Spectrum of Distinctiveness









A hot dog is a type of sandwich, and “footlong” denotes a type, category, or class of sandwiches (those measuring about a foot in length), making “footlong” a generic term and part of the public domain — incapable of serving as a trademark for any kind of sandwich.

This is true despite Subway’s claimed use of FOOTLONG since 1967, the more than four billion FOOTLONG sandwiches sold between 2000 and 2009, and the near doubling of annual FOOTLONG sales from $541 million to $936 million, following its highly successful $5 FOOTLONG marketing campaign which started in 2008.

Any secondary meaning in FOOTLONG that might have resulted from the extensive marketing campaign, is de facto, so it doesn’t count for distinctiveness — it doesn’t create enforceable rights, because purchasers readily understand that FOOTLONG identifies 12 inch sandwiches.

These are some of the findings and conclusions by the TTAB last week in the long-anticipated decision Sheetz of Delaware, Inc. v. Doctor’s Associates, Inc., rejecting Subway’s desire to own FOOTLONG as a federally-registered trademark for “sandwiches, excluding hot dogs.” For a more complete analysis of the 61-page decision, check out John Welch’s coverage over at the TTABlog.

If you’ve followed my writing on the subject, you’ll fully appreciate that the TTAB’s decision finding FOOTLONG generic for sandwiches — even if hot dogs are excluded — is not surprising:

The decision was written to be bullet-proof on an appeal that the TTAB assumes Subway will file. So, for the sake of completeness, the TTAB decided that even in the unlikely event it is wrong about genericness and FOOTLONG is actually descriptive, the evidence still does not show acquired distinctiveness. If there is an appeal it will be interesting to see whether Subway pursues a de novo federal district court trial (which would permit the introduction of new evidence) or whether it takes the existing record up to the Court of Appeals for the Federal Circuit (CAFC).

My prediction is it won’t make a difference, the result will be the same, FOOTLONG is generic for sandwiches, just like LIGHT and LITE is for beer. In my opinion, Subway’s pursuit was doomed from the start with its initial specimen of use from November 2007:

As the TTAB noted: “If the above-noted specimen shows trademark use of “Footlong,” then it must also show trademark use of 6″ Sub and Wrap.  As used in the specimen all three terms are displayed in the same manner (font, size, color, position), and used in the same way (i.e., to identify a type of sandwich).”

Of course, as shown at the top of this post, now when you see Subway’s FOOTLONG advertising (and in-store signage) it is littered with TM notice symbols closely associated with the term FOOTLONG. I’m not sure when that tactic started, but I believe it has been going on now for at least a couple of years. I remember being struck by the tiny after-the-fact TM stickers applied to the menu signage at the Subway located in the Minneapolis – St. Paul airport when I started following the Subway trademark bullying story a few years back.

With more than 26,000 Subway locations throughout the United States, and all the advertising done on the local and national level for the largest restaurant chain in the world, I shutter to think how many errant TM symbols are swinging in the wind, must be millions upon millions.

Even if an appeal of this decision would be hopeless for Subway, it might be worth filing one to at least avoid immediately facing the decision of whether to remove the multitude of stickers and the millions of false or misleading TM notices in advertising and on signage, given the TTAB’s ruling that FOOTLONG is not and cannot be a trademark for sandwiches.

Having said that, if an appeal over-turned the genericness part of the ruling, that would avoid the need for removal, even if the lack of acquired distinctiveness portion of the decision were affirmed, since it would keep the door open for Subway proving acquired distinctiveness down the road, and surely it would be able to freely use the TM symbol while it is still making that effort.

I’m just not seeing it though, I believe the genericness ruling will stand, but what do you think?

Let’s call it the Family Feud test of trademark suggestiveness . . . .

We’ve written a lot here about the all-important Spectrum of Distinctiveness, a key tool for those who name products and services, and for those who hope their selected names can be ownable as trademarks, upon their first use in commerce.

Last week, despite the clue I imbedded in my post about trademark suggestiveness (“so easy to write, I’ll probably do them while I sleep“), no one was able to connect the federally-registered floating feather image with the ZzzQuil nighttime sleep-aid brand, but there were lots of creative guesses.

