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.


A local real estate agent has argued that the above design is unique enough to make the SOLD! designation distinctive and registrable as a service mark for “information in the field of real estate and real estate services,” among other goods and services. The USPTO wasn’t sold on the idea, but not for the expected reason.

Given the USPTO’s growing love for the “merely informational matter” category of incapable subject matter — essentially contending the subject matter fails to function as a trademark or service mark — I fully expected to find that refusal in the file history of the application, prior to abandonment of the application, but no.

Instead, the USPTO denied registration based on two prior marks owned by unrelated entities: (1) SOLD.COM for “providing access to, and information on, specific real estate listings and related products and services via a global computer network;” and (2) SOLD IN 32 DAYS for “real estate brokerage” services.

The USPTO surprisingly failed to raise the merely informational, failure to function refusal; perhaps it would have arisen had the Applicant been able to overcome the likelihood of confusion refusals, as the remaining descriptiveness refusal couldn’t prevent the Applicant from amending capable matter to the Supplemental Register.

It’s hard to conceive any rendition of SOLD! being considered inherently distinctive for much of anything in the field of real estate; even if the design elements were so unique to make the distinctiveness sale fly, it would still require that the wording SOLD! be disclaimed as non-distinctive matter — either descriptive or incapable.

What do you think? Are SOLD.COM and SOLD IN 32 DAYS really capable of serving as service marks for real estate services? If so, do you agree that SOLD! is capable, but properly refused registration because it’s too close to both of the prior marks? If they can coexist peacefully, then why can’t SOLD! peacefully coexist too?

I’m not a fan of the USPTO’s growing emphasis on the merely informational, failure to function refusal, as incapable matter, but here I am thinking it may have been the most appropriate refusal for each of these claimed marks, which would have allowed them to peacefully coexist and kept them off the Supplemental Register.

I’ve heard about how some believe they are so gifted they can sell ice to an Eskimo, but that doesn’t necessarily mean the USPTO is in the market. Having said that, if SOLD! was worth giving it the old college try, then why not honor our previous tempting invitation to test this wingspan pose with the USPTO?

I don’t think LeBron or Nike would mind, do you?

 

You never really need to wonder where the beef empanadas are, inside the display case, at least at Whole Foods, given the literal “beef” branding — visible on the edge of each outer dough shell.

This is a good example of a word appearing on a product that does not function as a trademark, as it does not satisfy the 3 elements of: identifying, distinguishing, and indicating a product’s source.

Instead, the word “beef” above connotes what’s inside, the primary ingredient of each empanada — you might say, it is merely informational, incapable of serving a trademark or brand purpose.

While “beef” could be a perfectly suitable and suggestive trademark for something not containing that meat, like clothing (assuming it’s available); as it is above, it’s simply a generic designation.

I’m thinking Whole Foods is missing out on an opportunity to also imprint on its empanadas a symbol that designates where they came from, who put them out, their source, don’t you think?

It is frequently becoming more and more difficult to remember all the topics we’ve covered here over the last — almost — nine years. A recent Snickers end cap display jogged my memory:

Turns out, eight months into this little adventure we call DuetsBlog, I wrote a blog post called Delicious Trademarks: Candy Bar Cross-Section Trademarks? Then, a year later I wrote this one.

My only friendly amendment to the above point of sale end cap convenience store display is to swap the ™ notice for the coveted (or not so, under certain circumstances) ® registration symbol.

Wow, I have been asleep at the switch on this topic, my sincere apologies dear readers. Nearly a year after my second post on this topic, Mars filed an application to register this trademark:

After a couple rounds of descriptiveness office actions, Mars was able to persuade the Trademark Office that the claimed non-verbal candy bar depiction had acquired distinctiveness.

But, that wasn’t the end of the story, because as is often the case when unusual trademark protection is sought, a direct competitor came knocking, in this case, Hershey Chocolate opposed.

Our friend Marty Schwimmer over at the Trademark Blog was johnny-on-the-spot back in 2013 as Hershey opposed the day before Halloween, while I was distracted with this cheesy topic.

The functionality opposition continued for roughly three years until Hershey was able to extract some pretty sweet concessions from Mars, as revealed in this Consented Withdrawal of Opposition Without Prejudice Contingent Upon Amendment of Application.

