The popular UGG® branded sheepskin boots are at the heart of a dispute in the Northern District of Illinois. Deckers Outdoor Corp. (“Deckers”) owns 29 federal registrations for the trademark UGG in connection with numerous goods and services, including footwear, clothing, wallets, passport covers, plush toys and retail store services. The company also has four pending applications for UGG to add to this family of UGG trademarks.

Deckers sued Australian Leather Pty. Ltd. and its owner (“Australian Leather”) for trademark infringement and patent infringement for selling “ugg” boots.

UGG® branded boots have become very popular. Fashion forward celebrities, such as Blake Lively and Sarah Jessica Parker, are often pictured wearing the comfortable boots as they go about their daily lives. This provides the brand with free publicity and even more exposure.

Defendant Australian Leather alleged that the ugg mark was generic for sheepskin boots and that the doctrine of foreign-equivalents supported this conclusion. The parties brought cross motions for summary judgment on these issues and others.

Steve Baird has written about trademark genericide before on DuetsBlog. Generic trademarks are those where a brand name has become synonymous with a general class of product or service. Famous examples include: aspirin (Bayer lost this valuable mark), elevator and linoleum. Losing a trademark to genericide allows competitors to benefit from the originating company’s goodwill without being guilty of trademark infringement. Companies have undertaken advertising campaigns to prevent or combat their trademarks from becoming generic. For example, the Velcro Companies came up with the hilarious video, “Don’t Say Velcro,” explaining that the product is a “hook and loop” with the brand name VELCRO®. The company even came up with a sequel video called “Thank You For Your Feedback” that Steve Baird wrote about previously on DuetsBlog.

Luckily for Deckers, the Illinois Court found that its UGG® trademark was not generic. Deckers introduced a survey undertaken in 2017 in the United States of 600 women between the ages of 16 and 54 wherein 98% of the respondents viewed UGG® as a brand name. These results were even better than past surveys commissioned by Deckers in 2004 where 58% of the respondents viewed the mark as a brand, and in 2011 where 89% of respondents viewed UGG® as a brand name.

In turn, Australian Leather asserted that “ugg” was generic among American surfers in the 1970s. The Court found this group to be too narrow. Australian Leather also introduced evidence of “ugg” being generic for sheepskin boots in Australia. Not surprisingly, the Court did not find this evidence to win the day. The Court noted that genericness in another country could be at least relevant to consumer perceptions in the United States. However, it is important to remember that whether a trademark is generic in another country has little bearing on whether it is generic in the United States. Trademark rights are territorial. Having a registered trademark in the United States does not give a company rights in that mark in Australia or other countries.

The Court explained that the foreign-equivalents doctrine did not warrant another result. It explained that “the doctrine is not a perfect fit for English to English [terms, rather, the doctrine] is generally used to analyze non-English terms used in the American marketplace.” Steve Baird did a nice job of explaining the appropriate use of this doctrine in his post, here.

What genericide stories have you heard about?  It can be an ongoing and costly battle for brand owners to protect their valuable intellectual property rights.

We’ve been writing about the COKE ZERO trademark for nearly a decade now, noting in 2014:

“[I]t will be worth watching to see whether the [TTAB] finds that ‘ZERO’ primarily means Coke or just a soft drink having ‘no calories, you know, a drink about nothing . . . .’”

Turns out, in May 2016, Coke obtained a favorable decision from the TTAB, ruling that ZERO is not generic for a soft drink category, instead it is descriptive and Coke has secondary meaning in it.

With that victory in hand, we then questioned Coke’s thinking in launching obvious generic use of ZERO, welcoming Coke Zero to the Genericide Watch, given this categorical and non-brand use:

Then, two months ago, the CAFC decided — on appeal — that the TTAB got it wrong, ruling it:

“[F]ailed to consider whether consumers would consider the term ZERO to be generic for a subcategory of the claimed genus of beverages – i.e., the subcategory of the claimed beverages encompassing the specialty beverage categories of drinks with few or no calories or few or no carbohydrates.”

We’re now back to the question we asked in 2014: “[I]s ZERO like LIGHT for beer, STONE OVEN for pizza — basically denoting the name of a product category instead of a source identifier?”

As to the next steps, the CAFC sent the case back to the TTAB, instructing it to “examine whether the term ZERO, when appended to a beverage mark, refers to a key aspect of the genus.”

