Spectrum of Distinctiveness

We’ve been down this road before, some themes intersect, and trademark value is filtered out:

The intersecting themes on tap for the day are: Zero, Branding, Trademarks, and Loss of Rights.

ZEROWATER is a perfectly suggestive, inherently distinctive, and federally-registered trademark with “incontestable” status as a source-identifier for “water filtering units for household use.”

Judging from the specimens in the file history at the USPTO, the brand owner appears to have done a nice job leaving consumers to imagine the connection between the mark and the goods.

Branding ZEROWATER with taglines like “For water that’s only water,” “Get more out of your water,”  “If it isn’t zero, zero, zero, it isn’t just water” “If it’s not 000, it’s not ZeroWater,” and “If it’s not all zeros, it’s not ZeroWater,” all help to block Zero from pure and mere descriptiveness:

On the other hand, as the top image of the retail endcap shows (click the image to enlarge), the current packaging and product description adds blunt force to the now obvious meaning of ZERO:

“LEAVES ZERO DISSOLVED SOLIDS BEHIND”

Had this purely descriptive use of ZERO been present at filing, then ZEROWATER easily could have been refused as merely descriptive — why add it now? Especially with this far better existing copy:

“REMOVES VIRTUALLY ALL DISSOLVED SOLIDS”

While ZEROWATER can no longer be challenged as merely descriptive for “water filtering units for household use,” what about future applications having slightly different descriptions of goods?

Given all that Coca-Cola has done to turn ZERO generic in the soft drink category (meaning ZERO Sugars and/or Calories), shouldn’t ZEROWATER remove virtually all opportunities for genericness?

When a brand owner migrates toward descriptiveness with its copy, leaving the consumer with zero need to exercise any imagination as to meaning, there just might be “nothing” left to protect.

As you know, I enjoy telling trademark stories about soaps encountered on my various trips:

Lather® (brand) soap recently caught my eye — and the lens of my iPhone — while in Palo Alto.

Interestingly, the USPTO has treated the word as inherently distinctive, in Lather’s registrations.

In other words, not merely descriptive, even though using the product surely produces some.

So, some imagination, thought, or perception is needed to understand the connection with soap?

If so, I’m thinking Lather® soap is certainly close to the line between descriptive and suggestive:

Brand managers, would you be in a lather if faced with these other “lather”-styled soap marks?

Trademark types, what gets you all lathered up when it comes to trademark enforcement?

As I’ve been known to do long before now, this past weekend I found myself gazing intently, this time, into the front label and back copy on this S. Pellegrino sparkling natural mineral water bottle:

Putting aside the question of the shiny red star logo, which we already have bloviated about, here, a few years back — my focus is centered on the surrounding Enhance Your Moments tagline.

No gold star for the brand’s failure to capture federally-registered protection for it, despite the obvious association with SanPellegrino, as shown in results of a simple Google search, here.

Another “no gold star” moment that needs a modicum of enhancement would be the back copy:

Why? As you can see, SanPellegrino has taken a perfectly fine, inherently distinctive, and suggestive trademark, and used it in a sentence (without brand emphasis) in a descriptive sense.

Make sense?

What do you think of when you hear the word Velveeta? Me too, childhood — complete with piping hot Campbell’s tomato soup — and perfectly melted grilled cheese sandwiches. Later in life, at least for me, came liquid gold and RO*TEL queso dip, usually on weekend game days. And, my daughter might add to the Velveeta memory mix, perfectly smooth shells and cheese.

Velveeta can conjure up some less than innocent and charitable thoughts too. Eventual trips to the doctor. Perhaps cardiac stents. And, even probing medical questions like, is that yellow loaf or brick really cheese? Turns out, it’s technically not real cheese, rather the box even calls it “Pasteurized Prepared Cheese Product.” What does that even mean?

Yet, Kraft apparently has felt no shame, remorse, or even second thoughts in continuing to maintain the original 1923 Velveeta trademark registration for “cheese,” despite an FDA warning letter some fifteen years ago that apparently led to the more accurate “Pasteurized Prepared Cheese Product” appellation.

