Disclaimer Requirement

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?

There is at least one more 2018 Rapala billboard out there, just netted this one over the weekend:

Rapala’s clever Minnowsotan billboard inspired me to cast a few lines about the law concerning trademark disclaimers, as they often reel in some great questions from branding professionals.

Tim did a helpful post on trademark disclaimers, guiding why the USPTO requires them, their legal implications, and encouraging brand owners to properly resist them when they are unwarranted.

Let’s suppose Rapala sought to register Minnowsotan as a trademark for fishing lures. Putting aside wondering whether this little fish might ever attack, Rapala should lose no sleep wondering whether it would be required to disclaim “minnow” from the would-be Minnowsota trademark. No.

While it is true that “minnow” is an element of Minnowsotan, and there should be little debate that “minnow” is either descriptive or generic for a fishing lure depicting a minnow, a disclaimer is not required under the law by the USPTO when the applied-for mark is unitary (TMEP 1213.05):

“The test for unitariness inquires whether the elements of a mark are so integrated or merged together that they cannot be regarded as separable.”

“A unitary mark has certain observable characteristics. Specifically, its elements are inseparable. In a unitary mark, these observable characteristics must combine to show that the mark has a distinct meaning of its own independent of the meaning of its constituent elements. In other words, a unitary mark must create a single and distinct commercial impression.”

Using Minnowsotan as a trademark school hypothetical, it would be a pretty clear example of unitariness — with no need for a disclaimer, but what about Minnow Spoon for fishing lures?

In other words, is Minnow Spoon unitary for a fishing lure that depicts a minnow on a spoon lure?

Perhaps a cloudier answer than for Minnowsota, but usually two-word marks without compression, telescoping, or hyphenation, will require disclaimers of any descriptive or generic wording.

As it turns out, Minnow Spoon once adorned the Supplemental Register, as a merely descriptive composite mark, only capable of being distinctive, with no disclaimer of the generic “spoon” word.

Reading between the lily pad leaves, it appears the USPTO twice has considered Rapala’s Minnow Spoon to be unitary, as it allowed Rapala to federally-register the two-word mark on the Principal Register too, without a disclaimer of the obviously generic second term “spoon” for fishing lures.

Yet, that consistent disclaimer treatment appears inconsistent with the USPTO’s previous disclaimer requirement for “spoon” with the four-word Rapala Weedless Minnow Spoon mark.

Without getting too tangled up in the weeds at the USPTO, while generic matter must be disclaimed from marks registered on the Supplemental Register and the Principal Register (even under a showing of acquired distinctiveness, as was the case with Minnow Spoon), a disclaimer should not be required by the USPTO, if the composite mark is unitary.

Given that guidance, what would you expect with the “Original Finnish Minnow” mark? Well, that one was treated as not unitary, it appears, since a disclaimer of “minnow” was required. And, the same is true for Minnow Chaser and Clackin’ Minnow, as each one had “minnow” disclaimed.

The crazy thing about the “minnow” disclaimer for Clackin’ Minnow is that it was a Supplemental Registration, so the disclaimer should mean that “minnow” actually is generic for fishing lures.

A school of minnows in trademark class might be left thinking that both of the terms “minnow” and “spoon” are generic for lures, highlighting the importance of resisting them when appropriate.

For a few months now, the Minneapolis skyway system has been flooded with a variety of fresh, creative, eye-popping advertising to promote Pepsi’s new bubly sparkling water collection:

Although not a lie (the bottles I’ve seen clearly reference Pepsi), you’d never know from this ad or the trademark registration that Pepsi is behind bubly, since an Irish entity located in Bermuda owns the mark.

Thoughts about Pepsi’s line of reasoning for having ownership rest with an Irish entity located in Bermuda? Taxes maybe?

Yet, it is clear the market knows this is a Pepsi launch, wonder what Coke, owner of Tab, thinks?

Sipping a bubbly drink, like sparkling water, necessarily has bubbles, explaining why the USPTO required a disclaimer of the word “bubbly,” even though the mark includes bubly, not bubbly.

