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

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

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

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

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

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

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

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

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

 

We’ve had a lot of nothing — meaning zero, and the trademark meaning, if any, of zero — on our mind lately, so imagine my surprise to see this soap “brand” for the first time last week in a hotel:

Not sure how to pronounce it, but as we know, there really is no “correct” way to pronounce a trademark, so it could be Zero, or perhaps a telescoped version of Zero Percent, who knows?

What we do know for sure is that neither Zero nor Zero Percent functions as an inherently distinctive trademark to identify, distinguish, and indicate a single source of this body collection:

Why Applicant’s Mark is Deemed Descriptive

“Applicant seeks to register the designation “ZERO%” for bath soaps in liquid solid and gel form; Body lotions; Hair shampoos and conditioners; Shower Gel.” Had applicant not applied under 1(a) and submitted specimens of use consisting of the bottles for shampoo, conditioner, body lotion, shower gel and hair 2 in 1, the mark would likely not have been seen as descriptive.

However the specimen bottles show graphically just what “ZERO%” describes about the applicant’s product. On each bottle is the following legend, explaining the mark:

 “ZERO sulfates

 ZERO parabens

 ZERO phthalates

 ZERO artificial colours

 ZERO animal testing”        

Thus it appears that “ZERO%” refers to the ingredients that are NOT present in applicant’s soaps and hair care and body lotion and shower gel products.  Sulfates and parabens have long been regarded as suspect with respect to human skin. Testing on animals is considered cruel. The ZERO% describes a certain purity in applicant’s products and a certain ethical sensibility about not making money from suffering animals.

In a parallel situation Diet Coke did very well when Coca Cola produced a ZERO caffeine soda, with, of course, zero calories.  Both caffeine and calories are enemies of healthful ingestion.

Applicant is applying the same logic to its toiletries and hair care products. This is to be applauded, however, the mark chosen, “ZERO%,” even without benefit of an explanation on every bottle, would have to have referred to SOMEthing about the goods. “ZERO%” of what? would be the logical question. And there is the answer, front and center, on the bottle.

Another way to look at this is: if using the name of an ingredient of the goods is descriptive use, then surely using a term that indicates the absence of unhealthy or unethical ingredients would also be descriptive.

Two major reasons for not protecting descriptive marks are (1) to prevent the owner of a descriptive mark from inhibiting competition in the marketplace and (2) to avoid the possibility of costly infringement suits brought by the trademark or service mark owner.  In re Abcor Dev. Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); TMEP §1209.  Businesses and competitors should be free to use descriptive language when describing their own goods and/or services to the public in advertising and marketing materials.  See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001).”

This descriptiveness refusal might be the most conversational and empathetic explanation I’ve seen over the course of my trademark career. Nicely done, USPTO Examining Attorney Jill C. Alt.

More than 6 years ago, Applicant Gilchrist & Soames, accepted the Examining Attorney’s invitation to amend to the Supplemental Register, for marks only “capable” of becoming distinctive.

In most cases, the attentive owner of a Supplemental Registration, in use for 5 consecutive years, already would have filed for Principal Registration, arguing in favor of acquired distinctiveness.

Gilchrist & Soames hasn’t (yet), and given what Zero has evolved to mean, will the noted parallel to Coca Cola’s Zero soda, cleanse zero to mean “incapable” of trademark status as a soap type?


In terms of zero sum games, in the trademark world, even if Zero and Zero Percent turn out to be generic, perhaps Gilchrist & Soames gained more in marketing than they would lose in trademark.

As we share another Labor Day together on DuetsBlog, we’re thankful for the emotional labor of those on this journey with us, and we hope you agree this effort is a win-win, no zero sum game.

These lime green building sites caught my eye and jogged my trademark memory. First, the future home of the University of Iowa College of Pharmacy, at beam signing, on May 4, 2018:

Second, the expansion of the Metro Transit headquarters near downtown Minneapolis, on June 12:

Of course, the obviously common element of both building sites, besides my iPhone, is the same lime green sheathing, both also branded with the USG and SECUROCK word trademarks.