So, after a little interpretation and modification by the Board, the registration issued with these express limitations:

“The mark consists of a cross-section of a candy bar showing layers within the candy, namely, a middle light brown layer containing several tan-colored peanut shapes and a bottom tan layer, all surrounded by a brown layer. The mark depicts a distinctive two-dimensional cross-sectional view of a candy bar.”

“No claim is made to the exclusive right to use the following apart from the mark as shown: THE SELECTION OF CANDY BAR INGREDIENTS DEPICTED IN THE MARK OR TO THE CONFIGURATION OF A CANDY BAR CONTAINING THOSE INGREDIENTS, EXCEPT AS DEPICTED IN THE APPLIED-FOR MARK.”

Now, there’s a mouthful. Suddenly, the actual issued trademark registration, doesn’t seem all that non-traditional, non-verbal yes, but clearly a two dimensional slice of, let’s say, non-configuration.

Given that, would you be speechless explaining to a client (anyone other than Hershey) what it can and can’t do in advertising food looking something like that when broken in half?

Another question, why doesn’t the end cap display of the cross-section match the drawing of the registered mark? For what it’s worth, I’m more tempted by the end cap than the registration.

Last question, what about Mars’ representation that the claimed mark “always appears in exactly the same manner when used by Applicant.” Maybe it was true when made, don’t know for sure.

Well, it was fun while it lasted. Some incredible moments last longer than others, and when the stars are all lined up, they can even translate into a movement. Yet, the blistering loss in Philly proved that our hope of being more than a host for Super Bowl LII, wasn’t meant to be.

Minnesota was seriously buzzing for the past week, following the incredible final-second touchdown score by Stefon Diggs, to launch the Vikings past the Saints, sending them to Philly to be favored as the likely NFC champion for Super Bowl LII. No more Dilly Dilly, Vikes couldn’t Bring it Home.

Sadly for the Minnesota Vikings and their fans across the country, the meaning of the Minnesota Miracle and Minneapolis Miracle phrases have been relegated to a brief moment in history — memorable no doubt, but memorable and meaningful for much less than most hoped for here.

Trademark filings reveal that the Minnesota Vikings hoped for more too, and likely hoped to cash in more too, within twenty-four hours of the infamous catch, the team sought to turn the meaning of Minnesota Miracle and Minneapolis Miracle into exclusive and proprietary trademark rights.

Team ownership filed a few used-based applications (here and here) and a pair of intent-to-use trademark and service mark applications (here and here) covering virtually every good/service known to men, women, and children, including the proverbial kitchen sink. Are you wondering how many of those items could withstand a challenge on the requisite bona fide intent? Let’s say I am.

It remains to be seen whether the USPTO will issue the increasingly common failure to function and informational refusals against the use-based applications.

It also remains to be seen whether the buzz around the Vikings several trademark applications concerning those phrases will last longer than our week of euphoria.

Perhaps even most interestingly, no one seems to be reporting about the apparent lack of alignment on who owns what surrounding the Minnesota Miracle and Minneapolis Miracle phrases, with quarterback Casey Keenum (a little slow on the draw) filing for both phrases as trademarks (two days after the Vikings did), and with Stefon Diggs apparently selling his own shirts, here:

We follow closely and write a lot about what goes on with the Trademark Trial and Appeal Board (TTAB) at the U.S. Patent and Trademark Office (USPTO); these ironmongers do too, really well.

Serious trademark and brand owners care about TTAB decisions because many trademark disputes begin and end there, as the TTAB determines the important right to federally register trademarks.

What I mean by beginning there is, discreetly-used third party conflicting marks “flying under the radar,” rise to another level of trademark enforcement importance for a trademark and brand owner when the user also seeks federal registration, almost requiring the opening opposition salvo.

Federally-registered trademark owners know the importance of protecting the federal trademark register, because what, and how many similar third party marks, are allowed for registration, can negatively impact the owner’s trademark strength, scope of rights, and enforcement success.

Trademark rights are dynamic, they’ll shrink or grow over time, depending on the landscape at the time of enforcement, so not limiting registration at the USPTO can have more negative impact on strength and scope than an single, discreet, unauthorized use of a confusingly similar mark.

Looking the other way at trademark applications landing within a brand owner’s legitimate scope of protection, indirectly sends the perhaps unintended message to the trademark world, and those who monitor it, that the owner willingly accepts the shrinkage of its trademark rights.

