Trademark Distinctiveness

—Karen Brennan, attorney

I found Fig. 1 (from what I am sure was a very valuable patent, although I could not locate it) to be very fitting for this post.  After three and half years, four Office Actions, a Petition to the Director and finally an appeal, our client’s product configuration mark for the PPK

–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

If you don’t mind the wait, a crowded parking lot is often a good strategy when hunting for an excellent restaurant while you’re in unfamiliar territory. Similarly, a large crowd lining up outside a retail store is typically a good sign that the business is doing something right, or perhaps, they just happen to have something rare that everyone wants.

 

Last month the Trademark Trial and Appeal Board (TTAB) refused registration of the slogan THE OTHER RED MEAT for "fresh and frozen salmon," not based on likelihood of confusion, but because it is likely to dilute the distinctive quality of the famous THE OTHER WHITE MEAT slogan of the National Pork Board and National Pork Producers Council. Stay tuned for

  v.     

Texas Toast is the generic name for a type of bread, you know, the big thick double-cut slices. Anyone can call their bread Texas Toast if that is what they are selling, and, by the way, it doesn’t have to be toasted for the name to fit.

But, what if you’re selling a product made from bread, say, croutons? Can Texas Toast be owned and registered as a trademark for croutons? What if they are big, thick croutons, with a "Texas Toast" cut? And, if you market your croutons as "New York " brand, "The Original Texas Toast" croutons, does that not imply, if not admit, that others are free to compete by selling their own brand of, perhaps, non-original "Texas Toast" croutons? What if you didn’t start using a TM designation until after you noticed your competition selling Texas Toast croutons? Interesting questions, no doubt.

Well, ten days ago, a federal district judge in Ohio denied cross-motions for summary judgment in a trademark infringement case over an Ohio company’s claimed common law unregistered rights in "Texas Toast" for croutons and a Grand Rapids, Michigan company’s claimed descriptive fair use of "Texas Toast" also in connection with croutons. As an aside, having spent two years in school there, when I think of Grand Rapids, Michigan, and bread, sorry, all that comes to mind for me, are the wonderfully and perfectly steamed hot dog buns at the world famous Yesterdog.

In any event, back to Texas Toast, here is a pdf of the decision in T. Marzetti Co. v. Roskam Baking Co. , indicating that it is too early to decide the Texas Toast trademark infringement case because there are several disputed issues of fact, including, among others, the meaning and the term’s placement on the all-important Spectrum of Distinctiveness, i.e., whether "Texas Toast" is generic, descriptive, or suggestive for croutons.

Now, since the case wasn’t cut short and decided on summary judgment with a limited record, we’ll have to wait and see how the evidence shapes up and whose claim ends up being, eh, toasted, but  I’ll have to say, at this point, "Texas Toast" sounds to me like a category of croutons — those cut from texas toast style bread; like Lite and Light is to beer, and Brick Oven is to pizza — each are generic terms that are not own-able for those goods, because they designate a category of goods, not the origin or source of the goods. By the way, it doesn’t matter if you’re the first to use a generic term, if found generic, it is available for use by all, even direct competitors.

So, this is probably one of those trademark cases where who wins will come down to the proper placement of the claimed mark on the Spectrum of Distinctiveness. If generic, case over, defendant wins. If suggestive, plaintiff acquired rights based on its first use, two years prior to defendant’s use, and will likely win, provided a likelihood of confusion can be shown. If descriptive, plaintiff will be in the difficult position of proving that it acquired distinctiveness in "Texas Toast" prior to defendant’s first use, so within a short two-year period of time. If so, good luck with that.

No doubt, when it comes time for trial (or perhaps another summary judgment motion prior to trial), the plaintiff will make the most of the fact that the Trademark Office did not issue a descriptiveness or a genericness refusal on TEXAS TOAST for croutons, see the USPTO details here. Seems like an oversight to me, at least with respect to descriptiveness, after all, the plaintiff has the number one selling brand of texas toast style garlic bread, and it now has expanded that use into the field of croutons.

Ironically, to put its TEXAS TOAST trademark application in condition for publication by the U.S. Trademark Office Marzetti had to argue, and did so successfully, that it wasn’t likely to be confused with the prior federally-registered TEXTOAST trademark for bakery products. In doing so, it narrowed its description of goods from "croutons" to "croutons sold in a salad toppings section of grocery stores and supermarkets." Given that Marzetti’s mark will now be published for opposition, it is probably safe to assume that Roskam Baking will now oppose registration of Marzetti’s claimed TEXAS TOAST mark for croutons, so it doesn’t become registered prior to trial, but we’ll see.

So, what do you think about the critical Spectrum of Distinctiveness questions?

  1. Is Texas Toast generic for a category of croutons made from texas toast style cuts of bread?
  2. Is Texas Toast merely descriptive of croutons because it immediately describes a feature, characteristic, or attribute of croutons? or
  3. Is Texas Toast suggestive of croutons, because, a consumer’s imagination is required to understand the connection between the mark and the goods, or as plaintiff argues, "everything is bigger in Texas."  

Is plaintiff Marzetti’s suggestiveness argument all hat and no cattle?

Now, vote again, after reading plaintiff’s own description of its croutons below the jump.


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I’m thrilled to have this platform to vent about a long-standing beef: awkward, made-up product and company names. Trademark lawyers call them coined.

Among the worst offenders are automobiles, technology and finance. When I was a kid, cars had names like Roadmaster, Thunderbird and Catalina. Now a prospective car buyer has to wade through an alphanumeric sea of names like IS, GLK350 and FX35.

I don’t blame trademark lawyers … exactly. But the need for a strong, legally defensible name no doubt accounts for some of the odd lexicography we see.

I reserve most of my reproach for the naming consultants who come up with these clunkers and the corporate executives who think that a vague name containing an X will magically transform their company into a paragon of the new economy.

See if you can match these 10 names to the products or services they represent. Warning: One of them is a complete fake, made up by me!

1. Celero                                   a. dental insurance

2. Tolamba                               b. private mortgage banking

3. Onvio                                     c. oil and gas operations

4. Fortex                                    d. email relationship manager

5. Xobni                                     e. fake!

6. Opteum                                 f. motion control equipment

7. Contango                              g. trading software

8. Nexxar                                   h. wealth management services

9. Provantis                               i. money transfer services

10. Graxxion                              j. allergy treatment

Answers are below the jump.


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As you may recall from March of this year, we blogged about Kimberly-Clark’s novel intent-to-use trademark application for a "sensory, touch mark" in connection with disposable paper hand-towels. Other discussions of sensory, touch marks may be found here

In any event, the original description of the claimed Kimberly-Clark trademark was as follows: "The

A couple of months ago there was quite a buzz about Holiday Inn’s projected $4 million annual savings by moving to a leaner and greener direction with their adoption of LED lighting on exterior signage. 

As you may recall, back in June we blogged about Holiday Inn’s interesting effort to federally register a pair of non-traditional lighting trademarks, one employing