Inherently Distinctive

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.

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.

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?

Toward the end of last week, a couple of friendly ironmongers (John Welch and Ron Coleman) had an interesting dialogue on Twitter, with some great insights about creativity and the law.

John noted that copyright’s requirement of “originality” is not the same as the requirement of “novelty” in patent law. Ron then weaved in some nice insights about creativity and trademark.

The heady discussion led me to rediscover a blog post of mine from more than nine years ago dubbed: The Paradox of Brand Protection: Knowing When to Hit the Consumer Over the Head.

If you can get past the congested text from this beginner’s first few weeks of blogging, it’s actually worth a complete read for the content, but for now, here’s an excerpt with some better spacing:

“I often remind branding professionals that trademark law rewards their creativity. Some seem to perk up with this subtle encouragement. After all, everyone likes to be rewarded, right? Well, one of the unobvious rewards for creativity comes in the prompt timing of when trademark ownership begins.

Being able to own and enjoy exclusive rights on “day one”—meaning, either the first day of use, or even before first use, upon the filing of a federal intent-to-use trademark application—is a big deal in the world of trademark and brand protection. In fact, timing can be everything.

Even a single day can be the difference between having the right to exclusivity and owning nothing at all (except perhaps, the losing end of a lawsuit and a pile of product and packaging ordered to be destroyed).

On the other hand, when rights are not available on day one, you may have an uncontrollable situation; one where competitors and others have an opening to copy or mimic before enforceable rights attach, and in some cases, these actions can make it difficult, if not impossible to obtain exclusive trademark rights at all.

So, the timing of when trademark rights are acquired is quite important, and those in the business of creating brands play an important role in when those rights may come to be.”

Those remarks aren’t ideally suited for the character limit in Twitter, but I’m thinking they reinforce Ron’s point that priority of trademark rights can be impacted by creativity/novelty.

As to my above remarks about federal intent-to-use trademark applications, I’m also mindful of this little dialogue shared with Ron a few years back, but nowhere near nine years ago.

So, the good news for the day is that the law, especially intellectual property law (copyright, patent, and trademark) does reward creativity, in a variety of ways, and each in their own way.

We’re looking forward to continuing this discussion, among many others, with those interested, at the upcoming Meet the Bloggers XIV unofficial INTA event near INTA in Seattle next month.

During the official portion of the INTA program, I’ll be reflecting on the impact of a creative legal theory that consumed lots and lots of lawyers’ hours (billable/non-billable) for a quarter century.

And, finally, let’s not forget about Duey’s little friend, right over here:

 

 

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!

Earlier this month Southwest Airlines launched a brand new ad campaign called “Transfarency,” which is said to highlight the airline’s “low-fare credo and its lack of bag fees, change fees or hidden fees for passengers.

TransfarencyChartTransparency seems to be the buzz word in branding and marketing circles lately, so what better way to communicate it than through coining a new word that tries to makes you think of it?

Sounds complicated, why not just say, Bags Fly Free, you ask? One answer might be, been there, done that. Another might be, someone was bored. But most likely, the Transfarency campaign appears to build on and broaden the previous success of the narrower Bags Fly Free campaign: “Transfarency is not a new chapter for us, but another tone to the bell that we’ve been ringing for more than 44 years.

Let’s just say, that’s Strategery at its finest!

The airline’s Transfarency website speaks of “Low fares. Nothing to hide.” It goes on to explain: “We’re all about being open and honest with Customers and making sure pesky fees stay away from our low fares.”

Under the clever hashtag “FeesDontFly” the airline taunts the competition: “Are you over other airlines charging you first and second checked bag fees, change fees, and what-the-heck-was-that-even-for fees? At Southwest we do things differently.”

A Southwest Airline executive is quoted as saying: “People are tired of being nickeled and dimed and it’s time to remind people that there is a different airline out there.” And, in doing so, one of the ads says: “We don’t dream up ways of tricking you into paying more.

