It is easy for some to get all tied up in knots at the USPTO when facing challenging grounds for refusal against federal registration of a claimed non-traditional trademark. Not Bottega Veneta.

Last week the Swiss-owned fashion house and luxury brand was able to persuade the USPTO to approve for publication the three dimensional knot (shown to the right) as a non-verbal trademark for “handbags, shoulder bags, ladies’ handbags, clutch bags and purses”:

The mark is described this way: “[It] consists of a configuration, namely a three-dimensional knot with caps at each end, affixed to a clasp on the goods.” Registration was initially refused registration as a non-distinctive product design under Sections 1, 2, and 45 of the Lanham Act.

But, the recent 586-page submission, touting more than $18 million in sales over the past decade, more than $5 million in advertising since 2003, favorable declarations from a few fashion industry experts, and a good deal of unsolicited media attention and mentions of the iconic knot design, carried the burden of showing acquired distinctiveness under Section 2(f) of the Lanham Act (as the USPTO was not persuaded that the knot design could be considered inherently distinctive). The knot design is a feature of the configuration of the goods, so Supreme Court precedent would appear to make impossible a successful inherently distinctive trademark claim.

I was left wondering about whether look-for advertising played a role in Bottega Veneta’s success, but it appears not. Although none was required for the showing of acquired distinctiveness, there was no specific mention of look-for advertising in the Bottega Veneta submission to the USPTO, despite the existence of a few helpful references on the Bottega Veneta website:

The knot design is not limited to appearing on bags and purses, it appears. Just last month, Bottega Veneta’s same knot design trademark was published for opposition, as an inherently distinctive intent-to-use trademark for various personal care products in Int’l Class 3, but as the image below reveals, the mark already appears to be in use at least with women’s fragrances:

To the extent you’re wondering why the knot design for personal care products could be approved for publication with no showing of acquired distinctiveness — unlike the knot design as applied to bags and purses — the answer is: fragrances and personal care products don’t have configurations. So, unlike the knot design that forms a portion of the bag or purse, when it comes to fragrances and personal care products, the knot design forms a portion of the packaging for those products. As we have noted previously, the Supreme Court has indicated inherently distinctive product configurations are not possible, but inherently distinctive product packaging or containers are possible.

Having said that, the Examining Attorney at the USPTO appears to be reserving the right to refuse registration without a showing of acquired distinctiveness — even for the knot design in connection with fragrances — once Bottega Veneta submits evidence of use in connection with the claimed personal care products. In fact, it advised Bottega Veneta “that, upon consideration of an allegation of use, registration may be refused on the ground that the applied-for mark, as used on the specimen of record, is a nondistinctive configuration of packaging for the goods that is not registrable on the Principal Register without sufficient proof of acquired distinctiveness.”

I’m thinking that if such a refusal is issued after evidence of use is submitted, Bottega Veneta will be able to untie that knot as well, do you agree?

Last, I love the way Bottega Veneta has given the non-traditional knot design a name, not surprisingly it’s KNOT — and the luxury brand owner is seeking federal registration of the word too. What is surprising, however, is the USPTO’s initial registration refusal based on mere descriptiveness for Int’l Class 18 goods, such as purses and bags:

“Registration is refused because the applied-for mark merely describes a feature of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.  TMEP §1209.01(b); see, e.g., DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).

The term KNOT means “an interlacement of the parts of one or more flexible bodies forming a lump or knob (as for fastening or tying together).”  Please see the attached definition from the Merriam-Webster Online Dictionary.

As shown by the attached evidence from AStitchAHalf.com and PatternPile.com, the term merely describes bags and purses that are closed by tying a knot with the straps.  As such, the mark merely describes a feature of the applicant’s goods in Class 18.

Accordingly, because the applicant’s mark is merely descriptive under Section 2(e)(1) of the Trademark Act, registration is refused.”

I’d call that a pretty loose knot, wouldn’t you?

How cool is it to have the MLB All-Star Game and related events, right here in Minneapolis? Very.

As the advertisement shows, Pepsi is playing a large role in the event, as the “Official Soft Drink” of the MLB All-Star Game.

As attractive as the ad is, sadly, I suspect that only trademark types and dedicated DuetsBlog readers will automatically have their attention drawn to the “grip-able” portion of Pepsi’s new bottle design, launched last year — recall this little gem?

By way of dramatic update, Pepsi’s new bottle design was registered — yesterday — as a non-traditional trademark, see here.

The description of the mark reads:

“The mark consists of a configuration of product packaging in the nature of a three-dimensional bottle having a flat label panel on the top half, with a decorative band below the label panel containing a diagonal pattern, the bottle having concave sides where the diagonal pattern appears. The matter shown in the mark with dotted lines, the closure and footed base, is not part of the mark and serves only to show the position or placement of the mark.”