As a trademark type though, and putting aside the interesting trademark abandonment question of whether Kraft actually uses the Velveeta mark in connection with the recited goods, “cheese” — the notion of a coined trademark comes to mind with Velveeta too. The kind of trademark that is invented, or let’s say, made up, or produced for the exact purpose of functioning as a trademark indication of source.

Some other examples of coined marks include Exxon, Rolex, and Google. Some call those types of marks the gold standard since they are the strongest trademarks along the Spectrum of Distinctiveness. They are often singular in meaning, and ripe for dilution protection.

So, imagine my surprise seeing a “room” dedicated to Velveeta, as I walked 6th Street with one of my sons, this past weekend, in Austin, Texas, inspiring me to capture the image shown above to further document and discuss it: The Velveeta Room.

My surprise was especially fine-tuned since the apparently-non-eponymously named room did not appear — at least, on the surface — to be promoting liquid gold, yellow bricks, golden loafs, queso, or even shells and cheese, much less the almost century old Velveeta “cheese” brand or distinctive box.

Mind you, there was a day when Kraft appeared to give a serving of some serious trademark enforcement attention to the likely famous Velveeta trademark, even when the target showed up selling comedy as opposed to calories.

Back in the day, circa 1993, Kraft opposed registration of Blue Velveeta for “entertainment services in the nature of comedy and musical acts.” It appears the improv act melted away in the mid-90s — not sure whether it was voluntary or not.

The Velveeta Room apparently began around the same time as Blue Velveeta, circa 1988. Perhaps either of their fans can help explain their branding, because I’m at a loss. Did the improv group or does the comedy lounge specialize in cheesy humor? Pasteurized jokes? Fake laughter and chuckles? Or perhaps, unhealthy routines and the need for medical attention?

The irony has not escaped me that the Velveeta product was invented to solve the problem of “broken cheese” and the Velveeta brand and trademark was invented or coined to identify, distinguish, and indicate the source of an engineered — or to some, fake cheese product.

It remains to be seen whether the Velveeta trademark registration is itself “broken,” whether the brand simply melts away over the next century, whether its meaning will further evolve and blend into a smoothly-delivered butt of jokes, or whether Kraft will laugh all the way to the bank.

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!

We’ve written quite a bit over the years about the Spectrum of Distinctiveness for trademarks, and the all-important difference between suggestive marks and merely descriptive ones, with only the former being allowed immediate rights based on first use.

Creativity is what separates the power of suggestion from the weakness and limbo of descriptiveness. Remember the floating feather example and all the silly guesses as to what it might suggest? And, those who persist in smashing an otherwise suggestive brand?

One of my favorite local examples of a great suggestive mark is Murray’s famous Silver Butter Knife trademark for steak. With all the long lines for salad places in the skyway system here in Minneapolis, Murray’s appears to have stepped up its advertising campaign.

But, I’m left wondering, is Silver Butter Knife only a trademark? Or, does it not also function as a service mark too? After all, the steak is prepared in the kitchen and then carved at table-side, Murray’s certainly touts the “experience,” which seems to point to the service.

What’s more, in terms of scope of rights, if Silver Butter Knife had also been registered for restaurant services, do you suppose the USPTO might have done some heavy lifting for Murray’s and refused registration of BUTTERKNIFE WINES for wine?

Oh well, either way, it looks like BUTTER brand wine is going to stand in the way of BUTTERKNIFE WINES instead of the USPTO, and perhaps do Murray’s bidding for them.

By the way, would anyone like a serrated knife to cut through all this trademark clutter?

mypillowWe had some great questions from the audience during the Mastering U.S. Trademark Registration Practice seminar in Minneapolis a few weeks ago. During the session on genericness, someone asked about MyPillow, expressing amazement that it could be federally-registered.

Having now seen the MyPillow television advertisement probably a dozen times since then, I’ve finally gotten around to looking into the situation a bit so we can hopefully put this important question safely to rest, so to speak. But, before getting too deeply into details that might leave some counting sheep, I’m reminded of a few from our archives on the ubiquity of My branding:

My, my, my . . .

