Immediate Protection of Trademarks

You’re well aware of the fact that we have a burning desire for great brands and trademarks.

Outside Whole Foods last evening, with snow falling, I found a beautiful display of firewood:

A smile came to my face as I read the SnuggleWood brand name for this kiln-dried firewood.

We’ve written a lot about the many legal benefits of suggestive over descriptive trademarks.

I’m fortunate to have enjoyed many evenings snuggling with loved ones around a blazing fire.

Later, it also brought warm and toasty feelings to see a federal trademark registration exists:

Sadly though, the fire was doused after learning that an earlier, broader trademark registration for the single word SNUGGLEWOOD lapsed, extinguishing more than 15 years of nationwide priority.

Apparently ownership changed between the original 1998 filing and a decade later when renewal evidence was due, so the USPTO rejected the evidence, as no clear chain of title was provided.

It’s sad to see because trademark ownership and chain of title issues are preventable and fixable.

Let’s hope for the SnuggleWood brand that it is never burned by unregistered trademark rights that could have developed in remote geographic parts of the country before the new filing in 2014.

On a recent pilgrimage to my home town to visit the University of Iowa and to see the Hawkeyes play football again in hallowed Kinnick Stadium, I discovered that a rather rudimentary and perhaps impolite (or potty mouth), yet passionate (sorry Nancy) branding technique, is alive and kicking in Iowa City. I also learned what now appears to go hand-in-hand (or, perhaps leg-in-hands as opposed to a single hand) with Hawkeye football games, at least those played on their home turf:

Somehow the static sign doesn’t do justice to the in-person-experience, so try the YouTube video.

Once again, I’m reminded of Anthony Shore’s succinct naming insight:

There was a time when a simple, honest name was good enough.

Anthony, it appears those times are alive and well (or at least kicking) in the middle of the heartland.

Having said that, I’m also reminded of Liz Goodgold’s caution over "Potty Mouth Marketing: Six Reasons Why Vulgar Language is the Curse of Your Brand".

Trademark Office insights below the jump.

Continue Reading Primitive & Impolite, But Non-Vulgar Trademark & Naming Technique?

My last post explored the fine — but critically important — line, between suggestive and descriptive naming styles, here. As you will recall, marketers and naming gurus who select from the former category are rewarded with immediate rights; selecting from the latter category leaves one in limbo until acquired distinctiveness can be proven, if ever. Landing on the right side of the line (literally and figuratively) on the Spectrum of Distinctiveness, however, is only the first step of the challenge.

Equally important to landing on the right side of the naming line at the outset, is the constant challenge to keep a suggestive name and mark on the right or inherently distinctive and immediately protectable side of the line. Seems as though there is a strong temptation, if not tendency, to push a perfectly suggestive name or mark back over to the wrong or merely descriptive side of the line through an owner’s own misuse on labels, packaging, ad copy, and/or the internet.

Let’s just say that I have consumed more than my fair share of Gatorade brand thirst quencher while soaking it up in my hot tub. And let’s also just say that during those many extended brand experiences, I have become quite familiar with a particular Gatorade label, one that makes the point of this post quite well.

Anyway, the Gatorade label I’m speaking of, here, prominently displays a federally-registered tag-line with a nice alliterative quality: Rehydrate Replenish Refuel. As you can see from the federal trademark registration, here, the U.S. Trademark Office considered the tag-line sufficiently creative to be inherently distinctive, i.e., suggestive, not merely descriptive.

No doubt this wouldn’t have been the case had the Trademark Office seen the pair of descriptive tag-line misuses appearing on my Gatorade label (close-ups here and here). Instead, it would have found the tag-line to be merely descriptive, not suggestive, and refused registration. Why? Bluntly and overtly describing Gatorade thirst quencher as “scientifically formulated with fluid, electrolytes and carbs to rehydrate, replenish and refuel in ways water can’t” and also as “a smart choice for athletes because it rehydrates, replenishes and refuels in ways water can’t,” removes every drop of imagination, thought and perception needed to make Rehydrate Replenish Refuel a suggestive tag-line. Instead it ends up immediately describing a feature of the product and only fuels a finding of mere descriptiveness.

So, taking a suggestive name, mark, or tag-line, and using it descriptively in a sentence on labels, packaging, ad copy, or the internet, unfortunately can move it to the left (and wrong) side of the line and render it merely descriptive. Perhaps you’re wondering why the Trademark Office didn’t pick up on this important point and refuse registration on descriptiveness grounds? Well, let’s just say that the Gatorade label submitted to the Trademark Office didn’t have the descriptive uses you have seen here. Let’s also just say that we’ll save for another day and another post what the Trademark Office was provided.

Earlier this week, Guest Blogger Burt Alper from Catchword Branding, provided a marketer’s perspective on the pros and cons of naming styles, here.

With that introduction, now seems like a good time to revisit the critically important line — in terms of legal protection — between descriptive and suggestive names, and also provide a handy graphic to illustrate the Trademark Spectrum of Distinctiveness:

Continue Reading A Legal Perspective on the Pros and Cons of Name Styles