Although it might be nice to own a standard character registration for the misspelled and un-disclaimed wording bubly, that hasn’t been attempted, as the misspelling is likely not distinctive.

Holding a word only registration for bubly doesn’t appear possible any time soon, since the double entendre is only apparent from the stylized bubly sparkling water mark, not bubly standing alone.

Double entendre? Yes, the description of the stylized mark notes the “u” in “bubly” is “depicted as a smile,” which ties into the additional meaning of “bubbly” — lively, cheerful and talks a lot.

If the words “bubbly” and “bubly” can’t be owned here, may that inspire a truncation to bub, especially given this pending intent-to-use trademark applications for bub and Bub Sparkling Water?

 On this Valentine’s Day, after enduring weeks of the same endless running of national retail jewelry chain advertising, leading up to this annually celebrated day of love and affection, I thought it might be fitting to try a few retail jewelry store taglines on for size and examine — at least from a trademark perspective — their protect-ability and likely placement on the Spectrum of Distinctiveness, leaving for our friends who are genuine marketing types an assessment of the taglines’ color, clarity, carat, and cut.

(1) "The Diamond Store":

Zales apparently has been using "The Diamond Store" as a tagline for over thirty-five years, but its latest federal registration for "Zales The Diamond Store" still disclaims exclusive rights to "The Diamond Store." Also no surprise that Zales was unable to federally register "America’s Diamond Store". It appears Zales never has attempted to register "The Diamond Store" standing alone, obviously there are more than a few other competing "diamond stores" out there.

For example, the "Most Dominant Diamond Store in America" was refused registration just last month, based on mere descriptiveness. And, the very same applicant fared no better with this tagline: "The World’s Best Diamond Store" — similarly refused under Section 2(e)(1) of the Lanham Act for being merely descriptive of jewelry store services.

No imagination, thought or perception required for any of these claimed taglines, so there’s clearly no hope of being inherently distinctive, and it’s even hard to imagine any of them actually acquiring distinctiveness either, so really, what’s the point?

Marketing types, aren’t there more creative ways to communicate that you sell diamonds?

Actually, it appears Zales may have one such tagline pending: "Wish Upon a Diamond". Now, that’s much better.

(2) "Every Kiss Begins With Kay":

Kay Jewelers apparently has been using the "Every Kiss Begins With Kay" tagline for about ten years, and the federal registration reveals no disclaimers and no need for proving acquired distinctiveness, so this tagline falls squarely within the suggestive category, as an inherently distinctive mark. Bravo Kay!

Interestingly, Kay Jewelers at least used to be "The Diamond People" — and this tagline is still federally-registered, but curiously, at least one internet listing for a competing Zales store refers to "The Diamond People" — not, "The Diamond Store" as indicated above.

Amazing how substituting the word "people" for "store" can make such a difference from a trademark ownership perspective, and from a relational or emotional one too, the latter being of particular interest to marketing types, I trust.

(3) "He Went to Jared":

As far as I’m concerned, this tagline really takes the prized jewel. But, I never would have guessed so, had I been clearing the proposed tagline before its first use years ago. Why? The words themselves seem so pedestrian and on print advertisements they seem totally void of any life or emotion. I’m not saying the phrase would be merely descriptive, it probably does have sufficient creativity to satisfy the suggestive category on the Spectrum of Distinctiveness. But the bare words seem, well, boring and lifeless.

Obviously, those behind the creation of the words knew how they could be given life in television advertising. Indeed, it seems to me that what has given this tagline more life and interest (and trademark strength) than any of the others is the television advertising that provides the repetitive (annoyingly so to many) and emotional connection to the phrase. There are spoof ads galore on the web ridiculing the "He Went To Jared" ads. Clearly, this tagline resonates in very strong ways, both pro and con.

My son confirmed this for me over the weekend when he shared a funny incident in his 4th grade history class from last week. Apparently his teacher was looking for students to fill in the blank on her question, "He went to . . ., He went to . . ." — looking for the answer to be the place where Napoleon apparently went on a certain occasion, and one of my son’s friends loudly said, "JARED," and the entire class, including the teacher, burst into laughter.