Then poof, they’re gone, after being covered by some black-colored sheathing, on August 2, 2018:

What’s my point? Actually, I have a few that immediately come to mind, so bear with me.

First, do you suppose United States Gypsum Company views the lime green color of its gypsum panels to be a trademark? Apparently there are no look-for statements on the product itself:

In looking for look-for ads that might draw attention to this particular shade of green as a brand, Green Means Go (scroll down after linking), is the closest I’ve found.

Let’s just say, USG has been far more effective in owning the color red as a band or stripe applied to packaging for plaster products, and the supporting look-for-like TOP RED word mark.

Still, it’s difficult to tell what USG thinks from the general legend used in its online brochures:

“The trademarks USG, FIRECODE, SECUROCK, IT’S YOUR WORLD. BUILD IT., the USG logo, the design elements and colors, and related marks are trademarks of USG Corporation or its affiliates.”

It’s even harder to tell, despite the “colors” mentioned in the legend above, after searching the USPTO, since USG allowed its Supplemental Registration — for what I’m calling the “lime green sheathing” — to expire without first obtaining, or at least, filing for Principal Registration.

The Supplemental Registration described the mark as “the color yellow green (Pantone 375) as applied to the goods.” Namely, “non-metal water-resistant boards and panels for construction.”

Why let it go?

I’m sure the color green is considered difficult to protect for sustainable building materials, but this color mark was narrowed down to the particular Pantone shade. Perhaps the shade changed?

Typically, a Supplemental Registration is considered valuable to a brand owner, while it works to build the evidence necessary to establish acquired distinctiveness for Principal Registration.

In addition, the Supplemental Registration for Pantone 375 was some indication that the USPTO did not view that shade of green as being functional even for sustainable building materials.

We’ll keep watching to see if Principal Registration is pursued.

In the meantime, let us know if you discover any better look-for advertising for USG’s SECUROCK gypsum panel sheathing. Loyal readers know how important look-for ads are for trademark colors.

Last, the now-you-see-them-now-you-don’t green gypsum panels remind me of the lavender color registration I convinced the USPTO to issue for spray in place insulation in 1994, oh the memories!

Marketing types and legal types who review labels, be well advised to choose words used carefully.

In other words, if you believe you own rights in Pretzel Crisps as a trademark, it’s not wise to use the number of so-called “Crisps” as the serving size, especially with no trademark notice symbol.

Frito-Lay’s successful 2014 generic challenge (pretzel crisps = pretzel crackers), was appealed to the Federal Circuit by the claimed trademark owner Princeton Vanguard, now Snyder’s Lance.

We followed this case up to the Federal Circuit appeal, then watched on the sidelines for a while:

Our friend, John Welch, over at the TTABlog, did a nice job summarizing the Federal Circuit’s decision vacating the Board’s genericness decision, sending it back for another and closer look.

John also nicely summarized the Board’s second look too, once again ordering cancellation of the Supplemental Registration and sustaining the Principal Register opposition on genericness grounds.

I’d like to remind our faithful readers again about the danger of self-inflicted wounds that can kill a trademark, one example being generic use in the Serving Size portion of the Nutrition Facts labels:

Makes it hard to avoid admitting during the litigation “that ‘crisps’ can be used as a term” for “pretzel crackers,” and that “packages for its PRETZEL CRISPS products provide nutrition facts for a serving size of a stated number of ‘crisps.’” These admissions proved helpful to Frito-Lay.

Another danger, it appears, is the lower case lettering use by others in mentioning the “pretzel crisps” product, a multitude of references apparently unpoliced by the claimed mark owner:

“[W]e note that there are many instances in the record where the term ‘pretzel crisps’ is set forth in lower case, with no apparent reference to the term as a brand, or to Defendant, indicating an understanding by the relevant public that the term ‘pretzel crisps’ refers to a product rather than to a single producer thereof. We note that many of these excerpts, from business as well as industry publications, are the work of authors who indicate an understanding that a brand is referenced by use of uppercase letters. Yet they use lower case letters to spell ‘pretzel crisps’ . . .”

