We’ve had a lot of nothing — meaning zero, and the trademark meaning, if any, of zero — on our mind lately, so imagine my surprise to see this soap “brand” for the first time last week in a hotel:

Not sure how to pronounce it, but as we know, there really is no “correct” way to pronounce a trademark, so it could be Zero, or perhaps a telescoped version of Zero Percent, who knows?

What we do know for sure is that neither Zero nor Zero Percent functions as an inherently distinctive trademark to identify, distinguish, and indicate a single source of this body collection:

Why Applicant’s Mark is Deemed Descriptive

“Applicant seeks to register the designation “ZERO%” for bath soaps in liquid solid and gel form; Body lotions; Hair shampoos and conditioners; Shower Gel.” Had applicant not applied under 1(a) and submitted specimens of use consisting of the bottles for shampoo, conditioner, body lotion, shower gel and hair 2 in 1, the mark would likely not have been seen as descriptive.

However the specimen bottles show graphically just what “ZERO%” describes about the applicant’s product. On each bottle is the following legend, explaining the mark:

 “ZERO sulfates

 ZERO parabens

 ZERO phthalates

 ZERO artificial colours

 ZERO animal testing”        

Thus it appears that “ZERO%” refers to the ingredients that are NOT present in applicant’s soaps and hair care and body lotion and shower gel products.  Sulfates and parabens have long been regarded as suspect with respect to human skin. Testing on animals is considered cruel. The ZERO% describes a certain purity in applicant’s products and a certain ethical sensibility about not making money from suffering animals.

In a parallel situation Diet Coke did very well when Coca Cola produced a ZERO caffeine soda, with, of course, zero calories.  Both caffeine and calories are enemies of healthful ingestion.

Applicant is applying the same logic to its toiletries and hair care products. This is to be applauded, however, the mark chosen, “ZERO%,” even without benefit of an explanation on every bottle, would have to have referred to SOMEthing about the goods. “ZERO%” of what? would be the logical question. And there is the answer, front and center, on the bottle.

Another way to look at this is: if using the name of an ingredient of the goods is descriptive use, then surely using a term that indicates the absence of unhealthy or unethical ingredients would also be descriptive.

Two major reasons for not protecting descriptive marks are (1) to prevent the owner of a descriptive mark from inhibiting competition in the marketplace and (2) to avoid the possibility of costly infringement suits brought by the trademark or service mark owner.  In re Abcor Dev. Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); TMEP §1209.  Businesses and competitors should be free to use descriptive language when describing their own goods and/or services to the public in advertising and marketing materials.  See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001).”

This descriptiveness refusal might be the most conversational and empathetic explanation I’ve seen over the course of my trademark career. Nicely done, USPTO Examining Attorney Jill C. Alt.

More than 6 years ago, Applicant Gilchrist & Soames, accepted the Examining Attorney’s invitation to amend to the Supplemental Register, for marks only “capable” of becoming distinctive.

In most cases, the attentive owner of a Supplemental Registration, in use for 5 consecutive years, already would have filed for Principal Registration, arguing in favor of acquired distinctiveness.

Gilchrist & Soames hasn’t (yet), and given what Zero has evolved to mean, will the noted parallel to Coca Cola’s Zero soda, cleanse zero to mean “incapable” of trademark status as a soap type?


In terms of zero sum games, in the trademark world, even if Zero and Zero Percent turn out to be generic, perhaps Gilchrist & Soames gained more in marketing than they would lose in trademark.

As we share another Labor Day together on DuetsBlog, we’re thankful for the emotional labor of those on this journey with us, and we hope you agree this effort is a win-win, no zero sum game.

Today marks the end of the 2010 Minnesota State Fair.

Sad day, but Happy Labor Day!

It also marks an opportunity to talk a bit about the frequently encountered question of trademark priority, frozen trademark rights, the creation of common law trademark rights, and the frequently forgotten concurrent registration trademark tool, using my favorite frozen custard stand at the MN State Fair, as a laboratory and an example:

 No doubt, a clever play on words, and a great inherently distinctive name and mark for a frozen custard business.

Turns out, a frozen custard business in the Kansas City, Missouri area thought so too, so what to do? Who was first and where, and whether any federally-registered rights exist, will have a lot to do with the respective naming rights and the geographic scope of any common law trademark rights. 