TM types, is Professor McCarthy right that the CAFC ruling makes it too easy to find genericness?

I’m left wondering, given the floodgates that have opened up to other beverage brands also using ZERO as a generic category term for “no calories” or “no sugar” — is fighting for ZERO worth it?

 

 


 

 


Will Coke continue to fight for ZERO as a trademark? Or, should it make better soda instead?

How can The Coca-Cola Company even keep the trademark pursuit of ZERO going, when it already appears to have made the choice of making a better soda through its independent unit, Honest?


On the heels of discussing trademark genericide through the Anything is Popsicle prism yesterday, let us turn our attention back to Velcro, who is at it again, this time making a genericide sequel.

The sequel is called “Thank You for Your Feedback — Don’t Say Velcro.” Like any sequel I’ve ever seen, I’m not feeling Velcro’s second attempt either, so Napolean Dynamite, please, don’t do it.

What the Velcro sequel does offer are many crowd-sourced generic alternatives to Velcro’s “hook and loop” preference. No thanks, Velcro says it’s sticking with its chosen noun and generic term.

The thing is, Velcro doesn’t get to decide this one. What I’d really like to see from Velcro next time, is whether the videos moved the needle on whether Velcro has at least 51% brand meaning.

Welcome to another edition of Genericide Watch, where we consider brands on the edge, working hard to maintain brand status and exclusive rights, while trying to avoid trademark genericide.

The primary meaning to the relevant public decides genericness, so trademark owners will try to influence how consumers understand the word, to maintain at least 51% brand meaning.

As we’ve written before, one of the ways to spot a brand on the edge is to find the word “brand” on product packaging, usually with the claimed owner’s preferred generic name for the goods.

That is one way of telling or reminding consumers it’s a brand name, but saying so, doesn’t necessarily make it so, especially when the “preferred” name is a mouthful or unnatural.

Popsicle is one of those on a mission to prevent its trademark rights from melting away. Having said that, even if Popsicle dips below 50% brand meaning, the visual identity is still ownable:

The word was coined almost a century ago, so Unilever is asking the folks to not use it as a noun, instead as an adjective modifying the noun: ice pop. So, will the folks follow the instructions?

By the way, love this vintage typeface for Popsicle, which used to be the subject of registration:

Ironically, it calls to mind a similar typeface, questioning whether Mission Popsicle, is eh, possible:

Anything is possible, but do uses of visual puns like this help (or hurt) to melt Popsicle as a brand?

VirginiaBrandHam

Every once in a while, the word “brand” appearing on product packaging surprises me, because my earlier understanding of the word preceding it spells generic, not brand. Just like the above.

Shopping in Whole Foods this past weekend, the above shown VIRGINIA BRAND designation called out like a neon sign from behind the glass of the meat counter, so I had to capture the image.

When speaking about the risk of trademark genericide, I’ll often refer to nervous trademark types behind the scenes influencing packaging to help educate consumers against a generic meaning.

Some of my favorite examples are Band-Aid® Brand Adhesive Bandages, Kleenex® Brand Tissue, and Jell-O® Brand Gelatin Dessert. We’ve referenced many others in our Genericide Watch.

Yet, there was something different about the VIRGINIA BRAND designation. First, the typical ® federal registration symbol is missing, as most brands worried about becoming generic are federally-registered. What’s more, as much as I love VIRGINIA, the name of a State simply lacks the inherent distinctiveness of the previously mentioned coined words that were made up to serve the specific purpose of serving as trademarks. Coined marks are uniquely susceptible to degeneration through genericide, but inherently generic wording begins and ends there.

To me, Virginia was a type or category of ham, either coming from Virginia or perhaps employing a common type of smoking or curing that originated in Virginia, either way generic, not a brand.

Turns out, VIRGINIA BRAND is a federally-registered trademark for packaged prepared meats, but it appears to be owned by White Packing Co., Inc. of Fredericksburg, Virginia, not Wellshire Farms West of Palm Coast, Florida, the latter trademark owner having used this label specimen to federally-register the WELLSHIRE logo (note the small print indicating MADE IN MARYLAND):

VirginiaBrandLabel

When lots of different and unrelated brands of ham offer Virginia and/or Virginia Brand ham, say Boar’s Head, Sara Lee, Black Bear, Eckrich, can Virginia and/or Virginia Brand really be a brand?

