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.

It was too hard for me to avoid snapping this quick photo while grabbing a tasty bag of cheese corn from the “Nuts on Clark” vendor (to better enjoy waiting for a flight out of Chicago’s O’Hare airport recently), and I trust you see what caught my eye (in the lower right corner of their signage).

It seems to me, there continues to be much confusion over when to use what intellectual property notice symbols, and most questions seem to surround the TM, SM, and Circle “R” designations, and the Circle “C” copyright notice, so maybe this provides a good opportunity for a refresher course:

  • TM means the owner claims proprietary rights in the designation serving as a trademark, so goods or products are being sold under the designated trademark; there is no requirement to use it, and there is no requirement to take any affirmative steps (such as seeking registration) before using it, but putting others on notice of your claimed trademark rights is a good idea, if for no other reason, it has some immeasurable deterrent value; having said that, most will use TM until federal registration has issued, then switch over to use of the Circle “R” symbol.
  • The only meaningful downside I can think of — at the moment — to using the TM symbol, would be if you were sued for trademark infringement by another who had prior rights in a confusingly similar designation, and you wanted to assert a “fair use” defense; using the TM notice likely would be an admission that the designation is being “used as a mark” — taking it outside the bounds of a classic and descriptive trademark fair use defense: “Section 33(b)(4) of the Lanham Act, a/k/a the statutory classic or descriptive fair use trademark defense, does not apply unless the use is “otherwise than as a mark,” and the term used is “descriptive of” the accused’s goods or services, and it is “used fairly and in good faith only to describe the goods or services” (emphasis added) of the one making the unauthorized use.”
  • SM means the owner claims proprietary rights in the designation serving as a service mark, so services are being sold under the designation, as opposed to goods (although sometimes there is a reasonable basis for using either TM or SM or both, when both goods and services are being offered for sale under the same proprietary designation); otherwise, the details, and the pros and cons stated above for TM apply with equal weight to use of the SM symbol.
  • ® means the owner actually has federally-registered the designation as a trademark or a service mark (I suppose it also could mean the designation is registered as a certification mark or collective mark, but those are few and far between) for the goods or services covered by the symbol’s use — for more details on the proper use of the ® notice symbol, check my post from a few years back: Registration Symbol Misuse As Trademark Fraud?
  • © means the owner claims copyright, not trademark or service mark rights; but, technically using © by itself does not even provide proper notice under the Copyright Act, since the date of publication and owner’s name are also required to satisfy formal notice; for more details check out Karen Brennan’s post from a couple of years ago: Copyright – Common Misconceptions.

So, after that refresher, how did “Nuts on Clark” do?

Putting aside the opinions our loyal marketing types might offer on the cluttered appearance of TM and © symbols (we’d love to have you share your opinions by the way), the use of TM makes a lot of sense to me, since food items are being sold and delivered in bags — this is classic trademark use. Having said that, there would be nothing technically wrong in using SM either in this context, since retail store services also are simultaneously being offered under the “Nuts on Clark” designation.

Use of ® would be improper since there appears to be no federal registration for the “Nuts on Clark” designation, the only application I found was abandoned back in 1984, see USPTO file here.

What I’m having a hard time understanding is the © notice symbol since copyright is not eligible to protect names, titles, or short phrases.

Do you suppose the owner of “Nuts on Clark” is simply confused about which intellectual property notice to apply or do you suppose they believe the signage is sufficiently artistic to warrant copyright protection in it as an original work of authorship fixed in a tangible medium of expression?

If the latter, do you agree that the “Nuts on Clark” signage actually is protected by copyright?

Trademark types frequently encounter brand owners and managers with substantial misunderstanding and confusion about when use of the federal registration notice symbol is lawful. Most of the time a misuse or technical violation results from an honest mistake, but sometimes the misuse is, and starts out intentional, or perhaps the misuse begins to look intentional if it isn’t promptly fixed or corrected upon learning of the misuse.

Section 906 of the U.S. Patent and Trademark Office’s Trademark Manual of Examining Procedure (TMEP) answers some of the most common questions regarding misuse with this guidance:

  • The federal registration symbol should be used only on or in connection with the goods or services that are listed in the federal registration.

  • The federal registration symbol may not be used with marks that are not actually registered in the USPTO.

  • Even if an application is pending, the federal registration symbol may not be used until the mark is registered.

  • Registration in a state of the United States does not entitle a person to use the federal registration notice.

  • A party may use terms such as “trademark,” “trademark applied for,” “TM” and “SM” regardless of whether a mark is registered. These are not official or statutory symbols of federal registration.

This information and guidance, however, begs the question of whether misuse is a serious violation and the possible consequences of misusing the registration symbol? As you may recall, we’ve talked a bit before about possible false advertising claims against the trademark owner who misuses the symbol and a possible unclean hands defense in favor of the trademark owner’s enforcement target, especially when the misuse is accompanied by a bad faith intent to deceive.

