No worries, I’m back at the keyboard, refreshed after a busy January, from the ATA Show in Louisville to Las Vegas for the SHOT Show, then Austin, and well beyond.

2019 is off to a rapid start, not sure where the first half of February went, so I’ll make sure this is a good one, and with a little luck, it might even be a great one:

Did my iPhone capture a production anomaly in the soap on display? Note the disconnect between the word and the stuff that I’m not sure I’d want to rub on me.

How often do we hear, “Oh it’s good enough,” or “Yeah, it’s pretty good”? — Good seems pretty watered down today, bordering on being just OK, a passing grade.

Kind of reminds me of AT&T Wireless’ funny Just OK Is Not OK commercials. Let’s just say, good seems much further from CNP than BGE — Barely Good Enough.

A Friday evening shopping run to Whole Foods provided inspiration for this blog post; as you will recall, it’s not the first, others preceed it, e.g., here, here, and here.

So, imagine my surprise that someone actually would try to “brand” soap as good.

Turns out, that someone has infused more than the common meaning into the word, incorporating the more active “do-good” kind, with a real social impact.

Before learning of that aspect to the brand, I was left wondering, is good — well, enough to serve as a distinctive trademark, in other words, is it ownable, as IP?

Turns out, it apparently is, Good Soap is federally-registered for “sustainably manufactured beauty products, namely fair trade shea butter soap” — no less than 500+ pages of evidence was submitted to establish acquired distinctiveness.

At the end of the day, I’m still left wondering about the reasonable scope of rights?

With the mildly laudatory Good, it’s probably no surprise that other coexisting soap marks have slipped into the same laudatory-themed bubble bath as Good Soap:

Besides all those, why did the USPTO allow this Good soap mark to coexist, much less achieve federal registration without a showing of acquired distinctiveness?

Perhaps another less-than-wonderful style of truncated examination at the USPTO?

With a broader identification of goods, covering simply “soaps” — and no apparent “do-good” double meaning, how did the informational matter refusal slip by too?

Back to what Good might mean to consumers, at first blush, it seems facially about managing normal expectations, but Great is about exceeding them.

Assuming the product attributes live up to the name, wouldn’t a brand rather be great than simply good? In other words, can Good Soap, ever be a Great brand?

By the way, this is not anywhere close to our first soapbox when it comes to getting lathered up over soap trademarks:

You can be the judge of what is good versus great. Yes, lather, rinse and repeat.

Credit: Local Solutions

I write today regarding a squirrelly thought: are the benefits of registering a hashtag trademark almost always outweighed by the consequences? In light of a recent Trademark Trial and Appeal Board (“TTAB”) ruling and the Trademark Manual of Examining Procedure’s (“TMEP”) provisions, hashtag marks offer much less protection than traditional character-based marks, such that the latter are preferable in most situations.

We’ve all seen hashtag words and phrases (without spaces between the words) in social media, most commonly on Twitter–but also now on other sites, such as Facebook and Instagram. By affixing a hash symbol (#) to a word or phrase in a post, users can garner attention, join in a movement, and possibly “go viral.” Popular recent trending examples are #MeToo and #TakeAKnee. And of course, who could forget:

#selfie

Hashtags serve filtering, identifying, and promoting functions that have commercial advertising value. Thus, it is no surprise that hundreds of individuals and companies have applied for trademarks on “hashtag marks,” seeking to control the use of certain hash-preceded words and phrases. In fact, at the time of writing, there are over 1,900 such registrations. Hashtags are hip, and everyone wants one–or so they think.

In 2016, the USPTO added TMEP § 1202.18, which explains when “hashtag marks” may be registered:

A mark consisting of or containing the hash symbol (#) or the term HASHTAG is registrable as a trademark or service mark only if it functions as an identifier of the source of the applicant’s goods or services. . . . Generally, the hash symbol and the wording HASHTAG do not provide any source-indicating function because they merely facilitate categorization and searching within online social media . . . .Therefore, the addition of the term HASHTAG or the hash symbol (#) to an otherwise unregistrable mark typically will not render it registrable.