What if I had asked the question in classic Family Feud style?: “Name something you associate with a good night’s sleep” — a message ZzzQuil no doubt would like to communicate about P&G’s sleep-aid product to potential consumers.

Based on my recollection of how the Feud is played, metaphors for a restful sleep would likely score well in the survey results, but a response like “sleep” (generic or descriptive of of the goods) would be ridiculed and lead to humiliation, as would any responses falling within the coined (making a word up a new word) or arbitrary (using a known word or image that has no relationship at all to a good night’s sleep) categories.

I’m thinking answers like (1) the moon, (2) stars, (3) clouds, (4) pillows, (5) sheep, and (6) Zzzzs, might score well. I’m not sure “feather” would have scored well, yet the floating feather image is a powerfully suggestive trademark for a sleep aid, it seems to me, one step removed from a goose-down pillow and the restful image of something easily floating in the air (perhaps, following a “pillow fight”).

Keep in mind that even within the suggestive category of the Spectrum of Distinctiveness, there is a range, or a spectrum within a spectrum — those candidates bordering the descriptive category are considered “highly suggestive” and are somewhat inherently weaker as trademarks than those suggestive marks bordering the arbitrary category (both ends of the spectrum within the suggestiveness spectrum, of course, are inherently distinctive and ownable as a trademark from day one upon first use). So, the more thought and imagination required to make the connection between the name or image and the goods or services, the closer the suggestive mark will be to the even stronger arbitrary category.

For this particular example, I’m thinking that sleep-aid brands that contain the ZZZ metaphor are highly suggestive, as evidenced by the many others who include that element in products associated with sleep: (1) ZZZ-EEES with 5 Sheep for an over-the-counter sleep aid (shown below); (2) ZZZ CHAIR for a sleeper love seat; (3) IT’S ALL ABOUT THE ZZZ’S for a mattress retailer; (4) HEALTHYZZZ for pillows; (5) INSOMNOMORE ZZZ with Sheep for medical services for the treatment of insomnia; (6) ZZZTIME for infant blankets; and (7) ZZZ for a herbal sleep-aid.

Perhaps the seventh example of those third-party marks playing on the highly suggestive nature of ZZZ for sleep-related products would provide a basis for seeking a narrower trademark claim and not pursuing registration of ZZZQUIL standing alone, but that would be too conservative for P&G, perhaps because of the substantial equity in the well-recognized NYQUIL brand that ZZZQUIL clearly leverages. It also has sought protection for ZZZQUIL in combination with the VICKS house brand and associated trade dress elements (including the floating feather).  Interestingly, Notices of Allowance recently issued to P&G on these additional ZZZ-formative intent-to-use marks for ZZZSLEEP and ZZZTIME, both for pharmaceutical sleep aids. In April, yet another ZZZQUIL intent-to-use application was filed by P&G for goods in Int’l Classes 3, 8, and 11. Do we have a family of ZZZ marks in the making?

Linking the ZZZ prefix to QUIL is far more unique than linking it to SLEEP and TIME, it seems to me. Hmmm, isn’t a QUILL a feather, and does that help explain the feather image? Lots to consider here.

Turning our attention briefly to another heavily advertised (prescription) sleep-aid, I’m thinking that a floating green butterfly would not score well under the Family Feud test of suggestiveness, but would it be ridiculed as arbitrary, at least before the Lunesta brand came along?

In other words, if the butterfly were to land, would it do so on the suggestive or arbitrary side of the line within the Trademark Spectrum of Distinctiveness?

Last question, how many times have you yawned while reading this post, assuming you’ve gotten to the end?

In the wake of all the discussion and debate over “trademark bullying,” NFIB (National Federation of Independent Businesses), the self-proclaimed Voice of Small Business, recently offered its members and followers “5 Steps to Avoid Corporate Trademark Bullying“:

  1. Do Your Homework;
  2. Choose a Descriptive Business Name;
  3. Use Common Sense;
  4. Consider Buying Intellectual Property Insurance; and
  5. When in Doubt, Consult an Attorney.

I suppose it’s kind of hard to argue, in general, with doing your homework, using common sense, buying insurance, and when in doubt, consulting an attorney, but choosing a descriptive business name to avoid a trademark conflict? That’s taking it a bit too far, don’t you think?