The “decorative band” reference is hardly the whole truth is it?

To that point, it is certainly interesting that functionality was never explored by the Examining Attorney at the USPTO (or addressed by Pepsi), instead the focus of the examination was on whether the bottle design is merely a non-distinctive package configuration, and Pepsi was able to convince the Examining Attorney that the bottle shape is inherently distinctive, with this response.

Apparently the Examining Attorney never considered any of the media coverage that we addressed last year? What, no dedicated readers among the Examining Corps?

Given how functionality is a challenge that can be raised “at any time” under the Lanham federal trademark statute, what might that mean for Pepsi when it comes time to enforce rights in this non-traditional trademark registration, now, or ever?

To the extent Pepsi’s early missteps in focusing on the functional aspects of the bottle design changes would support a viable challenge to invalidate the registration and any non-traditional trademark protection, reading the recent writing of the legendary Tony Fletcher (and one of my former partners) might provide an important pause for Pepsi:

“[I]f trademark registration of functional matter is not refused and a registration issues, the functional matter is a ticking time bomb . . . .”

Hopefully for Pepsi, the only explosions that will be heard during this MLB All Star extravaganza will be fireworks, and not the kind of functionality time bomb Tony has warned about.

July 4th weekend usually makes me think of three things:  the cabin, my favorite random historical facts about Presidents (did you know this?), and the Declaration of Independence.  In fact, I always encourage people on July 4th to read the Declaration of Independence, which includes one of the first usages of one of the most famous marks in the world, UNITED STATES OF AMERICA, and one of my favorite passages about government:

We hold these truths to be self-evident, that all men are created equal, that they are endowed by their Creator with certain unalienable Rights, that among these are Life, Liberty and the pursuit of Happiness.  That to secure these rights, Governments are instituted among Men, deriving their just powers from the consent of the governed.  That whenever any Form of Government becomes destructive of these ends, it is the Right of the People to alter or to abolish it, and to institute new Government, laying its foundation on such principles and organizing its powers in such form, as to them shall seem most likely to effect their Safety and Happiness.

What if the founders, after establishing the Patent & Trademark Office, would have filed for the trademark UNITED STATES OF AMERICA?  As we have seen recently with the mark MORMON, trademark protection for UNITED STATES OF AMERICA may have had a chance – even many years after its initial use.

It’s a generally fair assumption that the first use date for  UNITED STATES OF AMERICA as an indicator of source of governing and protective services was 07/04/1776, in the Declaration of Independence.  However, some evidence suggests that the phrase was first used to refer to the states as a collective authoritative unit in newspaper writings earlier in 1776 by someone known only as Planter.  The specimen of use could have been the Declaration of Independence, signage, or some marketing materials bearing the mark in connection with governing and protective services.  The owner could have been listed as a federal agency with the president as the signatory.

But have no fear, Section 2(b) of the Lanham Act is here.  Section 2(b) prohibits federal trademark protection for marks that “comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.”  Still, this doesn’t prevent people from trying to protect marks related to America or government organizations, and often slang derivations thereof. Your best bet may be using ‘MERICA.

This logo was allowed, but unfortunately the owner failed to provide a suitable specimen of use.

 

However, often times these filings incorporating government related marks and insignias are met with a 2(b) refusal by the Trademark Office, and  in the case of the logo below, a refusal for disparagement under 2(a).  If this is considered disparaging by the USPTO, surely the Redskins mark should be.

So don’t plan on getting a federal trademark registration using any government insignias anytime soon, and enjoy your bar-b-que and your fireworks this weekend.  ‘MERICA!

 

Marketing types, it may well be obvious to some, but it is always important to consider the source of inspiration for the branding and marketing of the products and services you promote.

At least for those who follow country singer Toby Keith, with a Costco retail end-cap display like this, it’s hard not to assume where the inspiration came from: Keith’s musical hit “Red Solo Cup.”

As Sterling Whitaker wrote this past summer for Taste of Country:

“Never underestimate the power of partying. Toby Keith’s party-hearty anthem ‘Red Solo Cup’ has been certified double platinum by the RIAA after selling two million digital downloads, which also makes it Keith’s career top seller. The news comes just six months after the song was certified as the first platinum single of his career in January.”

Even assuming the notoriety of Keith’s “Red Solo Cup” musical performance and award-winning music video inspired the branding of the above display for big, red, Chinet brand disposable plastic cups, I’m not suggesting any inspiration has led to a viable trademark legal claim. But, I am suggesting that when inspiration for a product and the marketing of it derives from something other than purely public domain material, it’s time to invoke at least a little perspiration, pause and consult a competent trademark type.