Recently, the TTAB applied this rule and other doctrines, holding that the addition of hashtags usually do nothing to make a mark distinctive. In the case, the TTAB rejected singer Will.I.Am’s application for a hashtag mark for #WILLPOWER because it was too similar to other registered marks containing”willpower,” and the hash symbol had no source-indicating distinctiveness, merely operating as a metadata tag for social media platforms.

The TTAB decision and TMEP provisions greatly narrow the registrability of hashtag marks, as well as their enforcement scope, such that it seems as if there is very little upside to applying for such a mark in most circumstances. An applicant does not need to register an otherwise-registrable mark as a hashtag mark in order to protect the mark if hashed. In such cases, a hashtag registration provides no more protection than a traditional character registration; the hash adds no additional layer of distinctiveness, just as it would not lend distinctiveness to an unregistrable word or phrase. Thus, an applicant should only apply for a hashtag mark in instances in which the non-hashed word or phrase lacks distinctiveness without the hash. If there is a case to be made for a traditional mark, the applicant should pursue that mark instead because traditional marks can be enforced more broadly.

If an applicant applies, however, only for a hashtag mark, then non-distinctiveness absent the hashtag will work to preclude the registrant from enforcing the mark in non-hashed situations. Even if the hashtag mark could be a mark on its own without the hash, the fact that the hashtag mark is either the first or only mark could result in a presumption against non-hashed distinctiveness–after all, why apply for a hashtag mark at all in such circumstances? It may also be more difficult to prove that non-hashed phrases, which in their non-hashed form are separated by spaces, infringe the hashtag mark. Imagine, for example, two competing phrases (the first example of which is a registered hashtag mark):

#lifeofabusyexecutive

Life of a Busy Executive

If the hash provides the distinctiveness for the first example (and perhaps in tandem with the lowercase and squished text), then presumably the second phrase without the hash (and with spaces) would not tread on that distinctiveness, working against a showing of consumer confusion and infringement. Of course, the holder of the hashtag mark could prevent identical use by competitors in commerce, but not similar non-hashed uses.

Emerging trademark law teaches that hashtag marks are extremely narrow–intentionally so–and as we’ve discussed before, hashtag marks are also greatly susceptible to fair use defenses. There appear to be few upsides to seeking such marks, at least without first trying for a traditional mark. So although trademark commentary as of late has focused on the trendiness of obtaining a hashtag mark, the more important question is whether it is worth doing so. In most cases, the answer will probably be “no.”

Hawaii seems to be on the mind here at DuetsBlog lately. Last week, I had the pleasure of visiting three Hawaiian islands for the first time. While there, I quickly became acquainted with Hawaiian life and language. It’s a beautiful place; I recommend everyone visit.

When I first landed on Kauai, the “garden island,” I was quickly greeted with “Aloha,” in sound, sight, and mind. Although most understand “Aloha” to be a friendly greeting, the word has much greater meaning. It also means love, affection, peace, compassion, and mercy. In one word, it embodies Hawaii–and, indeed, the State of Hawaii has declared that Aloha is its official spirit. It is “more than a word of greeting or farewell or a salutation. . . . ‘Aloha’ means mutual regard and affection and extends warmth in caring with no obligation in return. ‘Aloha’ is the essence of relationships in which each person is important to every other person for collective existence. ‘Aloha’ means to hear what is not said, to see what cannot be seen and to know the unknowable.” Haw. Rev. Stat. § 5-7.5(a). All government employees are instructed to “contemplate and reside with the life force and give consideration to the ‘Aloha Spirit.'” Haw. Rev. Stat. § 5-7.5(b). I guess they don’t call it the “Aloha State” for nothing!

With such importance to native Hawaiians, citizens of Hawaii, and the state themselves, it is no wonder that “Aloha” has also become a popular company, place, product, and service name on the islands. Throughout my journey there, I began to notice Aloha almost everywhere I went. See, for example, the following:

And the list goes on… In fact, a basic USPTO search revealed almost 500 live Aloha marks, and a search on the Hawaii Department of Commerce and Consumer Affairs revealed over 10,000!