My Goodness, More “My” Branding & Marks

As these gems from the archives confirm, building a brand around the word My, raises serious questions, not about genericness, but about a limited scope of rights, given how commonly the term appears as part of trademarks.

Just because a term is common doesn’t make it generic. Even commonly used words can be descriptive, suggestive, and/or arbitrary for the goods/services in question. Remember the Spectrum of Distinctiveness and how the Suggestive/Descriptive line can be challenging?

While it is clear that Pillow is generic for a pillow, what does My add to the mark, and does the addition of the word My render MyPillow as a whole descriptive or suggestive of pillows?

An argument certainly exists for descriptiveness, given the number of Supplemental trademark registrations for marks having a similar My format, and given the existence of more than a hundred registrations and applications that disclaim the word My from the mark as a whole.

Yet, MyPillow is federally-registered on the Principal Register without a showing of acquired distinctiveness, so the USPTO is on record believing MyPillow is suggestive, not generic or descriptive. And, now that the registration is over five years old and incontestable, challengers to the validity can only raise the descriptiveness/distinctiveness argument in their sweet dreams.

Perhaps the logic on suggestiveness relates to the ambiguity of the word My. When Mike Lindell is holding the pillow above he refers to it as MyPillow. When he sells it to you, does it become YourPillow? And, then once you have it, from your perspective it becomes MyPillow again?

What I’m left wondering is how can the below federally-registered mark peacefully coexist for pillows, given the prior MyPillow federal registration, having both priority of use, filing, and registration?

ilovemypillowSo, one way to protect MyPillow as your trademark would be to engage a systematic watch service of filings at the USPTO. The MyPillow registration issued two months before the above mark was published for opposition, so why was no 2(d) refusal issued or opposition filed?

It appears that MyPillow started a pillow fight with the owner of the above mark by filing a trademark infringement lawsuit back in 2012, and again in 2013, but the registration for the above mark remains on the Principal Register, sending the message of thin rights, leaving an opening for others to join with other My marks, believing there will be no more pillow fights.

That appears to be what has happened, with My Private Pillow, My Secret Pillow, Angels on My Pillow as each have become federally-registered for pillows and were unopposed by MyPillow.

Marketing types, what are your thoughts about the MyPillow brand? Would your head find any support with this simplistic, but clearly successful brand name?

Trademark types, would this situation keep you up at night or could you sleep restfully given the apparent scope of rights and these close and coexisting third party registrations?

In the end, perhaps as they say, when you make your bed, especially with my pillow, you end up having to sleep in it, lumps and all, right?

You know that feeling when you’ve nearly crossed the finish line? You have done the work, put in the time, and the only step left is to run through the tape.

There can be similar moments with trademark applications, too. Admittedly, it may not be as exciting for other people, but I certainly enjoy it. But one situation frequently arises where there is just one small thing to take care of. The attorney (or owner) will get a call or an e-mail from the Examining Attorney with a brief introduction and then, “Everything appears to be in order with the application, we just need you to enter a disclaimer of the term _______.”

That’s it! Just need to say “Okay” and your mark will be published and, if no third-party objects, you’re on the fast track to having a shiny new trademark registration.

After successfully navigating the application process, you may just want to say “Okay” so you can finally run through that tape. But before you do, make sure you understand the fine print.

Under Section 6 of the Lanham Act, the Trademark Office may require a disclaimer of any “unregistrable component” of an otherwise registrable mark. The disclaimer will appear on the Certificate of Registration. For example, if you’ve registered the mark BOONDOGGLE RESTAURANT for restaurant services, disclaiming RESTAURANT, the Certificate will state “No claim is made to the exclusive right to use ‘RESTAURANT’, apart from the mark as shown.” As a result, the owner makes a statement of public record that this portion of the mark is merely descriptive.

This can make it difficult to enforce rights in trademark against third-party marks who share that disclaimed term. If you attempt to enforce your trademark against a third-party, they’ll be able to quickly determine if you have disclaimed any portion of the mark. If you have, that may provide the third-party with a reasonable basis to kindly ask that you check the sturdiness of that sand over there.