So, serious trademark owners watch for conflicting filings at the USPTO, and stand in the way of registration, until agreement can be reached on how to coexist without a likelihood of confusion.

What I mean by many trademark disputes ending at the TTAB is, most oppositions do not go to final decision, the vast majority settle with a mutually-beneficial coexistence agreement in place.

And, when they don’t, trademark and brand owners — who follow us here — also know that the importance of final TTAB decisions has been raised, as the U.S. Supreme Court recently opened the door to having certain TTAB decisions — through the application of issue preclusion — control the outcome of later federal district court infringement and dilution law suits.

Congratulations to the TTAB on reaching sixty years of dedicated service to trademark and brand owners, as we look forward to the interesting issues likely to be decided in 2018 and beyond.

As I reflect on the more than twenty-five years of my experience before the TTAB, at this point in time — spanning nearly half of the TTAB’s existence — I’ll have to say, the TTAB seems to be carefully and thoughtfully emulating the characteristics of a fine wine as it matures.

What are your predictions of the 2018 decisions that will stand out? Fraud? Functionality? Fame?

Will the TTAB revisit its previous perceived inability to address Constitutional issues, like say, dilution tarnishmentreligious text marks, or application of the Section 2(c) bar to prevent federal registration of political trademark speech, and, if not this coming year, when?

I’m thinking this will be the year of informational and failure to function decisions, how about you?

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!

Sandwiched between 90 degree days in a Minnesota summer, the idea of Halloween wasn’t on my radar – until I learned about the latest dispute between candy giants Mars and Hershey’s.

Mars and its subsidiary own many well-known candy brands, including M&Ms, Snickers, Twix, Skittles, Life Savers, and others. Not to be outdone, Hershey maintains its own stable of popular brands in addition to Hershey brand, including Kisses, Reese’s, Twizzlers, and others. Even though the parties are major competitors, it appears the two bonbon behemoths don’t frequently compete in proceedings at the Trademark Trial and Appeal Board, except for extensions of time to oppose and a handful of oppositions settled quickly.

In light of the history, Hershey may have been spooked when it first learned that Mars filed a Notice of Opposition last month against Hershey new application to register the mark SCARY in connection with “Candy.” The Notice of Opposition (available here) claims that the term SCARY is “highly descriptive” and “generic” in connection with candy, especially candy sold or promoted during the Halloween season. Mars alleges that “SCARY is like ‘HAUNTED’ ‘SPOOKY’ or ‘BOO,’ only SCARY is more frequently used.” In light of this, Mars alleges that “SCARY is no more capable of being a trademark for candy than is TRICK OR TREAT.”

Mars’s arguments have some bite. I don’t recall the specific brands from my candy hauls on the streets of my Iowa hometown, but I remember a lot of Halloween imagery: ghosts, pumpkins, monsters, and others. Yet I’m not sold on the idea that SCARY is descriptive, let alone generic, for candy. To be descriptive, a term must immediately describe “an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services” (according to the Trademark Manual of Examining Procedure). Scary doesn’t seem like it describes the candy, but instead merely the marketing used to advertise the candy. Establishing that SCARY is generic is even more difficult, because “generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services” (TMEP). If there is a genus specifically for candy marketed for trick or treating, the genus is probably “Halloween Candy,” not “Scary Candy.”

A claim that might have a better chance of success, however, is that the term SCARY does not function as a trademark, but instead is understood by consumers as conveying information about the goods. Consumers might perceive the term scary as indicating the candy is meant for use in the Halloween season, or that the term SCARY is somehow ornamental or informational. Unfortunately, Hershey filed the application on an intent-to-use basis, so Hershey has not yet used the mark. As a result, it is difficult to evaluate whether Hershey’s use constitutes use as a trademark.

While Mars has a colorable claim, I don’t see SCARY as crossing the line into the descriptive category of the marks. I think SCARY is likely used by a number of third-parties, but I think this means that consumers perceive SCARY (and similar variations) as being a weak designation of source, but not necessarily descriptive. Notwithstanding, Mars has legitimate concerns. If Hershey obtains a registration, Hershey could take a broad view of the scope of its rights, seeking to prevent others from using SCARY or similar terms, even against third-parties who may be making a non-trademark use in connection with Halloween candy. For example, Mars uses the term SPOOKY on the candy below:

Mars might be fighting to protect itself and others in the industry from the potential of Hershey wielding a SCARY registration as a sword to unfairly inhibit competitors from using certain Halloween imagery. This goal seems reasonable under the circumstances, even if the claim of “mere descriptiveness” has some weaknesses. It would not be the first time a trademark owner relied on a registration to push competitors away from non-infringing uses.