Does that focus validate trademark counsel’s desire to steer away from using lower case branding, given the Board’s focus on type style? Or, if carefully managed, might the ills still be avoided?

Stay tuned on Princeton Vanguard’s next move following this loss, will it appeal again? If so, as John rightly asks, which appeal route makes the most sense, Federal Circuit again, or federal district court this time?

What’s more, Princeton Vanguard has been busy at the U.S. Trademark Office, apparently planning for a worst case scenario if it were to lose all protection for the bare wording “pretzel crisps” for “pretzel crackers,” which is where things stand for the moment. It has filed two new standard character word marks for slightly different goods, instead of “pretzel crackers”: “Peanut butter-covered pretzel snacks,” and “Chocolate-covered pretzel snacks.” And, this script for bare-bones “pretzel crackers”:

What say you, are the different goods descriptions enough to avoid genericness, and is the above shown script unique enough to permit exclusive ownership of a generic set of words?

Or, is it a little too light in the creativity department to infuse exclusive ownership potential into generic wording?

These questions will decided at some point along the line, since Frito-Lay has opposed these applications too.

The teapot read my post from last week and is not only calling the kettle black, but brand too:

KettleBrandChips

So, we’ll have to see whether saying it’s so makes it so, after we stir the pot a bit, of course.

Like the previous Virginia Brand ham example, the chip packaging above prominently incorporates the word “brand” as does the two-word Kettle Brand trademark registration from 2015.

Unlike the Virginia Brand example, however, the Kettle Brand potato chip packaging shown above displays the federal registration symbol too — in this case, after the word Kettle.

Yet, the federal registration symbol begs the question of whether it signifies registration on the Principal Register for distinctive marks or the Supplemental Register, the latter being reserved for non-disitnctive matter that is non-generic and capable of some day serving as a trademark.

As you may have suspected, the answer is, it depends. In this case, it depends on which registration from the Kettle Foods portfolio we’re speaking about, and on the goods covered by the registration in question, as Kettle Foods owns a number of registrations that consist of or include the term KETTLE, some reside on the Principal Register and some on the Supplemental.

In addition, whether the registrations disclose disclaimers also becomes relevant to the analysis of what Kettle Foods owns. For example, the two-word Kettle Brand trademark registration referenced and linked above from 2015 resides on the Supplemental Register and covers potato chips, corn chips, and popcorn, among other snack food items; the word Brand is disclaimed as generic, which means the USPTO believes that Kettle is merely descriptive, not yet distinctive.

One might ask then why Kettle Foods would “settle” for a Supplemental Registration in 2015 when it already had in the bag Principal Registrations for Kettle Brand for tortilla chips (disclaimer of Brand, not Kettle)? Better yet, why file an intent-to-use trademark application for the same mark — also covering tortilla chips — less than a year after the Principal Registration was maintained with the filing of a Section 8 & 15 Declaration?

What might that spell for the validity of the four Principal registrations (here, here, here (disclaimer of KETTLE for potato chips) and here) for this stylized KETTLE logo designation:

KettleLogo

What do you think, can Kettle and/or Kettle Brand actually serve as an effective brand name and trademark for potato chips, corn chips, and/or popcorn?

Or, does Kettle signify a class or type of snack food made in a kettle, as opposed to a pot — kind of like Brick Oven, generic for frozen pizza made in brick ovens?

We’ve written a lot about single color trademarks here over the years. Weems, the owner of the Flexilla brand has unleashed its federally-registered chartreuse-colored non-traditional trademark for “compressed air hoses” against Plews for selling air hoses with a “bright florescent green color” — a color that Plews claims online “reduces chances of tripping while on a job site.

Weems owns a non-traditional trademark registration on the Principal Register for chartreuse in connection with “compressed air hoses” — but, it recently abandoned a single color trademark application for electrical power extension cords, and it hasn’t yet obtained a registration on the Principal Register for chartreuse in connection with garden variety hoses (i.e., garden hoses):

FlexillaHose

Weems owns a pair of Supplemental Registrations for the chartreuse color (one having a black stripe, the other having a green stripe) in connection with watering hoses and garden hoses, but two months ago its attempt to achieve Principal Registration for chartreuse in connection with those goods and others was refused by the USPTO (Weems has until April 2017 to respond to the failure to function as a trademark and lack of distinctiveness refusals).

