You’re well aware of the fact that we have a burning desire for great brands and trademarks.

Outside Whole Foods last evening, with snow falling, I found a beautiful display of firewood:

A smile came to my face as I read the SnuggleWood brand name for this kiln-dried firewood.

We’ve written a lot about the many legal benefits of suggestive over descriptive trademarks.

I’m fortunate to have enjoyed many evenings snuggling with loved ones around a blazing fire.

Later, it also brought warm and toasty feelings to see a federal trademark registration exists:


Sadly though, the fire was doused after learning that an earlier, broader trademark registration for the single word SNUGGLEWOOD lapsed, extinguishing more than 15 years of nationwide priority.

Apparently ownership changed between the original 1998 filing and a decade later when renewal evidence was due, so the USPTO rejected the evidence, as no clear chain of title was provided.

It’s sad to see because trademark ownership and chain of title issues are preventable and fixable.

Let’s hope for the SnuggleWood brand that it is never burned by unregistered trademark rights that could have developed in remote geographic parts of the country before the new filing in 2014.

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?

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!

For those of you who have been with us since the beginning of this wonderful collaboration of legal and marketing types, known as DuetsBlog, you also know we have a mascot dubbed Duey — he’s depicted in the squirrel graphic at the top of this page. Here is his story, as told by Aaron Keller on behalf of his creative team at Capsule, who brought Duey to life.

Unsurprisingly, Duey is all about protecting his nuts and the nuts of those he cares deeply about, especially those of the clients he steadfastly protects. We have embraced the graphic as a nice metaphor of what we’re best at, but we’ve only told the complete story once before, as Duey is a relatively shy little guy, and actually we prefer to see the subtlety of the graphic communicate a metaphor instead of hitting our gifted readers over the head with a coarse tagline.

More to that delicate point, spending the week in Las Vegas — the city that knows no such thing as subtlety and proud home of the SHOT Show 2015 — has unearthed lots of blog fodder, so here’s the first we’ll share:

The harshly worded tagline reminds me of a topic we have talked about more than a few times here: The art of subtlety as compared to “hitting the consumer over the head” with an idea.

Subtlety is more often rewarded in the world of predicting the existence and scope of trademark rights, that’s one reason we favor suggestive over descriptive trademarks, and we have reminded marketing types to avoid the D-word at all cost.

Perhaps the one time when subtlety should be discarded is when you’re operating in the world of non-traditional trademarks, given the benefits of using overt “look-for” advertising.

By the way Duey, is coming up on his sixth birthday March 5th, right on the heels of his golden birthday celebration last year, any ideas on what he might enjoy doing this year?

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?

Recently I happened upon an interesting non-traditional, non-verbalfederally-registered trademark that is sure to inspire multiple naming/branding/design posts for me down the road, and I’m anticipating they’ll be so easy to write, I’ll probably do them while I sleep:

So, given that introduction, any guesses as to the brand identified by this floating feather image?

Any guesses as to what goods or services are presumed to be identified by the floating feather?

If you guessed this, you’d be right, you’d be amazing, and to celebrate your amazingness, if you’re ever in town, and you take an oath you don’t have inside knowledge, aren’t always this amazing, and didn’t peak at the above link or the tags below before answering, I’ll buy you a drink of something.

 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.

–Susan Perera, Attorney

It’s that time of year again, when retail stores featuring ghosts, goblins, and all things spooky begin to appear. This year multiple parties went trick or treating at the USPTO to register their trademarks for Halloween retail store services, and apparently they weren’t all reading Steve’s post from earlier this year regarding party store names.

Some of the applied-for marks this year include:

Halloween Town, Halloween Mart, Halloween America, Halloween Adventure, Simply Halloween, and Spirit Halloween.

These applications join a list of frighteningly similar Halloween mark registrations for retail store services including:

Halloween City, Halloween Express, Halloween Central, Halloween Headquarters, Halloween, U.S.A., Halloween Experience, Halloween Scene, Totally Halloween, and Haunted Halloween Store.

Just like the crowded field of party store names, it appears that the owners of these Halloween marks don’t possess any magic powers in creative naming.

At first glance I thought this might be because the owners of the party store marks were also the registrants of the related marks for Halloween retail services. However, a quick survey verified that the owner of the Party City mark (senior mark) is not the registrant of Halloween City. Similarly, it appears that there is no connection between Halloween Central (senior mark) and Party Central, or Party America (senior mark) and the recent application for Halloween America.

Furthermore, none of the Trademark Examiners assigned to the junior marks identified above cited the senior mark against the junior applicant, and in none of these cases did the senior registrant oppose the junior user’s application. (Of course we will have to wait and see if an opposition will be lodged against Halloween America, which was filed just last month).

I find it eerie that the “party” mark owners have failed to protect what could be considered the only identifying portion of their marks from being registered by third parties for Halloween retail services; services  which are clearly related to party retail services.

Finally, returning to Steve’s question of whether weak names might have a role in branding, do you think the short-term nature of Halloween retail services justifies choosing a weak mark among a crowded field of Halloween marks? Or is this just another naming horror story? Even if an inherently distinctive mark is preferred, is the use of a weak mark more justified here than in the case of the party stores?

I’m not sure if it is. Although a descriptive mark quickly signals to consumers what type of services you are providing, holiday related services have a short time frame to make an impression on consumers.   If you make a positive impression on your consumers and they can’t discern your mark from the crowd the following year, it might just be a decision that comes back to haunt you.

Thoughts?

On a recent pilgrimage to my home town to visit the University of Iowa and to see the Hawkeyes play football again in hallowed Kinnick Stadium, I discovered that a rather rudimentary and perhaps impolite (or potty mouth), yet passionate (sorry Nancy) branding technique, is alive and kicking in Iowa City. I also learned what now appears to go hand-in-hand (or, perhaps leg-in-hands as opposed to a single hand) with Hawkeye football games, at least those played on their home turf:

Somehow the static sign doesn’t do justice to the in-person-experience, so try the YouTube video.

Once again, I’m reminded of Anthony Shore’s succinct naming insight:

There was a time when a simple, honest name was good enough.

Anthony, it appears those times are alive and well (or at least kicking) in the middle of the heartland.

Having said that, I’m also reminded of Liz Goodgold’s caution over "Potty Mouth Marketing: Six Reasons Why Vulgar Language is the Curse of Your Brand".

Trademark Office insights below the jump.

Continue Reading Primitive & Impolite, But Non-Vulgar Trademark & Naming Technique?