While it is not impossible, there must be some other element of the mark that is similar to your mark. For example, Purina Dog Food (owned by Nestle S.A.)  successfully opposed registration of the mark WAGGIN’ STRIPS (disclaiming STRIPS) based upon their prior rights in the mark BEGGIN’ STRIPS (disclaiming STRIPS). In addition to sharing the disclaimed term STRIPS, the marks also shared a similar structure and similar sound and therefore the Board found a likelihood of confusion. (decision available here).

Disclaimer practice makes sense for our Boondoggle Restaurant. The term RESTAURANT has no source identifying function in relation to restaurant services; it is generic. In these situations, agreeing to the disclaimer is a simple and easy .

However, disclaimers are also required for descriptive terms. And, as we’ve discussed, there is a fine line dividing descriptive wording from suggestive wording. The determination is also very subjective. While a term may be descriptive to one Examining Attorney, a different Examining Attorney might consider the term suggestive without a second thought. Like all people, Examining Attorneys are not infallible. The Examining Attorney might misunderstand your goods or services, could be having an off day, or maybe they have a heightened opinion of what qualifies as a descriptive term. Regardless, once you enter that disclaimer, it is there in the public record and can’t be swept under the rug.

Accordingly, the next time you receive a disclaimer request, take a second before you run through the tape. Ask yourself whether the term really is descriptive. Would you be comfortable with your competitors using the term? Why did you choose it? Is there a reasonable basis to assert that the term is suggestive?

Rather than take the easy way out, it may be worthwhile to invest in the time to prepare a response to the office action, arguing against the disclaimer. While it may add some extra cost on the front end, failing to explore this option can harm the strength of your trademark, which you may regret down the road.

Seeing these on the store shelf this weekend reminded me that we are still anxiously awaiting the USPTO’s decision from the Trademark Trial and Appeal Board (TTAB) as to whether the words “pretzel crisps” will be found generic for “pretzel crackers” –basically, a public domain category or class of goods term, in the same way that “footlong” was found generic for sandwiches.

It took the TTAB just under one year from oral argument to render the “footlong” genericness decision in Sheetz of Delaware, Inc. v. Doctor’s Associates, Inc.

By the way, did anyone notice that Subway did not appeal the genericness ruling, making the decision final? So, I’ll ask again, what about those Millions of False TM Notices to Remove?

If the TTAB takes the same amount of time in deciding where “pretzel crisps” falls on the Spectrum of Distinctiveness, it will be July before we know the answer, but something tells me the TTAB’s decision in Frito-Lay North America, Inc. v. Princeton Vanguard, LLC won’t be the final answer, it is hard to imagine either party letting this one go without an appeal.

The USPTO’s Trademark Acceptable Identification of Goods & Services Manual has listed “potato crisps” as a generic product designation since 1991 and “potato crisps and chips” since 2007, so can “pretzel crisps” expect a different result?

Dear readers, any predictions on how this one will be decided, and when?

– Draeke Weseman, Weseman Law Office, PLLC

When I think of Twitter, I think of — it’s really hard to define because we’re still coming up with the vocabulary — but I think it’s defined a new behavior that’s very different than what we’ve seen before.

— Jack Dorsey, Twitter Co-Founder in 2009

My, how time flies. Only four years ago, co-founder Jack Dorsey was still trying to figure out how, exactly, to define Twitter. Last week, Twitter filed its Form S-1 — the public prospectus required ahead of an initial public offering — with the Securities and Exchange Commission. In it, Twitter describes itself as “a global platform for public self-expression and conversation in real time” that has “democratized content creation and distribution.” Analysts evaluating Twitter’s S-1 suggest the company is worth $12 billion.

Trademark-types reading news coverage of Twitter’s S-1 discovered something else: Twitter is concerned that its trademarked 140-character messages, called “Tweets,” may become generic. Discussing the risks to its intellectual property assets, Twitter warns potential investors that “there is a risk that the word ‘Tweet’ could become so commonly used that it becomes synonymous with any short comment posted publicly on the Internet, and if this happens, we could lose protection of this trademark.”