Seeing Aloha used so frequently caused me to ponder the potential risks of choosing a word like ‘Aloha’ for use in a brand. On the one hand, the word used in connection with most goods, services, and places is arbitrary or fanciful. What is, for example, “Aloha Tofu?” And the word may be suggestive or descriptive of Hawaiian roots. But on the other hand, the word “Aloha” is so ubiquitous that it can hardly be said to be inherently distinctive. Its common use, standing alone, does not immediately identify a single source and seemingly undermines the ability to develop secondary meaning in the minds of at least a Hawaiian public constantly bombarded with the word. Tying additional words to Aloha (e.g., “Aloha Fridays” or “Liquid Aloha”) might create more distinctiveness. But there seems to be an overarching risk that the mark’s initial generic non-distinctiveness will never be overcome. This risk is akin to genericide, but not due to expropriation–rather, widespread appropriation.

I enjoy the Aloha spirit and hope it spreads far and wide. But its ubiquitous adoption could turn a word which means quite a bit (see above), into a word which means very little when it comes to trademark law.

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?

USPTO Drawing for Claimed Mark

As our loyal readers know, we love bringing non-traditional trademarks within your sights for consideration, even if they’re hanging from the ceiling, so here’s another to explore:

Roll & Hill’s Modo Chandelier

 

 

 

 

 

 

 

 

 

The claimed mark is described as “a three-dimensional configuration of a chandelier having three sides and 10 globes. The top rod and the 10 light bulbs shown in broken lines serves to show positioning of the mark and form no part of the mark.”

Here is some information about the designer:

“Jason Miller opened his Brooklyn-based design studio, Roll & Hill, in 2010 to satisfy his desire “to make products that appeal to the American market.” Nestled somewhere between mass production and custom design, Roll & Hill creates lighting fixtures that assume a classic form and style while appealing to a contemporary American sensibility. As Miller sees it, Americans prefer more warmth and visual weight than their European modernist counterparts, who are stylistically rooted in minimalism.”

Any predictions on how this brand new product configuration trademark application will be examined by the USPTO?

I’m thinking it will receive a functionality refusal, a lack of distinctiveness refusal, and a failure to function as a trademark refusal . . . .

Do you think these refusals could be overcome?

If so, how would you respond to them?

USPTO Drawing

Every now and then it’s worth checking in at the USPTO to see what’s cooking in the world of non-traditional product configuration trademarks:

USPTO Specimen

As it turns out, the Big Green Egg is seeking to be more than a word mark — two days before Christmas, a federal trademark application was filed for the product shape described this way (in connection with barbecue smokers and grills): “The mark consists of a three dimensional oval configuration of a cooking vessel in the particular shade of green as shown.”

As we’ve discussed before, unique product shapes can be protected through design patents for a limited period of time, but if the product design is non-functional and distinctive, the power of trademark protection can last forever.

It appears there may be a year end rush at the USPTO by those seeking this forever kind of protection — as this December, it has attracted more than a few interesting product configuration trademark applicants beyond the egg shaped smoker.

For example, quite surprisingly, my daughter was able to identify this USPTO drawing as representing Ice Chips Candy (of Shark Tank fame):

According to the trademark application, claiming use since September 5, 2009: “The mark consists of the configuration of candy comprising irregularly shaped chips with multiple irregular facets and edges.”

But that’s not all, this month Smith & Wesson is seeking federal registration of its M&P pistol shape as a trademark too:

 

 

 

 

 

 

As you may recall, we have more than a little experience in successfully registering pistol shapes as trademarks. Remember James Bond’s guns of choice?

But, what do you make of the below shown claimed trademark, the “interwoven configuration of a cord affixed to a magazine pouch”? Since dotted lines aren’t part of the mark — they merely show position and placement and give context to the lined portions forming the claimed mark, it appears the laced cord configuration is all that is being claimed.

Do you suppose the Applicant’s specimen of use will trigger a functionality refusal? It surprisingly reads: “This unique pouch uses injection molded polymer sides, Cordura™ front and back, and shock cord lacing to lock just about any rifle magazine into place.” (emphasis added)

While the magazine might be secured by the lacing, the Applicant might as well have taken the Smith & Wesson pistol and pointed it at its foot, inviting the USPTO to issue a functionality refusal.

