generic for a pillow, what does My add to the mark, and does the addition of the word My render MyPillow as a whole descriptive or suggestive of pillows?

An argument certainly exists for descriptiveness, given the number of Supplemental trademark registrations for marks having a similar My format, and given the existence of more than a hundred registrations and applications that disclaim the word My from the mark as a whole.

Yet, MyPillow is federally-registered on the Principal Register without a showing of acquired distinctiveness, so the USPTO is on record believing MyPillow is suggestive, not generic or descriptive. And, now that the registration is over five years old and incontestable, challengers to the validity can only raise the descriptiveness/distinctiveness argument in their sweet dreams.

Perhaps the logic on suggestiveness relates to the ambiguity of the word My. When Mike Lindell is holding the pillow above he refers to it as MyPillow. When he sells it to you, does it become YourPillow? And, then once you have it, from your perspective it becomes MyPillow again?

What I’m left wondering is how can the below federally-registered mark peacefully coexist for pillows, given the prior MyPillow federal registration, having both priority of use, filing, and registration?

ilovemypillowSo, one way to protect MyPillow as your trademark would be to engage a systematic watch service of filings at the USPTO. The MyPillow registration issued two months before the above mark was published for opposition, so why was no 2(d) refusal issued or opposition filed?

It appears that MyPillow started a pillow fight with the owner of the above mark by filing a trademark infringement lawsuit back in 2012, and again in 2013, but the registration for the above mark remains on the Principal Register, sending the message of thin rights, leaving an opening for others to join with other My marks, believing there will be no more pillow fights.

That appears to be what has happened, with My Private Pillow, My Secret Pillow, Angels on My Pillow as each have become federally-registered for pillows and were unopposed by MyPillow.

Marketing types, what are your thoughts about the MyPillow brand? Would your head find any support with this simplistic, but clearly successful brand name?

Trademark types, would this situation keep you up at night or could you sleep restfully given the apparent scope of rights and these close and coexisting third party registrations?

In the end, perhaps as they say, when you make your bed, especially with my pillow, you end up having to sleep in it, lumps and all, right?

Trademark types know all about Park ‘N Fly, whether they travel or not. That’s because it is more than a nearly fifty year old airport parking and travel service brand and federally-registered service mark, it is short-hand for a famous U.S. Supreme Court trademark case from 1985.

In that decision, the Supreme Court recognized the importance and power of federal registration, ruling that after a registration has become incontestable, someone accused of infringing that federally-registered trademark may not defend itself by arguing or otherwise attempting to show that the registered mark is merely descriptive. Such a defense is simply no longer available. So, good luck overcoming this registration refusal, EZ ParkFly, issued two weeks ago by the USPTO.

One of the added benefits of federal registration is that the USPTO helps out on trademark enforcement, and to some extent, does the trademark owner’s bidding in keeping the Principal Register clear of confusingly similar marks, as demonstrated by the EZ ParkFly registration refusal referenced above. But, when the USPTO doesn’t do the trademark owner’s bidding, and no registration refusal is issued, then the trademark owner needs to step up and oppose, so that is exactly what Park ‘N Fly did a few months ago in opposing registration of this mark:

 

StayParkFly

 

Who do you think wins this one? Are you surprised the USPTO didn’t refuse registration based on the decades old incontestable Park ‘N Fly registration?

I suspect it is no accident that the applicant is using different coloration of the word PARK and the word FLY to provide a graphic separation of those adjacent terms, for reasons that appear likely motivated by the point of this post.

The question remains though, will that be enough to avoid likelihood of confusion with Park ‘N Fly? It’s kind of hard to interject graphics when the mark is spoken, right?

-Wes Anderson, Attorney

Reliant Beverage Co., makers of “Recovery Water,” has an endorsement from Russell Wilson and heaps of buzz surrounding the purported benefits of its products and “nanobubbles,” but thanks to some errors from both Reliant and the PTO, a federal trademark may be out of reach.

home-banner-bottles

Reliant applied for the RECOVERY WATER mark back in March, and soon thereafter received a descriptiveness refusal from the PTO, with the Examining Attorney stating the following:

The attached evidence from Collins dictionary shows the wording “RECOVERY” means the act of recovering or the gaining of something lost.  The word “water” appears in applicant’s identification of goods and thus is generic for an ingredient of applicant’s goods.  As shown by the attached evidence from Size or Shred, Cardiostrong, Bodybuilding.com, C12, RoadRunner Sports, and an article entitled “Why Bother with Recovery Drinks,” “recovery drinks” are commonly sold in the athletic industry to allow athletes to improve the rate of recovery after serious exercise in order to enable the drinker to improve performance.  Therefore, the wording taken together merely describes an ingredient and quality of applicant’s water drinks.

This must not have been entirely unexpected for Reliant – countless sports drinks and related supplements emphasize their effectiveness for post-workout or post-exercise “recovery.” But no matter – the Examining Attorney helpfully included a standard form “advisory” informing Reliant that it could amend this application to the Supplemental Register. While the Supplemental Register is effectively the “junior” register for descriptive marks and many advantages of a typical trademark registration on the Principal Registration are lost, it would at least allow Reliant to exclude others from registering a similar mark while it sought to obtain acquired distinctiveness in RECOVERY WATER over time.

So, Reliant dutifully amended its application to the Supplemental Register (with a disclaimer of the generic wording “WATER”), and all seemed well. Then in mid-August, the bombshell came with another office action:

Upon further review, the trademark examining attorney has determined that amendment to the supplemental register is insufficient to overcome the Section 2e1 refusal, as the mark appears to be generic. Therefore, applicant’s response raises a new issue, which applicant must address. The examining attorney regrets the delay in raising this issue, and apologizes for any inconvenience to the applicant.

Unfortunately for Reliant, the Examining Attorney neglected to consider whether RECOVERY WATER was not only descriptive but also generic, a finding of which would be fatal to any trademark registration (and, indeed, would preclude any legitimate enforcement of the mark for third-party use). As evidence to support a generic refusal, the Examining Attorney unearthed a press release from Reliant itself that used the wording “recovery water” generically:

Reliant is the first and only recovery water proven to reduce the muscle damage and soreness that often comes with an active lifestyle. Drinking Reliant helps you recover faster so you can do more and feel better.

Reliant recovery water has become the beverage of choice for world-class athletes wanting to train harder and perform better.

The cardinal rule to avoid genericide: always use your trademark as a trademark (“Recovery Water® sports drink”), rather than as a synonym for the thing itself — or, ideally, choose a distinctive mark in the first place. Now Reliant, once thought to be nearing a registration, has a genericness battle on its hands, thanks in part to its own marketing materials.

Not to be too cruel to Reliant, but perhaps the Russell Wilson endorsement is particularly appropriate here: right on the goal line, success looking inevitable – only to have it snatched away in an instant.

Sorry, Seahawks fans.