As to the more straightforward trademark issues that don’t generate too much sweat, unlike the case with the color red when applied to the sole of high fashion women’s shoes, given how many different unrelated brands offer red-colored disposable plastic cups (Dixie, Solo, Chinet, Hefty, Party City, and Wal-Mart, among others), there should be little fear that any one of them ever could own exclusive rights in the single color for these goods. And, since there is no use of the Solo trademark or brand in the display, what is left for comparison are pretty much descriptive, if not generic terms: The Big Red Cup. That, however, didn’t stop Huhtamaki — the corporate owner of the CHINET brand — from attempting to own THE BIG RED CUP designation as a trademark.

To that point, it is a bit curious that Huhtamaki’s federal trademark application for THE BIG RED CUP did not receive a mere descriptiveness refusal under Section 2(e)(1) of the Lanham Act, since the cups appear both big and red. It did, interestingly however, receive a likelihood of confusion refusal with Wrigley’s BIG RED trademark registration (for mugs, not chewing gum, thankfully), and so THE BIG RED CUP trademark application currently stands abandoned, since Huhtamaki failed to respond to the registration refusal. But, now that the cited Wrigley’s registration has been cancelled for failure to show continued use of the BIG RED mark for mugs, it will be interesting to see whether Huhtamaki makes another attempt, and if so, whether this time it receives a mere descriptiveness refusal.

As to other possible issues, and putting aside what would likely be a weak likelihood of confusion claim (and I won’t even mention dilution), we know that there can be no trademark rights in “Red Solo Cup” without actual trademark use, as mere use of the phrase as the title of a song doesn’t qualify. And, since another’s brand name (Solo) is included within the phrase, this would appear to further complicate any claim by Keith to own trademark rights in the phrase “Red Solo Cup.” But what about a much less relied upon legal theory, one that provides rights without formal trademark use or rights: Right of publicity and the assertion of a false connection (as opposed to likelihood of confusion) bar to federal registration, under Section 2(a) of the Lanham Act?

There are more than a few interesting questions to ponder on that point. But limiting our focus to the most obvious one: Is “Red Solo Cup” so intertwined with and part of Mr. Keith’s persona that he would have an enforceable right of publicity and standing to oppose registration under a false connection theory? (Never mind that Keith may not want to assert that the song title is part of his persona and right of publicity, as he has labeled the song (which he didn’t write) “nursery song stupid.”) There is certainly precedent available if Keith were so inclined to humble himself to this linkage. Trademark types will recall Jimmy Buffet’s success in an early non-trademark case where Buffet prevailed on a false connection claim to prevent the Chi Chi’s restaurant chain from registering MARGARITAVILLE (well before Buffet had developed extensive trademark rights and his present licensing empire in the song title).

So, you think the potential right of publicity/false connection issue surrounding “Red Solo Cup” is a fringe hypothetical that will never surface?

Then consider this example: RED SOLO CUP FOR PRESIDENT. Unless someone gets in the way (from inside or outside the USPTO), it appears that a photographer from Newport News, Virginia is positioned to have this mark published for opposition, as no Section 2(a) or 2(d) refusals were made by the USPTO.

So, I must ask, is “Red Solo Cup for President” another way of saying “Toby Keith for President”?

If so, Keith probably has standing to oppose even without actual trademark rights in the phrase. What do you think?

Trademarks and branding are worth a lot of money to a company.  The Fourth Circuit recently addressed the serious issue of trademark counterfeiting.  This form of trademark infringement occurs when a company manufactures goods (or performs services) that are identical to those of the trademark owner, and then passes them off as the authentic goods (or services) of the trademark owner.  This misleading behavior harms the public in general.

To address this serious crime, Congress enacted the Trademark Counterfeiting Act of 1984 (“Counterfeiting Act”).  The Counterfeiting Act makes it a federal crime to violate the Lanham Act by the intentional use of a counterfeit trademark and/or the unauthorized use of a counterfeit trademark.  Penalties under the Act include a prison sentence of up to five years and/or a $250,000 fine ($1,000,000 fine for a legal entity) for selling or even attempting to sell counterfeit goods or services.  In addition to criminal penalties, the counterfeiter can be sued civilly by the owner of the trademark under the Lanham Act.  Recovery under the Lanham Act can include lost profits, triple damages and attorney’s fees.