More thoughts on this case tomorrow, but in the meantime, do you think Plews tripped into this trademark dispute, or does it likely have a plan and a valid defense?

Hat tip to Jason for flagging the Weems v. Plews trademark complaint for us, currently pending in the Northern District of Iowa.

Glove4
Chou #1
Glove1
Digitcare
Glove3
Chou #2
Glove2
Chou #3
Glove5
Chou #4
Glove6
Avent Green

 

 

 

 

 

 

 

Back in 2009, we wrote about what was then Kimberly Clark’s pair of single color purple trademark registrations in connection with “gloves for medical and surgical uses” and “disposable nitrile gloves for general use,” now owned by Avent and sold under the HALYARD brand:

HalyardPurpleNitrile

Those registrations are still big deals since they both exist on the Principal Register (as opposed to the Supplemental Register), and as far as I can see, no other medical examination glove colors have been able to withstand the reliable USPTO probing to attain Principal Registration status.

As the above six hand drawings reveal, growing numbers in the medical examination glove world have raised their hands at the USPTO to gain federal registration of a single color or a contrasting pair of colors (one appearing on the inside and the other on the outside).

Let’s wait and see what happens to the six pending applications for the drawings shown above (Chou #1, Digitcare, Chou #2, Chou #3, Chou #4, and Avent Green) after the USPTO rolls up its sleeves, and begins a different kind of hands-on examination. We’ll follow the drama as it unfolds.

From where I’m sitting, it seems doubtful that any will pass the vigorous Principal Register examination, but there are also serious questions as to whether survival of the appropriate Supplemental Register probing is warranted either, as explored more deeply further below.

In addition to #1-4 above, Chou also has a blue/white — outside/inside color combination mark and the inverse of those same colors — both on their way to the Supplemental Register.

Ascend Eagle also has a few hands in the color trademark pot for medical examination gloves, orange is registered on the Supplemental Register (tangerine never made it), but this peach and this red one are both suspended for consideration on the Supplemental Register.

Colur World has a suspended pink single color application too, apparently now attempting Principal Registration, since it already has a Supplemental Registration for pink medical gloves.

While, Xela has secured single color copper and single color magenta trademark registrations — both have landed on the Supplemental Register stretcher too; as did this individual’s single color application for gold colored medical gloves.

With all this focus on gaining Supplemental Registrations in the medical examination glove field, you’d think the USPTO’s probing on the question of functionality has been, perhaps a bit soft.

Turns out, the Digitcare trademark application for an outer-white/inner-black medical exam glove contains an enlightening bit of information that could shine like a flashlight on the question of functionality:

  • “Contrasting Black and White ApexPro identifies conformance to infection control protocols”
  • “High contrast perma-white exterior for improved visibility with infectious fluids”

If so, what kind of future does that signal for this otherwise nearly identical Supplemental Registration, interestingly assigned from Chou to Digitcare, a few years back.

Show of hands, how many see the functionality scalpel removing even the Supplemental Registration option to one or more of the above six pending color applications, given the revelations in the Digitcare file history?

Last week a federal lawsuit was filed in Minnesota by Blu Dot to protect alleged intellectual property rights in the floor lamp shown on the left below. The accused “strikingly and confusingly similar” floor lamp shown on the right below is sold by Canadian Rove Concepts:

stilt-floor-lamp-walnutNordicLamp

So, what type of intellectual property do you suppose is being asserted here?

The “strikingly similar” allegation is a hint that copyright infringement is being alleged, although Blu Dot admits it hasn’t yet obtained a copyright registration, which used to be considered a predicate to the court having jurisdiction over a copyright claim. Instead Blu Dot filed for copyright registration only the week before filing suit in Minnesota federal district court.

