Last week, we saw the latest installment in the “trademark bullying” saga. But this time was different. Instead of lawyers fighting amongst themselves, DuetsBlog brought out the big gun: Seth Godin. You can read the entire piece here. I like Seth Godin, and so do lots of other people (hence, the
A lot can be learned from the easily searched trademark registrations existing on the United States Patent and Trademark Office’s online database. For example, Examining Attorneys at the USPTO will refuse registration based on prior confusingly similar registered marks, so responsible trademark owners will conduct the necessary searching and due diligence prior to adoption and first use. In addition, because searching the USPTO’s database can yield readily available evidence on a number of substantive issues important to trademark types and brand owners, third-party trademark registrations are a very tempting tool to use to try to prove a point.
As frustrating as it can be to trademark types and the brand owners they represent, third-party registrations cannot be used as legal precedent to try and compel a certain result. Such attempts easily are rebuffed at the USPTO since each application must be decided on its own merits and one Examining Attorney is not bound by the "mistakes" that may have been made by other Examining Attorneys at the USPTO. As a result, although consistency is a goal at the USPTO, it can be rather elusive at times. Having said that, third-party trademark registration evidence can have evidentiary value, if used properly, and the valid and acceptable use of third-party registration evidence has grown over time.
Third-party registrations have been considered relevant and probative in establishing a number of different and important trademark issues, including at least:
- The likely meaning of a mark to consumers. Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915 (CCPA 1976).
- That goods or services are of a type that consumers may believe emanate from a single source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993).
- The likely meaning of a mark to consumers, i.e., whether it is merely descriptive or suggestive. Plus Products v. Star-Kist Foods, Inc., 220 USPQ 541 (TTAB 1983).
- That a mark is relatively weak and that consumers will rely on other matter to distinguish between marks. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369 (CAFC 2005).
- The existence of a relevant industry practice. Stuart Spector Designs, Ltd. et al. v. Fender Musical Instrument Corporation, 2009 WL 804142 (TTAB March 25, 2009) (finding the third-party registrations for guitar body designs supported the applicant’s position that the USPTO recognizes guitar body designs as capable of indicating source and the industry’s practice of registering guitar body designs); In re The Black & Decker Corp., 81 USPQ2d 1841 (TTAB 2006) (finding industry practice to use key head design as source indicator).
A couple of days ago I posted about a trademark specimen case, one where I was hoping the TTAB would expand the valid use of third-party registration evidence, but unfortunately, the TTAB did not acknowledge or address the third-party trademark registration evidence that was submitted (along with the specimens of use supporting those standard character word-only trademark registrations). Perhaps someone else can benefit from these thoughts in arguing for additional expanded use of third-party registrations in their trademark registration cases.
In case you’re wondering, this design is a federally-registered non-verbal trademark.
The owner identified it as a "Miscellaneous Design," without further detail or description (since it predated the more rigorous rules on supplying the Trademark Office with an accurate and detailed description of the mark).
The U.S. Trademark Office assigned to this design mark Design Code 24.15.25 ("other arrows") and in some cases 26.17.09 ("bands, curved; bars, curved; curved lines, bands or bars; lines, curved.").
So, now that you’re armed with all this valuable information, certainly you can answer three simple questions: (1) Who owns it? (2) What is it? and (3) What goods or services are identified and distinguished by this non-verbal design mark?
As promised earlier this week, in my post entitled “Without Words, But Not Speechless: More On Non-Verbal Logos That Can Stand Alone,” here is my effort to identify, from a legal perspective, some of the pros and cons of non-verbal logos and other trademark styles.
But, before addressing the legal implications, it is worth noting that a number of our insightful readers and commenters already have helped articulate a variety of pros and cons from a business and marketing perspective, here. By my count, there appears to be consensus on at least two important points: (1) Having an iconic stand-alone non-verbal logo or wordless trademark symbol is highly desirable, especially for truly international brands; but (2) be prepared to spend a lot of time, effort, and significant resources to achieve one.
In addition, at least one designer has written that having a logo without words “can be a big branding pain,” for a variety of reasons. She identifies three basic logo styles: (1) Text logos; (2) symbol logos; and (3) combination logos. Examples of text logos would be the Coca-Cola script, the Yahoo! stylized word, and the Google stylized word, all three illustrated in my earlier post. The highly stylized Ebay logo is another good example of a text logo. On the other hand, the Shell logo, McDonald’s Golden Arches, and the Nike Swoosh, are all good examples of symbol logos. In addition, here is a message board collecting a number of other possible candidates for symbol logos that are capable of standing lone — without words — yet, they still have a lot to say to consumers. Many of them, in fact, were mentioned by commenters to my prior post.
Anyway, the designer referenced above contends that for a variety of reasons, combination logos often make the most sense. According to her, a combination logo “combines both a symbol and the company name. The symbol and text can be integrated together, side by side, or with one located above the other.”
Generally, from a trademark owner and legal perspective, I prefer the combination logo too, but not the “integrated” type, instead the “side by side” type or the “one above the other” type. The Mercedes-Benz combination logo shown below nicely illustrates the “one above the other” type of combination logo:
Why do I generally prefer this type of trademark logo format and style?