Loyal readers know that trademark rights are dynamic, use-it-or-lose-it intellectual property rights.

So, when signage announces a name change, it jumpstarts the question of trademark abdonment:

The above signage and reporting around the sale and rebrand of SuperAmerica convenience stores seem to suggest the SuperAmerica name will cease to be used, bringing Speedway coast-to-coast.

Time will tell though if there is a plan in place to avoid legal abandonment of the SuperAmerica trademark, so that it does not become part of the public domain, available for others to adopt.

We explored this important question a few years ago, when we discovered Chevron’s efforts to maintain exclusive rights in the Standard trademark:

“Of course, there is a delicate but critical balance in avoiding trademark abandonment following mergers and consolidations. Trademark types often will hear this question from brand managers after learning that three years of non-use constitutes presumptive abandonment: What is the minimum amount of use necessary to retain rights in the brand and trademark?

It is a dangerous question — especially when phrased this way — because ‘token use’ of a trademark was rejected as a ‘use in commerce’ in the U.S., back when our current intent-to-use trademark registration system was ushered into law during 1989. In outlawing ‘token use’ as a now failed way of developing trademark rights, the definition of ‘use in commerce’ was amended to add this critical language, requiring the use to be: ‘the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.’

So, asking how little a use is enough to retain rights, starts to sound a lot like a use made ‘merely to reserve a right in a mark.’ Congress did indicate that what constitutes use ‘in the ordinary course of trade’ will vary from one industry to another. It also noted that ‘use in commerce’ should be ‘interpreted flexibly’ so as to encompass various genuine, but less traditional, trademark uses. And, the Trademark Manual of Examining Procedure (TMEP) notes that these three factors are important to consider: (1) the amount of use; (2) the nature or quality of the transaction; and (3) what is typical use within a particular industry. TMEP 901.02.”

It appears most of the SuperAmerica trademark registrations recently have been renewed, so with ten year terms, it likely will be several more years before we begin to see what, if any, use is relied upon at the Trademark Office to maintain registered rights in the SuperAmerica mark.

In the meantime, what do you think, is there a plan in place to maintain rights in SuperAmerica?

We’ve been stalking Kevin O’Leary’s nutty Mr. Wonderful trademark application, for a while now.

In April, we thought the USPTO would refuse registration of Mr. Wonderful for nuts, based on this:

In June, we were shocked to see the USPTO missed issuing the obvious refusal, and in August, we noted and reported that The Wonderful Company LLC had filed an Extension of Time to Oppose.

Just last month, O’Leary’s trademark counsel filed a Request for Express Abandonment of the Mr. Wonderful trademark application, and the USPTO promptly issued a Notice of Abandonment.

One of O’Leary’s most famous lines from Shark Tank seems to fit this very moment, as we mourn the loss of O’Leary’s Mr. Wonderful trademark application for roasted nuts, with a popular meme:

Last week, I enjoyed the privilege of returning to Iowa City (where it all began) for Executive Leadership Board Meetings at the University of Iowa College of Pharmacy. Great meetings there!

During a stroll through downtown, I was reminded of Deadwood, a legendary Iowa City tavern, so I snapped a few photos, having long forgotten the creative tagline — Institute of Higher Learning:

Deadwood has special meaning in the trademark world. A federally-registered mark no longer in use and legally abandoned, is considered deadwood, making it ripe for and subject to cancellation.

We’ve written before — here and here — about the challenges of trademark deadwood that face brand owners, and we’ve also highlighted the USPTO’s proposed help on the way, here and here.

Yet, until there is perfect alignment between every federal registration and corresponding actual use, the problem of deadwood will remain, even if it is less frequently seen by brand owners.

What we haven’t discussed much before is how to guage whether a registration is deadwood. The most common approach is to have a routine, professional, factual investigation conducted.

Turns out though, even reputable, professional investigations that reasonably seem to point to non-use and abandonment are not perfect, nor are they a guarantee of all the relevant facts.

For example, years ago, we received a petition to cancel our client’s federal trademark registration on abandonment grounds. Petitioner’s counsel was overly-confident in the assertion of non-use.

The investigation even noted that the mark no longer appeared on our client’s product packaging and labeling. Sadly for the Petitioner though, the mark was still in use on point of sale materials.

As a result, the matter resolved very differently than expected for Petitioner. Our client ended up selling the registered mark and receiving a royalty free license back to continue using the mark.

Back to the Deadwood mark shown above, technically it is not deadwood at all, first, because it is not federally-registered, and second, it is very much in use, posing a very different kind of issue.