It will be interesting to see whether any of Southwest’s named competitors try to ground any of these statements as false or misleading advertising.

As much as I can’t stand the nickeling and diming by other airlines, I’m not sure it’s fair to call those fees hidden, or tricks? I’d call them painful, annoying, maybe more than irritating, at times.

Now, back to the Bags Fly Free tagline for a moment. It’s not surprising to me that the BAGS FLY FREE tagline initially registered on the Supplemental Trademark Register, back in 2009, as a merely descriptive mark lacking inherent or acquired distinctiveness.

What was a bit surprising to learn is the current status of the more recent BAGS FLY FREE registration on the Principal Register. While the USPTO’s online TESS page shows the mark to be registered under Section 2(f) of the Lanham Act, meaning the mark has acquired distinctiveness since its first use back in 2009, the TSDR Page and the registration itself bears no reference to Section 2(f).

Southwest argued for inherent distinctiveness, contrary to its previous acceptance of a Supplemental Registration in 2009, with arguments for suggestiveness gems like this:

“The phrase ‘bags fly’ creates a mental image of flying suitcases. There is, however, no instantaneous association of one specific service to Applicant’s mark because of the literal meaning of ‘bags fly,’ which is nonsensical. For this reason, thought and imagination is required to understand the relationship between the Applicant’s mark and its services.”

But Southwest, at the same time, hedged its bet on this argument, also arguing in favor of acquired distinctiveness under Section 2(f), in the alternative, putting in significant evidence in favor of establishing that the mark has acquired distinctiveness.

The question remains, did the USPTO intend for the most recent BAGS FLY FREE registration to issue on the Principal Register as an inherently distinctive mark, without a showing of acquired distinctiveness, or was it an oversight, and did the USPTO really intend for the mark to register under Section 2(f), as the TESS page appears to indicate?

A little transparency on whether the USPTO actually bought the suggestiveness ticket about flying suitcases would be nice. I’m thinking, most Examining Attorneys would have checked that one at the baggage claim.

Either way, one more possible advantage of Southwest’s Transfarency approach is that there is no reasonable question about whether that mark is inherently distinctive — so, no need for any showing of acquired distinctiveness is required.

Welcome to yet another edition of non-traditional trademarks, but instead of discussing brown paper bags for chips as trademarks, today we’re focusing on a U.S. trademark registration that surprisingly issued just a few weeks ago — a net bag package design for holding toy marbles:

ORC001As shown above, the claimed mark “consists of the three-dimensional configuration of packaging for marbles comprising the combination of a square round-cornered placard with a net bag retaining marbles, wherein the top of the net bag extends through a central hold in the bottom of the placard to secure the bag such that it hangs down from the placard in the shape of a pouch and wherein the square placard has a border extending around the perimeter of the placard.”

Although it is possible for some package designs to be so unusual that they are immediately protectable and inherently distinctive, the USPTO determined this one required evidence of acquired distinctiveness. What surprised me is the meager evidence satisfying the USPTO that the claimed package design had acquired distinctiveness: a five year declaration signed by counsel, a single customer declaration and a single distributor declaration.

The application drew five office actions refusing registration, but in the end, the USPTO registered the package design as a trademark, more than three years after the original filing date. The first and second office actions refused registration based on mere informalities. The third office action refused registration on substantive grounds, the usual suspects — failure to function as a mark, and functionality, but the Applicant overcame them rather easily with mere argument. The fourth office action invited the Applicant to show acquired distinctiveness. The fifth office action accepted the claim of acquired distinctiveness and raised more informalities, and the Applicant overcame them with an amended drawing — the one shown above.

Here is what the packaging looks like, as it would appear in a store, according to the specimen of use submitted by the claimed trademark owner Megafun USA:

MarbleBagTrademark

Do you really believe that it doesn’t matter what appears on the placard portion of the design? Is the placard and net combination really enough to perform as a trademark to identify, distinguish, and indicate source, without more? What if Mattel decided to sell marbles with the same package design, except it used its own artwork, name, and logo on the placard portion of the package design? Likelihood of confusion? Seems doubtful, at least to me, do you agree?