Actually, when you drill down below each step, there is much more to say about each of them, and I’ll make sure to do so later, but for today, I’ll focus on what I call, “dreadful Step Number 2.”

As you know, we don’t like the D-word here, and as you will recall from a couple of years ago in my prior posts, “A Legal Perspective on the Pros and Cons of Name Styles,” and “Staying on the Right Side of the Line: Suggestive v. Descriptive,” we established the strong preference for suggestive as opposed to merely descriptive names and marks, and we addressed the all-important Spectrum of Distinctiveness for trademarks:

Nevertheless, NFIB, in support of mere descriptiveness, indicates:

If you’re deciding what to name your business, you’re more likely to prevent a trademark infringement lawsuit if you pick a general name that describes your business’ services—Plumbing Contractors Inc. or Accounting Services LLC, for example—instead of something more specific. While your business name may overlap with another’s, there is less chance for them to stake a claim on those terms. Just make sure that your business name still stands out.

Putting aside the unanswered question of how a small business may hope to “stand out” if it follows “dreadful Step Number 2,” let us not forget, Subway recently convinced the U.S. Trademark Office it has exclusive rights in the term “footlong” for submarine sandwiches, claiming that it has acquired distinctiveness in the “merely descriptive” term, and is asserting those claimed rights against Casey’s General Store, among others.

If a small business really wants to have a hope for avoiding any and all possible trademark conflicts, it needs to live in the generic category (Dan’s take, here), not the descriptive one (where there is the real potential for the acquisition of exclusive rights by others and where there are naturally more legal claims that actually surprise their targets), but who wants to be generic?

I can’t and don’t embrace the message of waving the white surrender flag, conceding any hope of naming creativity or any hope of clearing and adopting a truly distinctive name or mark. Even small businesses with limited budgets can and should do better.

If a small business uses common sense, does its homework, and consults a competent and experienced trademark attorney, there is no reason to limit itself or place false hope in pursuing “dreadful Step Number 2.”

If nothing else, I think we may have found another D-word.

Hat tip to Mark Prus who flagged this topic for me and even offered up a portion of the title, minus the question mark.

 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.

Seth Godin’s recent post entitled Subtlety, deconstructed, struck a chord with me, and should strike a chord with all trademark types and the brand owners they represent. Here is my favorite excerpt:

Subtle design and messaging challenge the user to make her own connections instead of spelling out every detail. Connections we make are more powerful than connections made for us. If Amazon and Zappos had been called "reallybigbookstore.com" and "tonsofshoes.com" it might have made some early investors happy, but they would have built little of value.

As you may recall, I have been tough on Seth Godin’s trademark advice in the past, but I couldn’t agree more with his view set forth above on naming and building powerful consumer connections and a resulting asset of significant value, by utilizing subtle design and messaging.

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.

Apparently, if you own one of the diminishing number of retail shops that specializes in tobacco products, it doesn’t really matter if you have a brand or a distinctive name, or not. Tell them what you sell, tell them you’re open for business, and they will come, I guess.

This image got me thinking about how often this marketing strategy — if it can be called a strategy — works, and the circumstances that might permit a business to succeed, despite being brand-less, on the wrong end of the Spectrum of Distinctiveness, and operating under nothing more than an unprotectable generic name.

As you may recall, Dan wrote, some time ago, about Successful Marketing With a Generic Word. He suggested that dispensing with brands might work when a business has "cornered a market."

I think that is a good way of looking at it, but it does seem to beg the question of when a market has been cornered and how long staying brand-less might work. Can it be successful long term?

So, if you’re the only restaurant in an area with a significant number of passersby, you might be able to get away with a sign that reads nothing more than RESTAURANT BREAKFAST ALL DAY. If you’re the only smoke shop in an area with a large number of smokers, you can probably get away with a sign that reads nothing more than TOBACCO, as shown above. But, what about when there is an alternative? What about when competition exists?

When there is no physically close competition, and convenience is paramount, what is being sold becomes more important, perhaps, than who is selling it, and what you might be more likely to see are generic RESTAURANT and TOBACCO retail store signs.

On the other hand, when a business no longer has a captive audience due to location or the absence of competition, branding appears to be critical for success. Even if one business can differentiate itself from the other, based on product mix or service, without branding it becomes difficult and inefficient for consumers to spread the word about a business, whether it be good or bad news. 