Undoubtedly there are unregistered rights in the Deadwood mark, and the owner could come out of the woodwork to oppose or cancel another’s registration even up to five years after issuance.

Given the uncertainty of when and if the owner of an earlier unregistered mark wakes up to the importance of federal registration, it is pretty risky to ignore these kinds of uses during clearance.

Finally, given the uncertain and imperfect nature of trademark investigations, it’s best to think ahead and have some alternative leverage in mind before chopping at wood assuming its dead.

A recent advertisement caught my ear because it involved financial services offered by a guy named Charles Hughes a/k/a Chuck Hughes and the catchy marketing phrase Trade Like Chuck:

It instantly reminded me of a piece I wrote in 2010 called: Exposing Two-Face Brands. One of the branding truncation examples I wrote about there noted how Charles Schwab exposed a much less formal and more personal and engaging face with the popular Talk to Chuck advertising campaign.

The folks liked it, so Susan Perera and I responded by writing a more in-depth version for Minnesota Business, providing other examples of the trend toward truncation and informality in branding — then, I wrote about Talk to Chuck in yet another version for World Trademark Review:

Apparently the Talk to Chuck campaign was quite successful too. But all good things come to an end, as the campaign was dropped in 2013, in favor of its current tagline: Own Your Tomorrow:

What I wondered was whether Charles Schwab had continued some (even modest) use of the Talk to Chuck tagline — to retain enforceable rights — or whether it simply chucked them out, since Mr. Hughes didn’t seem at all deterred with his apparent introduction of TradeLikeChuck.com in 2016.

Although there still may be valid use of Talk to Chuck that I’m unaware of, the visible signs all seem to point toward abandonment. The TalkToChuck.com domain name was originally registered back in 2005, yet today, it only redirects to the main Charles Schwab website with no visual Talk to Chuck reinforcement, so that mere redirection, shouldn’t constitute bona fide trademark use.

Perhaps even more importantly, searches for “Talk to Chuck” on the Charles Schwab website yield no results: “There are no results for ‘talk to chuck’.” And, each Talk to Chuck federal registration and application was allowed to expire or become abandoned (here, here, and here).

Why didn’t Schwab see some value in taking steps — even modest ones — to avoid abandonment of its federally-registered rights? Do you suppose Mr. Hughes has Schwab regretting that decision?

What if the web traffic to the Charles Schwab financial services site still had meaningful redirection coming from the TalktoChuck.com domain name, would that help establish lingering goodwill?

In the end, to “own your tomorrow” — from a trademark perspective — even when you’ve moved on to a new tagline, it might pay dividends to develop an intentional plan to avoid abandonment.

Otherwise you might as well roll up those rights into a round little wad of paper, and hurl them to your doggie with one of these federally-registered Chuckit! babies (here, here, and here):

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.

A recent stroll through a big box store opened my eyes to a brand of steel toe boots I hadn’t encountered before, take a look at the CAT that will be protecting my son’s toes this Summer:

CatBoot

CAT is an excellent example of successful trademark truncation, a single-syllable truncated brand name for the four-syllable CATERPILLAR version (originally for heavy excavation equipment):

CaterpillarBoot

By the way, I love how the brand intelligently employs both versions (full and truncated) of the brand name on the goods and packaging for the goods. It permits Caterpillar Inc. to own trademark rights in both versions without risking a loss of trademark rights through abandonment when a truncation might otherwise lead to a complete phase out of the longer version.

Caterpillar Inc. also has built an impressive mountain of trademark protection for both word mark and stylized versions in many different classes of goods and services; the brand recently has asserted an impressive scope of rights. It also clearly thought about and began executing a truncation strategy nearly seventy years ago, with this very early CAT registration. Sad we won’t be seeing (again) bikes, trikes, or wagons, at least in the near future, it appears.

To be clear, brand owners should know there is no legal right for a business to be able to truncate a longer brand name, nor can one assume all brand extensions are legally viable.

As we have discussed before, a truncation strategy can make enormous sense, in part, because truncation yields a broader right (if allowed). However, it also can lead to more third party objections since there is necessarily less other matter available to help differentiate from others.

For these reasons and others, it is important for brand owners to jump in with both boots and move on the appropriate level of due diligence, not assume that the path for truncation and/or brand extension is a clear one (without the need for heavy excavation of the existing trademark landscape).

AnatomyofTMWarning

We wrote about the above trademark warning ad a few years back, and the claimed trademark owner likely recognizing vulnerability as to validity:

The idea generally is, let’s show and create a record that we are educating the public about our trademark rights and hopefully deterring misuses that otherwise might find their way into the public eye and influence the relevant public’s understanding of a term or symbol as being generic and part of the public domain, free for anyone to use, even competitors.