In the end, while the net bag packaging design might do a great job of preventing the loss of one’s physical and tangible marbles, my primary concern relates to the far more easily lost metaphorical and mental marbles in trying to comprehend how this registration issued based on the miniature record evidence of acquired distinctiveness.

Excerpt from Chudleigh’s Website

As if we all haven’t already indulged a little too much over the holidays, we chose our first day back to write about non-traditional trademark protection for the configuration of single-serving apple pie pastries. It’s OK, don’t worry, if the Blossom pastry to the left is tempting, you always can get back on track tomorrow!

Having said that, I’m afraid that neither counting calories, nor exercising a healthy dose of dietetic discipline will protect the once-believed “distinctive configuration for baked goods” from the fiery furnace of the deadly trademark functionality doctrine.

To that point, and in case you’re wondering what the trademark registration symbol to the left is supposed to say, for now, it references the federal configuration trademark registration that Chudleigh’s obtained back in 1999, and renewed in 2009, for this shape of pastry:

 

 

We say, for now, because the federal district court in the Eastern District of Pennsylvania — just prior to Christmas — granted summary judgment against Chudleigh’s, concluding as a matter of law, that the pastry design is “essential to the use or purpose” of the pastry, and the design “affects the cost or quality of” the pastry, rendering the pastry design functional and incapable of trademark protection and registration. So, unless Chudleigh’s appeals the decision and is able to overturn the functionality ruling, its fifteen year old non-traditional trademark registration will be burned to a crisp (revoked/cancelled, for the benefit of our non-pastry-chef-readers).

The court summarized its functionality determination without a lot of legalese:

“The product’s size, shape, and six folds or petals of upturned dough are all essential ingredients in the Blossom’s ability to function as a single-serving, fruit-filled dessert pastry. The six folds or petals of upturned dough are essential to contain the filling, and the number of folds or petals is determined in part by the size of the product and the need to limit the number of openings in the top for reheating. Furthermore, permitting Chudleigh’s to maintain proprietary rights in the Blossom Design would have the deleterious impact on competition that the functionality doctrine aims to prevent.”

Now, to the extent you’re wondering how exclusive trademark protection can go up in flames fifteen years after the USPTO granted a federal registration in the first place, it’s worth knowing, there is no time limit on challenging non-traditional trademark rights based on functionality grounds — even incontestability does not validate protection for a design shown to be functional at any later point in time.

To the extent you’re wondering why the USPTO didn’t smoke out functionality sooner and flip the claimed configuration trademark before issuing the registration in 1999, another good question, and the prosecution history at the USPTO provides some interesting answers.

The pastry design trademark application was examined at the USPTO in 1998, before the Supreme Court had decided Wal-Mart (2000) or Traffix (2001), so the examination focused on the product configuration lacking inherent distinctiveness, the USPTO’s initial registration refusal did not raise functionality.

Chudleigh’s was able to overcome the refusal with argument and evidence, convincing the USPTO that the design was sufficiently unique to be considered inherently distinctive, since the USPTO had not yet been informed by the U.S. Supreme Court that product configurations can never be inherently distinctive. Following the Supreme Court’s decisions in Wal-Mart and Traffix, it is settled that only non-functional product configuration designs that have acquired distinctiveness are capable of trademark protection and registration on the Principal Register.

Last, to the extent you’re wondering how this trademark validity challenge came before the federal district court in the Eastern District of Pennsylvania, that’s an interesting story too. But for our limited purposes here, Chudleigh’s noticed that Applebee’s was selling a similarly shaped dessert pastry, so it sent to Applebee’s a cease and desist letter. Applebee’s supplier of the pastry ended up bringing a declaratory judgment action, asking the federal court in Pennsylvania, for a number of things, including a declaration that Chudleigh’s configuration trademark registration is invalid and was not infringed.