As it turns out, we really need to add another important potential consequence to the list, one that I fear will be abused and used for pure tactical advantage in trademark enforcement efforts, namely, assertions of trademark fraud, despite the current heightened standard of fraud, with the Court of Appeals for the Federal Circuit now requiring a specific intent to deceive the Trademark Office. Actually, registration symbol misuse is not really a new ground of trademark fraud, but it has been rather uncommonly and infrequently alleged, at least in recent years.

One of the reasons for my concern of abuse stems from a recent TTAB decision permitting this rather conclusory and bare bones trademark fraud claim to survive a motion to dismiss:

Applicant knowingly and willfully used the ® symbol in connection with the term … in an attempt to deceive or mislead consumers or others in the trade into believing that the mark was registered.

A pdf of the TTAB’s decision with scant analysis — from about six weeks ago — in North Atlantic Operating Co., Inc. et al v. DRL Enterprises, Inc. Opposition No. 91158276), is linked here.

Relying only on the above-quoted allegation, the TTAB decided: "We find that the allegation set forth above includes the necessary pleading of intent, and specifies that applicant’s misuse was knowing and willful, and an attempt to deceive or mislead consumers."

In contrast to most trademark fraud cases where various false and misleading statements — relied upon by the Trademark Office — are the focus of the fraud challenge, in North Atlantic Operating Co.,  the focus was on an alleged intent to deceive the public, as opposed to the USPTO.

The Federal Circuit has held: "The improper use of a registration notice in connection with an unregistered mark, if done with intent to deceive the purchasing public or others in the trade into believing that the mark is registered, is a ground for denying the registration of an otherwise registrable mark." Copelands’ Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991). Presumably, the same conduct would sustain a petition to cancel as well. Although, the statutory support for the broader focus is unclear, it appears that an intent to deceive the USPTO is not required, so long as there is an intent to deceive the relevant public regarding registration.

Another reason for my concern stems from the apparently satisfactory yet conclusory fraud allegation. There are simply no details regarding the who, what, where, why, and when, of the alleged trademark fraud, and this failure appears to contradict recent TTAB case law confirming that fraud must be pled with particularity under Fed. R. Civ. P. 9(b). Indeed, our friend John Welch over at the TTABlog has reported multiple times on the TTAB tightening up the pleading requirements for trademark fraud claims, following the Federal Circuit’s landmark decision in In re Bosehere, here, and here.

Finally, the Federal Circuit’s Copelands’ Enterprises decision makes clear that how quickly a trademark owner corrects a misuse of the registration notice symbol after learning of the misuse, will impact the determination of whether the trademark owner is charged with an intention to deceive the public. If we couple that guidance with the current uncertainty of whether the requisite intent may be established with a reckless disregard for the truth, trademark types and the brand owners and managers they represent, are all well-advised to pay more attention to what many previously have written off as honest mistakes and technical violations with no real or significant consequences.

Only time will tell whether the registration notice symbol misuse type of trademark fraud claim will remain uncommon or gain traction in our Post-Bose world.

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Last September, in my blog post entitled "What Does Trademarked Mean to You?," I wrote:

More than a few trademark types cringe when their clients or others say things like "let’s trademark it," "they didn’t trademark their logo," or "we don’t want to trademark this name," and, when they ask questions like "is it trademarked?" or "is that trademarked software?" or "did we ever trademark our logo?" or "should we be trademarking this packaging?"

Indeed, some have written: “’Trademark’ is not a verb. There is no such thing as ‘trademarking’ a word or phrase." Similar views are expressed here, here, and here.

Well, a couple more of the cringers have raised their hands.

Our good friend John Welch over at the TTABlog reported yesterday that he doesn’t like "seeing the word ‘trademark’ used as a verb," and he republished a recent article by Daniel Kegan entitled "The grammar of intellectual property: Copyright is a noun, trademark is an adjective," originally published by the Illinois State Bar Association, linked here. In his article, Mr. Kegan similarly writes: "Trademark is an adjective, not a verb."

Actually, according to the English dictionary, "trademark" is both a noun (you know, a person, place or thing?) and a verb (an action):

trade·mark

–noun

1.

any name, symbol, figure, letter, word, or mark adopted and used by a manufacturer or merchant in order to designate his or her goods and to distinguish them from those manufactured or sold by others. A trademark is a proprietary term that is usually registered with the Patent and Trademark Office to assure its exclusive use by its owner.
2.

a distinctive mark or feature particularly characteristic of or identified with a person or thing.
–verb (used with object)

3.

to stamp or otherwise place a trademark designation upon.
4.

to register the trademark of.