Clearly, there is power in the "He Went to Jared" branding. Indeed, when typing into the Google search engine the words "he went" the top suggested search completes the request as "he went to jared".

My question is, when a trademark owner has such a recognizable tagline as "He Went to Jared" — why not federally register it? Especially when the very same owner has taken the time, effort, and expense to register the bland, laudatory, and virtually unknown "It Can Only Be Jared" tagline. This one certainly would not have drawn any laughter in my son’s history class.

Bonus questions: Did you know that Sterling Jewelers Inc. apparently owns both the KAY and JARED jewelry brands? By the way, does anyone know why both brands are maintained? Do they compete for different demographic segments of the population? Perhaps you can tell from my questions, I’ve never been inside Jared: The Galleria of Jewelry.

A couple of days ago, I promised to try and make the case for why the State of Minnesota ought to hire an experienced trademark attorney.

OK, so I’m a day late, but you can decide if I’m a dollar short too. By the way, it was the federal trademark registration record for the below mark that got me thinking about the need:

As it turns out, the State of Minnesota uses the Minnesota Attorney General’s Office to register various trademarks owned by various Minnesota State entities, including the Minnesota State Agricultural Society, owner of the federal service mark registration for the above MINNESOTA STATE FAIR service mark.

One little problem with the federally-registered mark. The prosecution history for the registration discloses that the assigned Examining Attorney at the United States Patent and Trademark Office (PTO) required a disclaimer of the descriptive wording "Minnesota State Fair":

Applicant must disclaim the descriptive wording “MINNESOTA STATE FAIR” apart from the mark as shown because it merely describes the feature of the identified services. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).

The Office can require an applicant to disclaim exclusive rights to an unregistrable part of a mark, rather than refuse registration of the entire mark. Trademark Act Section 6(a), 15 U.S.C. §1056(a). Under Trademark Act Section 2(e), 15 U.S.C. §1052(e), the Office can refuse registration of the entire mark where it is determined that the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods. Thus, the Office may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic). TMEP §1213.03(a). If an applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark. TMEP §1213.01(b).

A “disclaimer” is thus a written statement that an applicant adds to the application record that states that applicant does not have exclusive rights, separate and apart from the entire mark, to particular wording and/or to a design aspect. The appearance of the applied-for mark does not change.

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer. TMEP §1213.08(a)(i). The following is the standard format used by the Office:

No claim is made to the exclusive right to use “MINNESOTA STATE FAIR” apart from the mark as shown.

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

PTO Examining Attorneys will have a tendency to do that, and the Attorney General’s Office respectfully complied with the well-supported request. What the PTO’s Examining Attorney didn’t volunteer (and they can have a tendency to do that too) — even to the Minnesota Attorney General’s Office — is that a registration disclaimer could have been avoided by submitting a declaration claiming acquired distinctiveness in those words, which, according to the application, have been in use in that specific format since at least as early as January 1, 1981. 

Moreover, Wikipedia reports that the Minnesota State Fair has been in existence since 1859 (missing only five years during that entire period of time), so exclusive rights in the words "Minnesota State Fair" easily could have been claimed under Section 2(f) of the Lanham Act, by way of acquired distinctiveness, long before the current stylized use in 1981.

As it currently stands, there are no federally-registered rights in the words "Minnesota State Fair," only the specific graphic depiction and artwork set forth above (without any limitations as to color) is covered by a federal registration, with exclusive rights in the words having been specifically disclaimed.

Had a simple declaration been put in the record during prosecution to support that the words "Minnesota State Fair" have been in "continuous" and "substantially exclusive" use for at least the five years immediately preceeding the claim of acquired distinctiveness, the registration obtained also could carry the benefit of constituting prima facie evidence of the validity and registrant’s exclusive rights in the entire mark, including the words. Moreover, upon incontestability, these federally-registered rights eventually could become conclusive, not just prima facie valid.

So, the point of the story is not to pick on the Attorney General’s Office of the State of Minnesota, whose attorneys have far better things to do than worry about all the many nuances of federal trademark law. Besides, the point is, this kind of thing happens all the time, even in the commercial business world, when trademark registration and prosecution activities are conducted by those who don’t do it day in and day out.