Now, the validity of Car-Freshner Corporation’s federal non-traditional trademark registrations for the shape, configuration, and silhouette of a tree design, are seriously being questioned.

Sun Cedar, a non-profit based in Lawrence, Kansas, with the able pro-bono assistance of Marty Schwimmer of the Leason Ellis firm, has filed an answer and counterclaim in federal district court in the Northern District of New York, denying Car-Freshner Corporation’s allegations of trademark infringement, dilution, and unfair competition, and seeking cancellation of U.S. Reg. Nos:

on functionality grounds, and the ‘016, ‘233,  ‘888, and ‘854 registrations on abandonment grounds.

You can read more about this trademark dispute here at Techdirt — calling it another example of trademark bullying.

Here is an image of the Sun Cedar product that is alleged to infringe and dilute Car-Freshner Corporation’s federally-registered trademarks in the so-called Little Trees design:

SunCedarTree

A few questions come to mind.  Would you have put your non-traditional trademark rights at risk for the above alleged infringement?

Will the registrations be exposed to have ticking time bombs inside them?

If so, will Marty declare timber! as they fall and then gather up the debris to stack like cord-wood?

Or, will there be a mixed result, and if not chopped down altogether, might the registrations simply be chopped down to size.

Endless possibilities abound, so stay tuned, this is sure to be an interesting one.

John Welch over at the TTABlog recently reported that oral argument will be heard by the TTAB later this month in McDonald’s opposition of McSweet LLC’s application to federally register McSweet for pickled vegetable products.

It appears many resources have been invested on both sides of this battle for more than six years; it is unclear to me why this dispute wasn’t taken to federal district court since the issue of use could be decided, in addition to the issue of whether registration should be permitted. Having said that, McSweet is claiming use since 1990 for some of the goods. Perhaps a lawsuit will follow, if McDonald’s is successful in the opposition to registration.

McDonald’s is asserting likelihood of confusion and likelihood of dilution based on McDonald’s famous Mc-family of marks. I’m thinking that this looks like an uphill battle for McSweet, so I’m not sure they’ll be lovin it when the Board rules. But see for yourself, here is McDonald’s trial brief, here is McSweet’s trial brief, and here is McDonald’s rebuttal brief.

This excerpt from McDonald’s trial brief caught my attention:

“Though McDonald’s has filed hundreds of applications covering individual marks in its ‘Mc’ formative family, the individual marks in use at any given time are constantly changing. Some family members are temporarily retired . . . (showing over 60 former registrations for Mc formative marks by McDonald’s), while new family members are being introduced. The family also includes various marks that McDonald’s uses, but for which it has not sought registration.” (citations to record and most parentheticals omitted).

McSweet appears focused on arguing for peaceful coexistence with the specific federally-registered Mc-formative trademarks asserted by McDonald’s in the proceeding, and McDonald’s wants to be able to rely on the fact that members of its Mc-family of marks come and go (finessing the question of abandonment as to temporarily retired members), which increases the likelihood of confusion and dilution, according to McDonald’s.

Although McDonald’s didn’t use the term, the concept reminds me of all the recent discussion about fluid trademarks — might this case produce the newest type of fluid trademark, i.e., a fluid family of trademarks?

If you were a Band-Aid brand adhesive bandage, and you were cut, would you protect yourself?

Brent, sorry I couldn’t help myself, I’m still enjoying your Louis Vuitton waffle-maker post.

With that intro, let’s turn another page to the Genericide Watch category, here at DuetsBlog:

In focusing attention on the first item in the list shown above, to the extent Johnson & Johnson were to promote “protective surgical dressing in the form of a bandage” as the generic product name or category of the goods (the generic name listed in the USPTO record), it might be understandable that others generically and mistakenly call them “Band-Aids”  — for example, as captured most recently on this hotel’s listing of complementary commodities.

It would be kind of like using the phrase “boots equipped with longitudinally aligned rollers used for skating and skiing,” instead of the more consumer-friendly and truncated “inline skates.” Yes, we’re talking again about how the Rollerblade brand may have found itself on the watch list too.

But what if you do things right, the brand does the best it can to protect itself from the small, gradual and persistent cuts that can lead to a complete loss of exclusive trademark rights? It appears Johnson & Johnson is focused on the risk, attempting to influence consumer understanding of the brand name by even placing the all-important word “brand” into the generic product description on packaging for Band-Aid branded products and elsewhere:

The brand also promotes use of the even more truncated generic reference “bandages” when touting itself as America’s #1 Bandage Brand.