Last week, the Fourth Circuit upheld jury verdicts convicting counterfeiters of importing and selling counterfeit Burberry handbags and wallets.  The well-known plaid pattern trademarks at issue are often referred to as the “Check” mark.  Specifically, the judge stated that “[t]he plaid pattern displayed on appellants’ goods differs only slightly from the Burberry Check mark — in color and in the shape of the boxes formed by the stripes.”  Accordingly, the marks on the counterfeit wallets and purses were close enough to Burberry’s trademark to support the jury verdict.

Handbags and wallets are goods that are often counterfeited both in the United States and abroad.  What other products have you encountered that have counterfeit trademarks?

–Sharon Armstrong, Attorney

The Lanham Act prevents applicants from registering any of a number of words and devices as marks, including immoral or scandalous matter and flags or coats of arms.  In terms of the latter exclusion, such a prohibition makes sense; without it, for example, any merchant could use an American flag to hawk goods and services regardless of whether they had any affiliation with the U.S. government.

But what about designs that used to be part of national flags and, once upon a time symbolized a nation, but are no longer?  As the recent example of South Sudan shows, new boundaries – and nations – can emerge at any time, fundamentally changing the maps we use and the countries of which such nations used to be a part.

While I am not aware of any adjudication of this issue in the United States – please let us know if you do – the European Union has dealt with this issue recently.  Specifically, the EU General Court rejected an attempt by Couture Tech Ltd. (“CTL”) to register a trademark for the Soviet sickle and hammer for use in connection with a variety of goods and services in Classes 3, 14, 18, 23, 26 and 43.  These classes include personal care products and restaurant services, among many other goods and services. 

Under EU law, a trademark may not be registered if doing so would be contrary to public policy, and that this standard must take into account the views of the relevant public in the EU, even if the relevant public resides in only one Member State.  In particular, the court noted that both Hungary and Latvia ban the use of certain symbols such as the hammer and sickle as trademarks.

The applicant argued that the political connotation of the former USSR’s coat of arms had been diffused over time into something other than a political symbol.  However, although the boundaries of the Soviet Union disintegrated in 1991, the court found that these symbols continue to be viewed by a significant portion of the population in Hungary – namely those persons who lived during the existence of the USSR – as political symbols.  As such, the court refused registration of the mark.

Beyond the overt political connotation of an entwined hammer and sickle, the use of such a symbol strikes this author as a sure-fire way simply to confuse or offend one’s customers to the point of refusing to buy one’s product.  The applicant argued that it’s use of the hammer and sickle as a commercial trademark is “avant-garde.”  While making commercial use of a symbol formerly used to advance a communist regime may indeed turn the original meaning of the symbol on its head, this author wonders how many consumers would give a mark such thought before decided whether or not to buy the product or service with which the product is used.

What do you think of co-opting political symbols for commercial use?

About a week ago another interesting federal intellectual property case was filed in the District of Minnesota: Fantasy Flight Publishing, Inc. v. Puffin Software et al.

Although the four count complaint includes a federal unfair competition claim, a Minnesota deceptive trade practices claim, and a common law unjust enrichment claim, the case really appears to be centered around the copyright infringement claim.

Plaintiff Fantasy Flight asserts that its copyright in the Battlelore® board game has been infringed by the "substantially similar" iPad game called Viking Lords:

"The Viking Lords game is simply an iPad version of the BattleLore® game under a different name. Defendant Päivinen has publicly acknowledged that he and some friends initially developed Viking Lords as a computer version of the BattleLore® game. Päivinen first approached Plaintiff with a prototype. However, after Plaintiff was slow to respond to his approach, and seeing the explosive growth of the iPad devices and platform, Defendant Päivinen and his friends decided that they had a great opportunity to capitalize on their computer version of the BattleLore® game by distributing and selling it through the Apple App Store."

While the complaint includes some language that you would expect to see in an unfair competition claim under Section 43(a) of the Lanham Act, references such as "likely to cause confusion," "business goodwill" and "exclusive rights," there is no claim that the Battlelore trademark has been infringed nor any allegation that any non-traditional trademark or trade dress rights exist or have been infringed, so it is unclear exactly what "exclusive rights" have been violated under Section 43(a) of the Lanham Act.

To prevail on its federal Lanham Act unfair competition claim, Fantasy Flight will need to prove that it owns distinctive common law trademark rights that have been infringed. Since Fantasy Flight has not alleged infringement of the Battlelore trademark, perhaps it intends to rely on non-traditional trademark rights, such as trade dress or the look and feel of the BattleLore® game.

If so, it needs to say so, but, to date, the initial complaint fails to specifically identify any traditional or non-traditional common law trademark rights that have been violated, and it has failed to articulate the elements of a non-functional and protectable common law trade dress right.