Indeed, even this quote from Mr. Kegan’s article confirms the proper use of "trademark" as a noun: "A trademark is obtained by use." This is a correct statement of fact and law, but the word "trademark" is clearly the object — the thing — of this sentence, i.e., the noun. Furthermore, with respect to the proper use of "trademark" as a verb, as I have previously written:

[T]he words "trademark," "trademarked," and "trademarking," are recognized words with established verb meanings that have formed part of the English language: "(1) To label (a product) with proprietary identification; and (2) to register (something) as a trademark." Moreover, the word "trademarked" has an established adjective meaning too: "labeled with proprietary (and legally registered) identification guaranteeing exclusive use; ‘trademarked goods’".

From my perspective, there is no need for cringing or even correction, just further inquiry into how the words "trademark," "trademarked," and "trademarking" are being used.

Given the various definitions for these words, the speaker might mean labeling a product or advertising material, utilizing or marking such materials with the appropriate trademark notice or symbol, registering a trademark or service mark, or perhaps, all of the above. Since the described actions (labeling and registering) are quite distinct, it becomes important to seek clarity on the speaker’s intended meaning.

So, again, really, what’s the big deal?

No need to cringe, in my humble opinion, this is just another example of where the use of a word in the English language begs for some follow-up questions by the listener to clarify the speaker’s intended meaning. Seems to me this potential for confusion is an opportunity for us trademark types to engage the speaker by asking some questions and then offering to explain and enlighten.

Where do you camp on this issue? Are you a cringer when it comes to IP grammar?

Lest you missed the prior (absence of) fanfare from the United States Patent and Trademark Office (USPTO), we thought you should know (now you have not only constructive notice, but actual notice and knowledge of these valuable and important rights) that we are the proud parents (for those of you who personalize your company’s or client’s trademarks as offspring) and owners (for those of you who view them more as exclusive property rights capable of being borrowed against, licensed, bought, and sold) of four federally-registered trademarks (actually, service marks):

  1. DUETS
  2. DUETSBLOG
  3. DUET LECTURE SERIES
  4. COLLABORATIONS IN CREATIVITY & THE LAW

One registration issued within seven months of the filing date, the rest, one year from filing. So, admittedly, we probably could have pushed them along a little quicker, but, we were busy with the important work of our clients, and eh, not to mention, blogging too.

As to the genesis of the Duets name, and recalling that "DuetsBlog was born out of the chasm that can divide legal and marketing types," and is uniquely positioned to do battle with Dr. No, we trust you will agree that the Duets name and marks are inherently distinctive with no showing of acquired distinctiveness or second meaning necessary to have protectable rights. Thanks Aaron and the Capsule team on a job well done that we couldn’t have done without your skilled naming assistance!

Laura, remind me to insert the appropriate ® registration symbols when we return from Boston.

As a trademark type, something struck me as odd about the Best Buy logo image appearing on the brand new outdoor baseball scoreboard at Target Field, during the Minnesota Twins recent home opener against the Boston Red Sox, so I captured a photograph to discuss it here on DuetsBlog.

What caught my eye was the curious placement of the ® federal registration symbol. Its positioning adjacent to the words "Best Buy" appeared to convey that the words "Best Buy" must be distinctive and federally registered, separate and apart from the hang tag logo, and I knew better, or at least, I thought I did, as I’ll explain.

After all, I knew a few things for sure, things that should counsel against placing the ® registration symbol next to the words "Best Buy":

  1. Use of the federal ® registration symbol adjacent to matter not federally registered is a misuse of the federal registration notice which may result in serious repercussions such as false advertising liability, and/or a finding of "unclean hands," if there is an intent to deceive people into believing unregistered matter is, in fact, registered as a trademark; 
  2. Some twenty years ago in Best Buy Warehouse v. Best Buy Co., Inc., 751 F.Supp. 824 (W.D. Mo. 1989), "Best Buy" was buried in the trademark graveyard, when then Chief Judge Scott O. Wright held "that ‘best buy’ is a generic term not capable of receiving trademark protection";
  3. A generic term is the antithesis of a trademark. It can never function as a trademark to identify and distinguish the products or services of only one seller;
  4. Generic terms and trademarks are mutually exclusive concepts under the law. Generic terms are not subject to appropriation and they are ineligible for registration or protection;
  5. Generic terms are part of the "public domain" or "linguistic commons," they cannot be owned and they are free for all to use without risk of infringement or dilution liability;
  6. Best Buy actually asked for it, so to speak, because the genericness ruling was sought by Best Buy to short-circuit a trademark infringement case brought against Best Buy for its use of "Best Buy Co." and "Best Buy Superstore" in Kansas City, Missouri, by an earlier retailer of office furniture also operating in Kansas City, under the names "Best Buy Warehouse," "Best Buy Office Furniture," and "Best Buy Office Warehouse"; 
  7. In support of its successful genericness defense, among other evidence showing that "best buy" is nothing more than sales "puffing" in the area of retail sales, Best Buy had engaged an expert witness who testified that the term "best buy" is generic when used in association with the sale of goods to the general public;
  8. Best Buy’s silver-bullet style genericness defense resulted in the grant of summary judgment on all counts of Best Buy Warehouse’s complaint, including trademark infringement, false designation of origin, unfair competition, trademark dilution, and trademark disparagement;
  9. Former Chief Judge Scott O. Wright’s decision, finding "Best Buy" generic as a matter of law, and not the subject of trademark protection, was affirmed by the Eight Circuit Court of Appeals, and then the U.S. Supreme Court declined to hear any further appeal, so the genericness ruling became a final judgment; and 
  10. Each of these federal registrations containing "Best Buy" had expressly disclaimed exclusive rights in the words "Best Buy":