Will the “lacing to lock” advertising copy turn out to be another marketing pitfall example that ends badly?

So, dear readers, any predictions on which of these December filings, if any, will satisfy the USPTO that the claimed configuration functions as a distinctive trademark to indicate the source of the product?

Stay tuned, we’ll be following these and others in the coming year.

– Nancy Friedman, Wordworking

A few years ago I began tracking a trend in startup naming: names that ended in -ly. Adly, Chirply, Letter.ly, Planely, Shoply, Weebly—my first list included 29 such names, some of them dot-coms and some that used the .ly domain (the Libyan country code).

My initial impression was that this was a flavor-of-the-month phenomenon that soon would be displaced by a new fad. To my surprise, the -ly naming trend proved to be astonishingly robust and persistent. I kept discovering new examples, and eventually I created a Pinterest board with logos of -ly names. Not a week has gone by without a few additions to the board, which now displays 193 names that end in -ly.

The -ly epidemic is an extreme example of the copycat-branding mentality that can infect businesses, especially but not exclusively technology startups. My colleague Christopher Johnson has tracked a parallel naming trend, names that end in -ify, on his Name Inspector blog. Another naming formula, the X + Y name, is currently popular among fashion brands and retailers. There are also clusters of “box” brands, “zen” brands, and cutesy-sounding brands whose names end in -sy, -sie, or -zee.

Name developers and trademark lawyers alike know the perils of a copycat naming strategy. Distinctiveness, not imitation, is our goal. Why, we wonder, would a company founder choose a name that looks and sounds like 100 other names?

I’ve analyzed the phenomenon and come up with a few answers:

• Lack of awareness. Many startups are named by their founders without professional naming assistance. In my experience, founders tend not to be familiar with the bigger naming picture or with naming trends; when searching for a name, they often focus exclusively on a short name or an available domain.

• Comfort in numbers. Some founders place little value on distinctiveness and feel safer following the herd—much as a teenage girl prefers to wear “what everyone’s wearing” rather than define her own style. Confronted with the evidence—my Pinterest boards—these founders have responded along the lines of “We’re in good company!” They see no downside in having an easily confusable name; rather, they see the crowded namescape as evidence that they have their metaphorical finger on a hypothetical pulse—or that they’ve gained entrance to a cozy club.

• Wishful thinking. Some copycat namers apparently hope that a copycat name will translate to copycat success. Christopher Johnson makes a compelling case that the music-streaming service Spotify was the -ify name that launched a thousand (OK, 186) imitators: founded in 2006, it launched in the U.S. in 2011 and made Business Insider’s list of the top private tech companies for 2011 and 2012—the years when “the number of -ify names took off into the stratosphere,” Johnson writes. (The Spotify name itself resulted from a mis-hearing. For more on Spotify, see my 2011 column for the Visual Thesaurus.) For -ly names, the influencers may have been the link-shortening services Bit.ly and Ow.ly, both of which launched in 2008 and became ubiquitous thanks to Twitter’s 140-character limit. The craft-sales website Etsy—a coined name that may or may not have a Latin meaning—launched in 2005 and has amassed more than $91 million in funding; companies like Mallzee, Keepsy, and Scoutzie have no doubt taken notice.

• Denial. Once you’ve settled on a name—or at least an “available” domain—it can be painful to admit that you’ve erred and more palatable to deny that the name is imitative. “We’re a dot-com, not a dot-ly!” one company said in response to my query. “Our name is cute!” was another’s defense. “Oh, we should be there! :)” tweeted a spokesperson for one -ify name after s/he saw Christopher Johnson’s Pinterest Wall of Namifying (118 -ify names).

What does all of this mean for naming professionals and trademark lawyers? Clearly, there’s a need for education about the value of distinctiveness and the importance of distinguishing an “available” domain from a desirable brand name. Talking about it—to company founders; in business presentations; to venture capitalists and other startup funders—may help. Visual representations of the trends, like my Pinterest boards and Christopher Johnson’s -ify infographic, may be even more effective.

And if those tactics fail, we can take faint hope in the assurance that this trend will, sooner or later, be trendified into oblivion.