Since the folks in Kansas City had the foresight to federally register, they filed a federal registration application on August 30, 2001, a couple of years after their claimed first use on November 5, 1999, with a registration certificate issuing on November 12, 2002, and without knowing when the use began in Minnesota, and assuming the dates set forth in the registration are accurate, here is a proposed three-way framework of analysis and some thoughts to consider, depending which side of the fence you might find yourself or your client, in a fact pattern like this:

Scenario A: MN-CLS’s First Use Predates KC-CLS’s First Use Date of November 5, 1999

  1. Normally one with priority — like MN-CLS has in Scenario A — may petition to cancel a confusingly similar trademark registration (thereby freeing itself of any impairment to expand), but since KC-CLS’s registration is more than five years old, MN-CLS is unable to do so based on priority and likelihood of confusion, it is limited to seeking cancellation on other less commonly viable grounds such as fraud and/or abandonment;
  2. This delay by MN-CLS may be costly to its rights because its common law rights may be frozen (no pun intended) to the geographic scope of those rights as of KC-CLS’s filing date of August 30, 2001, making any later geographic expansion a possible violation of KC-CLS’s rights;
  3. MN-CLS’s best position for having the freedom of geographic expansion is to seek a concurrent use registration, requesting some equitable allocation of the entire area within the United States; and
  4. If MN-CLS doesn’t care about geographic expansion, the use it had prior to KC-CLS’s filing date of August 30, 2001, most likely, is safe, and most likely, cannot be disturbed by KC-CLS.

Scenario B: MN-CLS’s First Use After KC’s First Use, But Before Filing Date of August 30, 2001 —

  1. As was the case in Scenario A, since KC-CLS’s registration is protected by the five year statute of limitations, running from the date of registration in 2002, and for the additional reason that MN-CLS lacks priority over KC-CLS’s first use, cancellation of KC-CLS’s registration is not possible on priority and likelihood of confusion grounds, so the most likely remaining way to attempt to knock out KC-CLS’s registration (to avoid impairment of its ability to freely expand) would be on fraud and/or abandonment grounds;
  2. As such, MN-CLS may want to probe whether KC-CLS ceased operations for a period of time sufficient to abandon rights, since a Section 8 Declaration of Use was filed (which only requires current use to maintain the registration), without the typical accompanying Section 15 Declaration (which more strenuously requires continuous use for the preceding five years, etc.), so this may be a possible abandonment red flag to explore;
  3. Assuming KC-CLS’s registration is not subject to cancellation, MN-CLS’s common law rights are most likely frozen to where they were as of KC-CLS’s filing date of August 30, 2001, unless MN-CLS pursues and obtains a concurrent use registration; and
  4. If MN-CLS doesn’t care about expansion,  the use it had prior to KC-CLS’s filing date of August 30, 2001, most likely, is safe, and most likely, cannot be disturbed by KC-CLS, provided MN-CLS was a good faith adopter in an area geographically remote from KC-CLS’s prior common law rights.

Scenario C: MN’s First Use After KC’s Filing Date of August 30, 2001

  1. MN-CLS may have stepped in it, and it is probably living on borrowed time without being in control of its own destiny, assuming there is no basis upon which to cancel KC-CLS’s registration;
  2. Even if MN-CLS had no actual knowledge of KC-CLS, its continued use in Minnesota is vulnerable to a complaint by KC-CLS, since the registration KC-CLS obtained treats KC-CLS as though it constructively used the "Custer’s Last Stand" mark throughout Minnesota as of the filing date of August 30, 2001, prior to MN-CLS’s first use in Minnesota.

Takeaways:

So, this framework of analysis doesn’t necessarily cover all possible factual scenarios and outcomes, but it is a good starting point for evaluating the respective rights of the parties in these all-too-common trademark fact patterns, where many forget about the concurrent use registration angle.

At least one more takeaway from this framework should be apparent: Those who register their rights early — and for those who don’t, but who monitor the Trademark Office filings, taking appropriate action within the first five years of a prior conflicting registration — generally are rewarded under the trademark law more than those who sleep on their rights and delay their registration efforts.

Perhaps, no surprise, at least, until you and/or your client steps in the chocolate custard.

What kind of success have you encountered when pursuing concurrent use registrations to avoid the freezing effect of otherwise conflicting trademark registrations?