VirginiaBrandHamSpecimen

In other words, if anyone can sell their version of “Virginia Brand” ham, doesn’t that turn the notion of “brand” on its head, or at least on a boar’s head?

Just because someone calls a duck a goose, doesn’t make it a goose, right?

And, in terms of geography, just because someone calls its ham Virginia, doesn’t make it a brand either (especially when it’s made in Maryland or North Carolina).

Let’s just say, I’m more than likely to be confused here. Anyone able to make sense of this brand conundrum? Perhaps an easy job for Dr. Seuss and his famous character Sam-I-Am?

In terms of consequences, might the Virginia Brand federal trademark registration fairly be considered deadwood, suitable for smoking your next Easter Dinner ham?

Before you answer the question posed in the title of this post, your initial question might be: What is an App-Based Ride Service?

The Minneapolis St. Paul International Airport is using a handy sign directing passengers on where to go to access their favorite one, does that help?

App-BasedRideSign

I’m thinking the designated area in the airport is where passengers can hail Uber or some alternative brand to Uber, as opposed to a traditional taxi and/or cab, right?

As you know, we love to write about signs, and the one above sparked a thought and reminder about the importance of a frequent topic on this blog: Brand owners launching a new category of product or service do well to design a simple generic category name too.

Remember how it took Rollerblade an entire decade to come up with “in-line skates”?  Before that, the generic name it adopted at the USPTO was “boots equipped with longitudinally aligned rollers used for skating and skiing,” leading to a multitude of generic Rollerblading misuses.

We covered this topic in the fitness tracker category too, so let’s not forget the insights we covered in: A Missed Step in Branding Fitness Trackers?

Why the concern about having a bite size consumer-friendly generic category name? Besides risking a loss of rights, taking this step can help avoid appearing on our Genericide Watch list.

So, back to App-Based Ride Services, what say our marketing types, does this name appearing on the sign accurately, efficiently, and generically name the category created by Uber?

We recently checked out a new restaurant in Minneapolis’ growing North Loop area, called Red Rabbit, what a great spot:

RedRabbit

 

The menu cleverly refers to the salad options as “Rabbit Food” — and the Italian Chopped salad spoke to me, but one of the listed “ingredients” left me wondering “what’s a peppadew”?

RedRabbitMenu

Not wanting to be too surprised before committing, as I was only somewhat prepared to compromise on the inclusion of “artichoke,” I took matters into my own hands.

And, believe me, at the moment, I wasn’t looking for a trademark story, but there is was, staring back at me on my iPhone.

In fact, Google said Wikipedia knows that “Peppadew is the trademarked brand name of sweet piquanté peppers (a cultivar of Capsicum baccatum) grown in the Limpopo province of South Africa.” With peppers, I’m all in (should help mask the artichoke), so I committed.

But, back to the trademark story, turns out, the USPTO agreed with Wikipedia (despite the lower case lettering on the menu), Peppadew is a federally-registered brand name for “preserved, dried and cooked fruits and vegetables,” not some generic type of food ingredient:

Peppadew

Yet, if the South African brand owner wants to keep it that way, and avoid complete loss of trademark rights through genericide, it really ought to educate and police restaurants on proper trademark use.

Or, maybe it is already doing so (Panera is reportedly on board), so perhaps Red Rabbit just hasn’t seen the memo yet, or maybe it’s being delivered by a tortoise, not a hare?

At any rate of speed, this kind of genericness evidence can be harmful to a trademark owner, so how hard should a restaurant work to get the trademark facts right in their menus?

Oh, and in case you’re wondering, the salad was truly amazing (despite the artichoke), and I’m sure the Peppadew brand peppers made all the difference.

Jawbone-UpI’ve been wearing one of these little guys on my wrist for almost a year now. Love it. The personal awareness it raises for me in the areas of sleep, diet, and activity, has been profound.

Can’t tell you how many times folks have asked, “Is that one of those fit bits?” “Nope,” I sometimes say lazily and admittedly without trademark rigor, “it’s a Jawbone, but same idea.”

Lazily because I think I’m tired of reminding folks that fitbit is actually a brand, not a generic, category name for a type of health tracking device, and Jawbone is a major competitor of Fitbit:

fitbitlogo

 

My Jawbone is pretty amazing. I’m probably not using all the bells and whistles available, but it automatically tracks my sleep and steps, and I’m easily able to record what I eat and do.