Perhaps the most intriguing line in the complaint is the assertion and admission that "Plaintiff is currently ignorant of the true business form of Puffin Software." Personally, I’d choose a different word to explain when I don’t know and can’t figure out something. Ignorant is too easily confused with stupid.

Although it is undoubtedly true for me, instead of saying, "I’m ignorant when it comes to board games involving war strategy, adventure, and fantasy," I’d probably say something more like "I’m unaware or that I have no particular knowledge or experience with those kinds of games."

In any event, given the apparent pleading failures in the complaint, only time will tell whether a motion to dismiss the Lanham Act claim might reveal one more point of ignorance for Plaintiff.

Many visitors traveling to Times Square since 2002 have caught a glimpse of the Naked Cowboy®, a/k/a Robert Burck. He sings and officiates weddings (charging $499 and up). He even ran for the Mayor of New York at one point (although he ended up withdrawing from the race). For those of you who have not travelled to the Big Apple, the Naked Cowboy also appears on television in venues ranging from Sunday football pregame shows to “The Apprentice.” Mr. Burck, a savvy businessman, secured a trademark for the Naked Cowboy. He dresses (or undresses) in a white hat, boots and underwear briefs. Mr. Burck also franchises this image and provides training for other would-be Naked Cowboys. With an income estimated at $5,000 an hour from tourist donations alone, and adding to that revenue from souvenirs, franchise fees and appearance fees, the Naked Cowboy brand is valuable. Mr. Burck vigilantly protects his trademark, likeness and brand. 

Naked Cowboy, doing business as Naked Cowboy Enterprises, previously sued the Naked Cowgirl. There were allegations that her vulgar hand gestures (i.e., giving the finger) harmed his valuable trademark and image. The parties are currently in settlement discussions.

Mr. Burck’s company also took on America’s favorite candy company. When Mars Company put up a billboard in the Naked Cowboy’s backyard (i.e., Times Square) featuring a cute M&M candy wearing the famous garb, the Naked Cowboy sued. Mars defended the lawsuit based on the First Amendment right to parody Burck’s character. Before there was a resolution on the merits, the candy company and the Naked Cowboy reached a settlement.

The latest target for Mr. Burck’s trademark enforcement is daytime television. It’s notJames Franco’s psychopathic artist character “Franco” on “General Hospital” (although wearing this garb may be an idea for the Oscar nominee/host to try). Instead, CBS and the producer of The Bold and the Beautifulare being sued over the character Oliver, who dresses as the Naked Cowboy on the show. To add insult to injury, the daytime “Naked Cowboy” was referred to as a “fool” on the show. Specifically, the Naked Cowboy has sued CBS and the producer of the show for trademark infringement, false designation of origin passing off and false advertising under the Lanham Act, dilution of the mark, and false description along with various state law claims. When they file their answers in the case, CBS and the producer of “The Bold and the Beautiful” may raise the First Amendment right to parody defense that was raised by the Mars Company. Only time will tell as to whether the Naked Cowboy can prevail in his suit against the daytime drama.

 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.

Inherent in the question posed by the title of this post is the fact that the word "trademark" has more than one meaning, in fact, multiple meanings in the English language.

Yet, some trademark types would have you believe that there is only one true meaning to the word "trademark" and that this meaning is not and cannot be as a verb. According to this viewpoint, all uses outside the confines of the Lanham Act are "misuses." Nevertheless, some of us trademark types don’t share that narrow perspective, and some of us even have the audacity to think we have a solid and "fundamental understanding of American trademark law." In any event, since it has been more than a short while since writing on the topic of IP Grammar, I thought it might be time for a gut check on my position.

So, to make sure I hadn’t been seeing things the last time I consulted the dictionary, I pulled the well-worn American Heritage Dictionary of the English Language (Third Edition, 1992) from my shelf, and what did I find, but two noun meanings and two verb meanings for the single word "trademark" — just as I had remembered them:

  1. n. A name, symbol, or other device identifying a product, officially registered and legally restricted to the use of the owner or manufacturer;
  2. n. A distinctive characteristic by which a person or thing comes to be known: the shuffle and snicker that became the comedian’s trademark;
  3. v. To label (a product) with proprietary identification; and
  4. v. To register (something) as a trademark.

Dictionary.com says pretty much the same thing.

So, why the persistence of some in pushing for a single meaning, one rooted in the Lanham Act, declaring all other uses "misuses," even when they comport with black-letter dictionary definitions?

My thoughts on the subject are in more detail here:

Which of the above definitions of the word "trademark" have meaning to you?

Can you sleep at night knowing that it might take further inquiry to undertand which one is intended when the word "trademark" is used by someone other than a trademark lawyer?