For Twitter, such loss would be an unfortunate twist of fate because the brand was so well thought out in the beginning. Reading Jack Dorsey’s explanation of how the name “Twitter” (and from that, “Tweet”) came about provides an enlightening peek at how start-up entrepreneurs think about trademarks:

The working name was just “Status” for a while. It actually didn’t have a name. … So we did a bunch of name-storming, and we came up with the word “twitch,” because the phone kind of vibrates when it moves [from receiving an SMS message.] But “twitch” is not a good product name because it doesn’t bring up the right imagery. So we looked in the dictionary for words around it, and we came across the word “twitter,” and it was just perfect. The definition was “a short burst of inconsequential information,” and “chirps from birds.” And that’s exactly what the product was.

. . . So we just fell in love with the word. It was like, “Oh, this is it.” We can use it as a verb, as a noun, it fits with so many other words. If you get too many messages you’re “twitterpated” — the name was just perfect.

Like most start-up entrepreneurs, Jack Dorsey clearly understood the spectrum of trademark distinctiveness and the value of a suggestive name. Yet, a few other important trademark concepts eluded him.

First, he uses the dreaded D-word to tell the story of naming the company. This is a trademark no-no that has been discussed extensively here, here, and here. Second, he announces how versatile the word Twitter is: how it can be a “noun” (presumably generic?), how great it works with other words, and how it will make a great brandverb. Brandverbing – or turning a perfectly good trademark into a verb – is also a very dangerous trademark activity. It ranks right up there with with – I don’t know – tweeting while rollerblading (do that too often, and you’ll need a lot of band-aids.) Third, and perhaps most importantly, he is aware of trademark opportunities from extending the brand and is openly talking about them to the media, but he hasn’t filed an intent-to-use trademark application to protect them.

Case in point: Twitter ran into some trademark problems soon after the interview that produced the above quotes. About a month after the interview, Twitter filed for trademark protection for the word “Tweet” as applied to telecommunication services, blogging, and social networking services. But another company had already registered the trademark “Let your Ad Meet Tweets” for related services (yes, Tweet makes a great noun), and Twitter’s application for “Tweets” was refused. Adding to the refusal were two prior pending applications, one from the company Tweetdeck, Inc. for the trademark “Tweetdeck” (see how great Tweet works with other words?) and another for “Cotweet” filed by Launchability, Inc. (doesn’t Tweet make a great brandverb?). Twitter subsequently acquired all three trademarks, resorting to litigation in federal court for one.

Perhaps for that reason, we saw the following statement from another Twitter co-founder, Biz Stone, in a Twitter blog post just a few months after Jack Dorsey’s interview:

We have applied to trademark Tweet because it is clearly attached to Twitter from a brand perspective but we have no intention of “going after” the wonderful applications and services that use the word in their name when associated with Twitter. In fact, we encourage the use of the word Tweet. However, if we come across a confusing or damaging project, the recourse to act responsibly to protect both users and our brand is important.

In this statement, Twitter acknowledges that it didn’t get its trademark act together quickly enough, but shows a sensitivity to the problem and a recognition that earning the label of a trademark bully would be even worse. When faced with the choice between managing a tribe by giving permission or building a bullet-proof brand by revoking it, Twitter clearly favored the tribe and the freedom to associate. That choice will have a huge payoff for Twitter’s founders in a few months.

That choice, however, could also have continuing consequences for Twitter. As trademark-types know, trademark rights are dynamic; and, as Twitter’s S-1 discloses, there is still a real risk that the word “Tweet” could become generic and unprotectable as a trademark. Some of this risk is because of Twitter’s ubqiuity, and some of it is because of Twitter’s early trademark choices. Investors looking at Twitter will have some tough trademark questions to answer.

What do you think, with 100 million daily Twitter users tweeting 500 million Tweets each day, is the word “Tweet” at risk for genericide? Would it matter? Will Twitter need to do an about face from Biz Stone’s permissive statements to prevent genericide, or dilution? Will doing so get Twitter labeled a Trademark Bully? How should Twitter balance these seemingly competing interests?