Given that delay, what is clear about Blu Dot’s copyright claim is that waiting to seek copyright registration will cost it any hope of obtaining statutory damages or attorneys fees against Rove Concepts, even if it has a copyright and even if it was infringed. What remains unclear is whether Blu Dot actually has a copyright and whether it will be able to obtain the necessary registration to sustain a copyright infringement cause of action.

Copyright registration and protection is denied to useful articles such as lamps, unless an original sculptural work of authorship can be identified separately from, or exist independently of, the utilitarian aspects of the article. So stay tuned, as it is certainly debatable whether copyright is a proper form of intellectual property protection for this particular floor lamp.

The “confusingly similar” allegation by Blu Dot is a further hint that non-traditional trademark infringement is being alleged here too. This won’t be an easy claim to pursue for Blu Dot either, since it will have to prove its design is “non-functional” (as it is not federally-registered as a non-traditional trademark product configuration) and it will have to establish acquired distinctiveness in its claimed trade dress elements (before addressing likelihood of confusion):

  • three legs that descend from a single base leg of the same width and depth;
  • each of the three legs pivots horizontally away from the center before angling down to the floor;
  • a portion of upper limb of each leg is stacked on top of each other making the legs different heights;
  • the legs angle out to form a tripod-like base; and
  • smooth fabric-covered shade.

A year and half ago we wrote about an interesting chandelier configuration trademark application — despite more than five years of use, registration on the Principal Register was refused as a non-distinctive product design, so the applicant amended to the Supplemental Register. It will be interesting to see what kind of evidence Blu Dot is able to establish in support of acquired distinctiveness, as five years of exclusive use won’t be enough.

Probably what is most surprising about Blu Dot’s federal complaint is that it alleges no ownership of or infringement of any design patents. Design patent protection seems ideally suited for this very kind of useful product, and it is not at all cost prohibitive to obtain.

Finally, back to Blu Dot’s non-traditional trademark infringement claim again, to the extent copyright is applicable, the Supreme Court’s Dastar case may very well knock out any trademark or unfair competition protection sought by Blu Dot. As the Chief Judge of the United States District Court for the District of Minnesota recently noted in Bruce Munro and Bruce Munro Studio v. Lucy Activewear, Inc. et al:

Courts, however, are “‘careful to caution against misuse or over-extension’ of trademark and related protections into areas traditionally occupied by patent or copyright.” [quoting Dastar] Copyright and patent laws are meant to protect against copying the originality and creativity of another, for a certain time and under certain guidelines, while the Lanham Act and trademark law serve a distinct purpose. * * * The Lanham Act “‘does not protect the content of a creative work on artistic expression’ because an ‘artist’s right in an abstract design or other creative work’ is protected by copyright law.” * * * [E]xtending trademark protection to a particular style of artistic expression would improperly extend trademark law into the area of copyright protection.” * * * Thus, the Court will dismiss with prejudice the trademark and trade dress claims to the extent they are based on Munro’s style and the elements of Munro’s artistic works.

So, how do you come down on the lamp case — is Blu Dot going to face red lights on its copyright and trademark claims? Will it end up wishing it had a design patent to assert against Rove Concepts?

Above the Law recently published a Techdirt story reporting that the USPTO denied Whole Foods‘ attempt to federally-register the laudatory trademark: “World’s Healthiest Grocery Store“.

The Techdirt story incorrectly seems to suggest that the global nature of the phrase is what caused the application to be refused, since Whole Foods has not yet achieved a truly global reach, according to a Washington Post article.

Truth be told, actually there is no connection between the extent of Whole Foods’ global reach and the USPTO’s decision to initially refuse registration, contrary to the Techdirt story.

In fact, the USPTO didn’t focus on whether the phrase is true, because it is laudatory and “merely describes a feature or characteristic of applicant’s services,” such that the consuming public would view it as mere puffery, not susceptible to actual proof of its truth.

Had the USPTO thought the phrase was capable of proof and it disbelieved the claim, it would have sought to refuse registration under the deceptiveness registration bar of Section 2(a) of the Lanham Act, but it didn’t.