Now, for all I know, the front desk at the hotel where I recently stayed might have sent up a few Band-Aid brand adhesive bandages, had I cut myself shaving, but I didn’t test the theory. And I’m not sure it would matter in the end, at least for the purposes of our discussion here, since widespread examples like the one depicted above tend to influence the meaning of the word to consumers and probably don’t bode well for the outcome of a Teflon-style trademark genericness survey.

In the end, the majority of relevant consumers’ understanding decides the question of whether a word functions primarily as a brand or primarily as a generic designation, remember my prior discussion about the Kleenex brand?

To our marketing colleagues who might find flattery and branding success in “owning or becoming the category name,” know that there is no ownership possible once this happens. Imagine a day when 3M could label its competing products “NEXCARE Brand Band-Aids” or Medline uses labeling reading: “CURAD Brand Band-Aids.” Would you really want to be the brand manager explaining — at the brand’s funeral — how this death to commodity status helps the brand at that point?

Perhaps this is the most vivid and compelling illustration of why some trademark types refer to the trademark genericide problem as “death by a thousand cuts.”

Like many industries, there has been much brand consolidation. The petroleum industry is a good example. I recall pumping gas in Iowa back in the late seventies — at a Phillips 66 gas station (recall that a couple of years ago Phillips merged with Conoco). While pumping gas in those days, I vividly remember long gas lines and the price of gasoline doubling between 1978 and 1980.

One gas station brand I thought was long dead, at least until last week: Standard — I specifically recall Standard gas stations being converted to Amoco stations in the Midwest, and then Amoco stations were later converted to BP.

So, imagine my surprise on our recent family trip to Las Vegas, when I snapped the photo above from the In-N-Out Burger parking lot: Standard brand positioned above the Chevron logo?

Then, imagine my further surprise, in researching the history of the Standard Oil Company, to see the same Standard/Chevron gas station signage depicted on Wikipedia, shown below. The photo below appears to have been taken on October 4, 2009, and although the price of gas hasn’t doubled since then, you’ll note the sizable increase over the last two and a half years.

According to the Wikipedia posting, “Chevron Corporation operates several gas stations under the trademark ‘Standard’ in order to retain control over its former trademark (as U.S. trademark law operates under a use-it-or-lose-it rule). This one is located in Las Vegas, Nevada, just west of the Las Vegas Strip.” It also indicates, this example is “[o]ne of 16 Chevron stations branded as ‘Standard’ to protect Chevron’s former trademark.”

As we have said before, serious trademark owners develop plans to avoid trademark abandonment when brands are acquired, merged, and/or consolidated. No doubt, Chevron is a serious brand owner with an apparent plan in place to avoid abandonment of the Standard trademark. Notably, the Chevron website indicates: “Our company proudly sells petroleum products around the world under the Chevron, Texaco and Caltex brands.” No mention of Standard, at least that I could find. Perhaps because — according to the Wikipedia post for Chevron — only 16 of some nearly 10,000 Chevron/Texaco retail gas stations operate under the Standard brand name.

Of course, there is a delicate but critical balance in avoiding trademark abandonment following mergers and consolidations. Trademark types often will hear this question from brand managers after learning that three years of non-use constitutes presumptive abandonment: What is the minimum amount of use necessary to retain rights in the brand and trademark?

It is a dangerous question — especially when phrased this way — because “token use” of a trademark was rejected as a “use in commerce” in the U.S., back when our current intent-to-use trademark registration system was ushered into law during 1989. In outlawing “token use” as a now failed way of developing trademark rights, the definition of “use in commerce” was amended to add this critical language, requiring the use to be: “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.”

So, asking how little a use is enough to retain rights, starts to sound a lot like a use made “merely to reserve a right in a mark.” Congress did indicate that what constitutes use “in the ordinary course of trade” will vary from one industry to another. It also noted that “use in commerce” should be “interpreted flexibly” so as to encompass various genuine, but less traditional, trademark uses. And, the Trademark Manual of Examining Procedure (TMEP) notes that these three factors are important to consider: (1) the amount of use; (2) the nature or quality of the transaction; and (3) what is typical use within a particular industry. TMEP 901.02.

What do you think, is operating 16 gas stations out of 10,000 (0.16%) a token use made “merely to reserve a right in a mark,” or a very carefully and intelligently calculated “bona fide use of a mark in the ordinary course of trade” for the retail petroleum industry?

For some additional reading on trademark abandonment issues, see:

Dialing in on Trademark Abandonment?

Timeless Trademarks?