Notwithstanding Mars’s good intentions, it might be difficult for Mars to claim a “white hat” in this battle, at least with a straight face. Mars owns its own registration for SPOOKY SHAPES for “candy” (disclaiming SHAPES). With that in mind, Mars might be wishing it hadn’t alleged that “SCARY is like . . . SPOOKY” in the Notice of Opposition. If SCARY is like SPOOKY, then it is hard to see why Mars’s use of SPOOKY is a legitimate trademark use, but Hershey’s use of SCARY is not. While the statement doesn’t prevent Mars from prevailing, it does suggest that the purported harm to the industry may be exaggerated. But who knows, perhaps Mars has a few tricks up its sleeve.

-Wes Anderson, Attorney

As Kentucky prepares to square off with Wisconsin in the NCAA Final Four and move one step closer to an undefeated, 40-win season, the University of Kentucky has been dueling with one of its own – a fan and attorney claiming he has already secured trademark rights to “40-0.” But can such a term even function as a trademark, or is it just information?

40and0

As ESPN reports, a Louisville-based lawyer named David Son is the owner of www.40and0.com, which sells blue-and-white t-shirts and apparel bearing the term “40-0.”  That term just happens to coincide with what Kentucky’s record will be if it wins the national championship next Monday. Son received a cease-and-desist letter from the University of Kentucky asking it to cease all sales on the site.

Nevertheless, Son believes he has the upper hand on Kentucky —  a pending trademark application for “40-0,” filed in February 2015. He also claims that his use of the mark dates back to 2013. Son registered the entity “40-0 LLC” on October 25, 2013, having registered the 40and0.com domain name three days earlier. (Interestingly enough, according to Son’s LinkedIn page, Son is a Kentucky fan but also a law graduate of the University of Louisville, the undisputed arch rival of Big Blue Nation.)

The crux of Kentucky’s complaint is likely not just Son’s use of the “40-0” mark but the entire premise of his site, which seeks to capitalize on Kentucky’s bid for perfection. The site may suggest a sponsorship or affiliation with the University of Kentucky based upon the colors of the bulk of apparel featured on the site (blue and white) and the clear association between “40-0” and the Wildcats’ run to an undefeated season.

To Son’s credit, he has taken a few steps to attempt to establish a unique identify for the mark.  The site now states that apparel bearing “40-0” in a colors aside from blue-and-white is “coming soon,” and includes the disclaimer “Not affiliated with any university or any professional organization.”  But an archived version of Son’s site from 2014 reveals a long meditation on the highs and lows of Kentucky fandom, suggesting his original intent was to sell apparel exclusively for Kentucky fans. And even the more generic “Who We Are” page that currently appears closely associates the term “40-0” with basketball:

Going undefeated and winning a championship is the ultimate goal of a team and its fan base.  “40-0” might as well read ”WE BELIEVE IN PERFECTION”.  It is the Holy Grail.  It is the Fountain of youth.  It is an expression of unwavering belief, even in the face of ridicule, that perfection can be attained.

Son’s lawyer told ESPN that Son “took all the steps he needed to take to establish ownership of 40-0,” and that “[t]here’s no evidence that the University of Kentucky owns any rights to 40-0.”

Unfortunately for Son, he may not own any rights either. The question left out of the ESPN’s article is whether anyone can obtain rights to what amounts to a win/loss record. The U.S. Patent and Trademark Office does not permit registration of “merely informational” slogans or terms.  According to the PTO, “the critical inquiry in determining whether a slogan or term functions as a trademark or service mark is how the proposed mark would be perceived by the relevant public.”

In other words, if the public believes a term merely conveys information or conveys support for something, it is not a source-indicating trademark and cannot be registered, nor can a user obtain exclusive rights to the term.  As this blog has previously noted, no one can obtain rights to the term “MADE IN USA,” for example.

Son’s trademark application for “40-0” won’t be examined for at least another month, but it appears that Son’s chances of obtaining a registration certificate are not nearly as promising as the Wildcats’ prospects for an unblemished season.