In fact, the USPTO offered up to Whole Foods — once it puts in evidence of its use of the phrase as a trademark — an amendment from the Principal to the Supplemental Register, a more suitable address for non-deceptive marks capable of becoming distinctive in the future.

Of course, one of the principal benefits of a Supplemental Registration is that it prevents others from registering confusingly similar marks while the brand owner works to build and acquire the requisite distinctiveness needed for a Principal Registration.

In the end, it will be interesting to see how Whole Foods responds to the USPTO’s laudatory and descriptiveness registration refusal.

I’m thinking before it jumps at the USPTO’s Supplemental Register offer, it may try to argue against the descriptiveness refusal in the same way it successfully did for its federally-registered “America’s Healthiest Grocery Store” trademark application, when back in 2010 it overcame a similar laudatory and merely descriptive registration refusal of the highly similar mark.

So, while it’s clear that the truth of the phrases comprising the those “healthiest” marks had nothing to do with the initial laudatory/merely descriptive registration refusals, what’s not clear to me is why the USPTO didn’t refuse registration based on a prior Supplemental Registration for “The World’s Healthiest Foods” mark — owned by these folks.

-Wes Anderson, Attorney

No company’s branding strategy is studied more meticulously than Apple, Inc.’s — and of late, Apple has taken a turn for the descriptive with its various operating systems.

Every company wants its brands to be distinctive — and the arbitrary APPLE mark is among the most well-known. But its new operating system naming strategy has relied on descriptive (if not generic) wording.

From a naming standpoint, everything started out well with the Macintosh Operating System — or Mac OS (first coined in 1996) for its various desktop and portable computers, Macintosh and “Mac” already being famous trademarks. Then, when iPhone OS became “iOS” in 2010, it took the “iDevice” naming convention from the iMac, iBook, iPod, iPhone, and iPad and brought it to software. But Apple didn’t use this name without conflict — in fact, it licenses the iOS trademark from Cisco.

From there, Apple has continued to enter new markets — including smartwatches (with the Apple Watch) and set-top streaming devices (with the Apple TV). With them, new operating systems followed, this time named simply “watchOS” and “tvOS.”

Screen Shot 2016-04-22 at 7.25.35 AM

Perhaps these descriptive names were intended to ward off conflict with any other Silicon Valley brand owners, but Apple has put a different spin on this in public. Phil Schiller, senior vice president of worldwide marketing at Apple, said the following in a Q&A last year (bolding added for emphasis):

Gruber: watchOS, with a lower-case “w”. Are you trying to kill me?

[Laughs.]

Schiller: [laughs] It’s, um… I think it works really well. I think it’s nice, it’s ownable, it’s special

I think, you’ll see. Give us time, we’ve been through many fun naming things. This is an easy one. There have been many fun naming things through the years — some very emotional, some very easy — and most of the time, when all’s said and done, you look back years later, people say “Yeah, you guys were right, it all made sense together.”

So I think we’re doing the right thing.

It’s not clear whether Schiller is referring to the use of a lower-case first letter or the entire mark, but the question still stands: is “watchOS” truly an ownable mark? No, or at least not yet.

Apple has a Supplemental Register registration for WATCHOS, which is the “junior” register for marks that are capable of trademark significance, but are merely descriptive at the time of registration. Apple’s also filed two pending applications for the same mark on the Principal Register (in classes 9 and 42), but each just received office actions earlier this week refusing registration on grounds of mere descriptiveness.

It’s clear WATCH OS is descriptive wording — it’s arguably even generic in the context of smartwatch operating systems. To overcome these refusals, Apple would either need to settle for the Supplemental Register again or prove to the Trademark Office that, just a year since its first use, “WATCHOS” has acquired secondary meaning as a brand name to the public.

Apple, in short, has yet to really prove that watchOS is truly “ownable.” We’ll see if Apple is able to put its enormous weight and brand equity behind WATCHOS and obtain Principal Register registrations. For the rest of us, it’s important to remember what’s ownable is not necessarily available, and what’s available is not necessarily ownable.