Mark Image  Mark Image

Mark Image  Mark Image 

 

Mark Image

As it turns out, however, what I didn’t know or appreciate is that Best Buy has been quietly working behind the scenes to undo the normally permanent implications of the genericness ruling by affirmatively seeking federal registration. I also didn’t know or appreciate until now that Best Buy convinced a Trademark Examining Attorney at the U.S. Patent and Trademark Office to approve for publication "BEST BUY," just the words, in standard character, without any design or style limitations. And, since no one opposed, a federal registration for BEST BUY issued about two years ago. As such, at least for the time being, there is no misuse of the registration notice symbol appearing in close proximity to the words BEST BUY. 

This may very well be the first time in American trademark history, where a party has avoided trademark infringement liability by winning its genericness defense and then later obtained a federal trademark registration for the very words it had previously convinced a federal district judge were generic and incapable of any protection.

Apparently recognizing the gravity of the change in position, Best Buy’s 2007 trademark registration application was not the garden variety type, but instead, it included a variety of atypical materials, including testimony from Best Buy’s Senior Vice President, Marketing Communications and Business Operations, testimony from a survey expert, and perhaps most significantly, a thirty-one page legal brief detailing and arguing Best Buy’s current position on the subject, including these highlights:

  • BEST BUY is not generic;
  • BEST BUY is descriptive;
  • BEST BUY has acquired distinctiveness;
  • Judicial estoppel should not be applied;
  • Best Buy’s different positions are not clearly inconsistent;
  • Collateral estoppel should not be applied;
  • The de facto secondary meaning doctrine should not prevent registration; and
  • Even if once generic, the Singer doctrine permits protection of BEST BUY as a trademark.

Needless to say, Best Buy’s submission makes very interesting reading, and next week, I’ll explore it in more detail. In the meantime, I wonder what Best Buy Office Furniture thinks about it?

More importantly, what do you think? 

Should the BEST BUY registration survive litigation scrutiny?

Should it matter who might challenge the registration down the road?

 

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More than a few trademark types cringe when their clients or others say things like "let’s trademark it," "they didn’t trademark their logo," or "we don’t want to trademark this name," and, when they ask questions like "is it trademarked?" or "is that trademarked software?" or "did we ever trademark our logo?" or "should we be trademarking this packaging?"

Indeed, some have written: “’Trademark’ is not a verb. There is no such thing as ‘trademarking’ a word or phrase." Similar views are expressed here, here, and here.

Perhaps any cringing may result from the fact that the Lanham Act — the federal trademark statute — defines the word "trademark" as a noun, not a verb or adjective:

The term "trademark" includes any word, name, symbol, or device, or any combination thereof —

(1) used by a person, or

(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,

to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

Section 45 of Lanham Act, 15 U.S.C. 1127.

Turns out though, the words "trademark," "trademarked," and "trademarking," are recognized words with established verb meanings that have formed part of the English language: "(1) To label (a product) with proprietary identification; and (2) to register (something) as a trademark." Moreover, the word "trademarked" has an established adjective meaning too: "labeled with proprietary (and legally registered) identification guaranteeing exclusive use; ‘trademarked goods’".

From my perspective, there is no need for cringing or even correction, just further inquiry into how the words "trademark," "trademarked," and "trademarking" are being used.

Continue Reading What Does “Trademarked” Mean to You?

Finally, here is a photo of Rapala’s "More Hits Than Google" billboard ad discussed previously in my Monday post entitled: "Rapala Fishing Lures: More Hits Than Google? Or, More Cats Than You Can Shake a Stick At? " Sorry for the delay folks.

Anyone notice the exceedingly small print located in the lower right corner of the billboard ad?

OK, leaving your microscopes at the lab, three guesses what it reads:

Continue Reading Rapala’s “More Hits Than Google” Billboard Update (Photo Included)