As the world continues to shrink, I suspect the opportunities to succeed without branding become fewer and fewer.

Unless, of course, your business operates primarily on-line and you happen to be the happy recipient of some highly favorable internet traffic, see Hotels.com, Tickets.comFireworks.com, Cars.com, and Tobacco.com, then the potential number of passersby is so large one might wonder whether going brand-less still might work, even with branded competition.

What do you think, when can going brand-less work, and how long can it be sustained?

We’re not talking about Phantom of the Opera, and we’re not talking about the kind of phantom trademark issue discussed by Sharon in her compelling What is Maker’s Mark’s Mark? post from April of this year. No, we’re talking today, on this day for celebration, and on this wonderful 4th of July, about a Phantom trademark and brand that apparently has been around for more than twenty years in connection with fireworks. 

Phantom, by the way, strikes me as a nice arbitrary trademark for fireworks, probably landing it on the inherently distinctive side of the Specter, I mean, Spectrum of Distinctiveness. With respect to scope of rights, note how it coexists on the federal trademark register in Int’l Class 13 with other identical third-party Phantom marks for airguns and center fire cartridges.

After seeing the above billboard advertisement, I’m left wondering, with my tongue in my cheek, whether there also could be a suggestive quality to the meaning of the mark? Why? One meaning of "phantom" is an appearance or illusion without material substance, as a dream image, mirage, or optical illusion. Here me out.

This billboard advertisement is currently located on I-94 E, just prior to approaching downtown Minneapolis, Minnesota, but there are no physical brick and mortar locations, nor any businesses of material substance, at least for Phantom Fireworks in Minnesota, given the elevated class of fireworks they sell. That’s right, you need to cross the St. Croix River and enter Wisconsin to find Phantom Fireworks, conveniently located in Roberts, Wisconsin.

Note how the billboard sign doesn’t tell you that you need to enter Wisconsin to buy fireworks at Phantom Fireworks, despite the advertising in Minneapolis — the sign simply refers to Exit 10 on I-94 E. I’m guessing there must be some Minnesota law in place that caused the cryptic reference to location, one that regulates the advertising in Minnesota of fireworks that are illegal in Minnesota.

One other thought and question for the day, which do you suppose is more valuable, the inherently distinctive Phantom trademark and brand, or the generic fireworks.com domain?

Have a great 4th of July!

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

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.

–Dan Kelly, Attorney

A couple of weeks ago, the U.S. Court of Appeals for the Ninth Circuit reversed a district court that had held that the federally registered trademark “WOULD YOU RATHER . . . ?” was merely descriptive as applied to books and games.  (PDF of appellate opinion here.)  Briefly, the facts are that Falls Media owns the aforementioned trademark registration, which has priority to July 1997, and Zobmondo Entertainment, who publishes books and games under the identical mark as a subtitle, has challenged Falls Media’s trademark rights in court.  The appellate opinion gives a fairly succinct overview of the sordid details — it sounds like these parties have been feuding in one way or another about this trademark for more than ten years — almost as long as Falls Media’s rights in the mark.  Identical marks and goods usually makes for good spectating.

This case fascinates me for a few reasons.  First, the appellate opinion is quite good, and treats well issues related to the fuzzy border between descriptive and suggestive trademarks, particularly in the context of the sometimes nerdy procedural legal issue of summary judgment.  It also contains some excellent evidentiary analysis.  Second, there is something morbidly interesting about parties that have been feuding for more than ten years.  This is like the Hatfields and McCoys.  Third, and perhaps most interesting, is that the entire dispute centers around two parties that are both experiencing commercial success exploiting a game that I think has existed as some form of a parlor or car game since long before 1997.  Calls to mind a trite phrase about the rate at which suckers are born.

For now, the WOULD YOU RATHER . . . ? trademark has survived its first challenge, but the case now returns to the District Court for further proceedings, or maybe settlement, if the parties would rather . . . but probably not.

P.S.  On an unrelated note, does the Zobmondo “Would Your Rather” game box remind you of anything?  My answer after the jump . . .

Continue Reading Which “Would You Rather” Would You Rather Play?