Meanwhile, back to the trademark point, my absence of trademark rigor might also be explained by my serious question of what the appropriate generic term is for this category of products.

So, taking a stroll through MOA with my daughter revealed this Lululemon sign, and more importantly, the answer to my question: “Fitness tracker” is or should be the category term.

lululemonsign

Yet, only steps ahead, as we passed Brookstone, it became apparent that Fitbit doesn’t appear to fully embrace the “fitness tracker” term, opting more broadly for simply “trackers”:

BrookstoneFitbitDisplayI’m doubting the USPTO will ever allow the term “trackers” as an appropriate generic term, it’s simply too indefinite. It does, however, allow “wearable activity trackers” and that category name was added to the USPTO’s Trademark ID Manual months ago in January 2016.

“Pedometers” has been around as a pre-approved goods identification within the USPTO’s Trademark ID Manual since April 1991, but that description, while accurate as to one feature, it seems under-inclusive overall.

“Wearable activity trackers” seems like a good one, but it hasn’t gotten a lot of traction yet, as it appears there are only 244 pending trademark applications using this term in the description of goods field, including this odd one for GARMARVR, filed by a Chinese company.

Hello, Garmin — another heavy-hitter in the “fitness tracker” or “wearable activity tracker” category — you might want to take note of that recently filed trademark application.

A review of Fitbit’s description of goods in its first trademark registration at the USPTO isn’t much help either, too much of a mouthful, even with the bracketed deletions from the original ID:

“Multifunctional electronic devices for displaying, measuring, and uploading to the Internet information including time, date, [ body and heart rates, global positioning, direction, ] distance, altitude, speed, steps taken [, ] * and * calories burned [, navigational information, weather information, the temperature, wind speed, and the declination of body and heart rates, altitude and speed ].”

Having said that, Fitbit’s most recent application includes a nice attempt at a bite size term capable of being embraced by the general public for this category of goods — “Personal fitness trackers” — but, the Examining Attorney contends even that is too indefinite, so stay tuned.

This whole discussion reminds me of a few points we’ve made multiple times here before, so let’s take a few more steps together down memory lane:

  1. When a new product category is being launched — as we learned from the Rollerblade example (taking an entire decade to come up with “in-line skates”) — creating a great brand name is obviously important, but it is just as important to also create a suitable generic category term for the public to embrace once inevitable competitors appear.
  2. When a brand’s visual identity utilizes and encourages an all lower case style and format, as fitbit does, it might find itself on our Genericide Watch some day.

What do you think? Is fitbit flirting with disaster by using its all lower case branding style?

Also, has it lost an early opportunity to donate a suitable generic category name to the generic public so it doesn’t have to relinquish its trademark for that same purpose?

Our friend Professor Eric Goldman, over at his Technology and Marketing Law Blog, reported earlier this week that the Google trademark has survived a genericness attack by a fellow named David Elliot. Here is a link to Mr. Elliot’s complaint filed in Arizona federal court back in May of 2012, and here was Martha’s coverage. And, here is more coverage at the time labeling the challenge as being from the “land of slightly crazy lawsuits.” And, here is the Arizona federal court’s decision rejecting the genericness challenge. There.

Mr. Elliot’s focus in attempting to take down the Google trademark was primarily directed to the common verb meaning of the word to search the internet using any search engine, but the court wasn’t moved:

“The word google has four possible meanings in this case: (1) a trademark designating the Google search engine; (2) a verb referring to the act of searching on the internet using the Google search engine; (3) a verb referring to the act of searching on the internet using any search engine; and (4) a common descriptive term for search engines in general.”

The court noted that even if the third meaning was proven, the first meaning is the key meaning because the “undisputed evidence is that the consuming public overwhelmingly understands the word google to identify a particular search engine, not to describe search engines in general.”

Does this decision slam the door to all successful genericness challenges based on the verbing of your favorite brands? It would be a mistake to read it that broadly, in part, because the plaintiff was an individual, and the defendant was, well, Google — a brand reportedly worth more than $150 billion.

While you will recall that I have not been a nervous nellie when it comes to the risks of genericide based on the verbing of brands, if your opponent is not an individual and you’re not Google, this reading on the subject of trademark verbing and the risk of genericide is still highly useful and recommended:

Having said all that, I’m thinking the brand managers over at Rollerblade must be breathing a sigh of relief with this decision.

How concerned are you about genericide?