One possible takeaway: To the extent your trademark portfolio includes pre-Wal-Mart/Traffix non-traditional trademark registrations, it is probably a good idea to make sure they can withstand the heat of the fiery furnace of functionality, before you seek to enforce them.

If December 2014 was the month for configuration trademark filings, will 2015 be the year of functionality decisions?

In case you missed SHARKNADO last year, fear not, the sequel SHARKNADO 2 — The Second One, is taking the country by storm, and it is reportedly even better than the first SHARKNADO film. Not having seen either, I’m not sure whether that’s saying much.

What is even harder to avoid seeing, however, is all the media attention and publicity SHARKNADO 2 has amassed over the last few days.

Entertainment Weekly reported yesterday “3.9 million viewers tuned in to SyFy Wednesday night to watch the premiere” of SHARKNADO 2, making it “SyFy’s most watched original movie ever.”

CNN also reported yesterday on the feeding frenzy SHARKNADO 2 has stirred up on Twitter.

NBC’s Today Show even played a role in SHARKNADO fever with silly cameo apperances by Matt Lauer and Al Roker.

All this attention made me wonder what kind of trademark filings have been done on the SHARKNADO franchise and whether any trademark bottom feeders improperly have attempted to cash in on the sudden popularity of the coined SHARKNADO brand and trademark.

As it turns out, I was a bit surprised to only find one USPTO filing for SHARKNADO, given all the hype, focus, and attention. But, what is even more bizarre than the film’s absurd plot (as seen in the onslaught of trailers) is that this single filing matured into a Supplemental Registration, as opposed to a Principal Registration.

Remember, Supplemental Registrations cover marks only capable of becoming distinctive and they are toothless in the protection they provide the owner — the Principal Register at the USPTO is the coveted prize reserved for those marks that are distinctive for their associated goods and services.

So, why did SHARKNADO land on the floor, i.e., the USPTO’s Supplemental Register?

Perhaps an overzealous Examining Attorney refusing registration because SHARKNADO is the title of a film and doesn’t function as a trademark? Actually, no — that refusal wasn’t made and couldn’t have been sustained because the goods covered by the resulting registration involve “beer mugs” and other items in Int’l Class 21, along with “whoolly hats” and other clothing items in Int’l Class 25, not entertainment services in Int’l Class 41 or DVDs in Int’l Class 9.

It would be hard to sustain an argument that the coined mark SHARKNADO is not distinctive and registrable for “beer mugs” and “whoolly hats,” even if it also functions as the title of a film.

No, the SHARKNADO registration landed on the Supplemental Registration floor, because that is how the application was filed by The Global Asylum, Inc. on July 24, 2013, seeking registration on the Supplemental Register in Int’l Classes 21 and 25.

My question is, assuming no mistake, why bother spending $650 filing anything? If you’re going to go through the minor trouble of filing something, why ask for nothing close to what you’re entitled to receive? The filing fee is the same, so it’s not like the owner of the admittedly B horror franchise was able to save a few bucks — to pay Tara Reid more — in accepting the lesser registration.

I don’t know, maybe they misunderstood the law. And, just maybe they’ll get it right yet, with a trademark application sequel.

Although the names of single creative works cannot be registered as trademarks for tangible copies of those works or the entertainment services they may embody (not even on the Supplemental Register), and putting aside any personal challenges as to whether the film in question is fairly called “entertainment,” now that there is a sequel using the SHARKNADO name, it should be considered inherently distinctive and registrable on the Principal Register even for entertainment services in Int’l Class 41 or DVDs in Int’l Class 9.

And, just to make sure two is really more than one, SHARKNADO 3 is apparently already in the works, given the growing cult following — resolving any possible doubt about whether SHARKNADO represents the mere title of a single creative work. We’re talking series, now.

My only hope for Global Asylum is that their needed second and third trademark application sequels aren’t as much of a joke as their first attempt, or the SHARKNADO storyline.

To be on the safe side, let’s put on some whoolly hats, fill our beer mugs, and stay tuned for some more entertainment . . . .