As I’ve been known to do long before now, this past weekend I found myself gazing intently, this time, into the front label and back copy on this S. Pellegrino sparkling natural mineral water bottle:

Putting aside the question of the shiny red star logo, which we already have bloviated about, here, a few years back — my focus is centered on the surrounding Enhance Your Moments tagline.

No gold star for the brand’s failure to capture federally-registered protection for it, despite the obvious association with SanPellegrino, as shown in results of a simple Google search, here.

Another “no gold star” moment that needs a modicum of enhancement would be the back copy:

Why? As you can see, SanPellegrino has taken a perfectly fine, inherently distinctive, and suggestive trademark, and used it in a sentence (without brand emphasis) in a descriptive sense.

Make sense?

One of my passions is to find common and favorable ground between legal and marketing types.

One of the readings during week three of Seth Godin’s intensive altMBA workshop reminded me of a great example to illustrate how a valid marketing goal can align with strong legal protection.

An excerpt from Seth’s All Marketers are Liars book was part of the reading material for a project on How Organizations Change, and this portion of that excerpt made me think of trademark types:

Great stories are subtle. Surprisingly, the less a marketer spells out, the more powerful the story becomes. Talented marketers understand that the prospect is ultimately telling himself the lie, so allowing him (and the rest of the target audience) to draw his own conclusions is far more effective than just announcing the punchline.”

Trademark types can learn a valuable lesson here about the protection of traditional trademarks: Subtlety can yield immediately protectable, inherently distinctive and inherently strong marks.

We’re talking about the difference between suggestive marks on the one hand, the favored hand, and descriptive marks or generic terms on the other hand, the less favored trademark hand.

Let’s keep in mind though, when we’re operating in the realm of non-traditional marks, subtlety may not be your friend, as the story told there needs to be far more blunt, direct and obvious to build and enjoy trademark rights.

In searching our vast content on DuetsBlog, I’m reminded of something similar I wrote more than seven years ago now, and I’m not sure I can say it any better now, so here it is, again:

“We have spoken and written about not “hitting the consumer over the head” in the context of naming and placement on the Spectrum of Distinctiveness, instead, encouraging the use of suggestive as opposed to descriptive names and marks, but, let us not forget, there is a trademark paradox that does appear to reward use of a blunt instrument, called look-for advertising, at least when it comes to developing trademark rights in certain non-traditional marks.”

So, some subtle stories told in a name can make powerful trademarks with a broad scope of immediate protection. And, some will still require the help of an obvious and blunt instrument.

The key is knowing the difference and when each approach is required. My fear is that the USPTO’s growing obsession with failure to function refusals (here, here, and here) and mere information refusals will begin to spill more prominently into traditional trademarks?

Does anyone else see this happening before their very eyes?

In other words, to please the USPTO, are we needing to move toward being more blunt about whether even a traditional word mark is actually designed to perform as a trademark?

Let’s hope not.

Oh, and by the way, I was speaking above with subtlety about being past the half-way point (the dip) in Seth’s altMBA workshop, so I’ll be blunt now, it is amazing, it is transformative, do it!

mypillowWe had some great questions from the audience during the Mastering U.S. Trademark Registration Practice seminar in Minneapolis a few weeks ago. During the session on genericness, someone asked about MyPillow, expressing amazement that it could be federally-registered.

Having now seen the MyPillow television advertisement probably a dozen times since then, I’ve finally gotten around to looking into the situation a bit so we can hopefully put this important question safely to rest, so to speak. But, before getting too deeply into details that might leave some counting sheep, I’m reminded of a few from our archives on the ubiquity of My branding:

My, my, my . . .

My Goodness, More “My” Branding & Marks

As these gems from the archives confirm, building a brand around the word My, raises serious questions, not about genericness, but about a limited scope of rights, given how commonly the term appears as part of trademarks.

Just because a term is common doesn’t make it generic. Even commonly used words can be descriptive, suggestive, and/or arbitrary for the goods/services in question. Remember the Spectrum of Distinctiveness and how the Suggestive/Descriptive line can be challenging?

While it is clear that Pillow is generic for a pillow, what does My add to the mark, and does the addition of the word My render MyPillow as a whole descriptive or suggestive of pillows?

An argument certainly exists for descriptiveness, given the number of Supplemental trademark registrations for marks having a similar My format, and given the existence of more than a hundred registrations and applications that disclaim the word My from the mark as a whole.

Yet, MyPillow is federally-registered on the Principal Register without a showing of acquired distinctiveness, so the USPTO is on record believing MyPillow is suggestive, not generic or descriptive. And, now that the registration is over five years old and incontestable, challengers to the validity can only raise the descriptiveness/distinctiveness argument in their sweet dreams.

Perhaps the logic on suggestiveness relates to the ambiguity of the word My. When Mike Lindell is holding the pillow above he refers to it as MyPillow. When he sells it to you, does it become YourPillow? And, then once you have it, from your perspective it becomes MyPillow again?

What I’m left wondering is how can the below federally-registered mark peacefully coexist for pillows, given the prior MyPillow federal registration, having both priority of use, filing, and registration?

ilovemypillowSo, one way to protect MyPillow as your trademark would be to engage a systematic watch service of filings at the USPTO. The MyPillow registration issued two months before the above mark was published for opposition, so why was no 2(d) refusal issued or opposition filed?

It appears that MyPillow started a pillow fight with the owner of the above mark by filing a trademark infringement lawsuit back in 2012, and again in 2013, but the registration for the above mark remains on the Principal Register, sending the message of thin rights, leaving an opening for others to join with other My marks, believing there will be no more pillow fights.

That appears to be what has happened, with My Private Pillow, My Secret Pillow, Angels on My Pillow as each have become federally-registered for pillows and were unopposed by MyPillow.

Marketing types, what are your thoughts about the MyPillow brand? Would your head find any support with this simplistic, but clearly successful brand name?

Trademark types, would this situation keep you up at night or could you sleep restfully given the apparent scope of rights and these close and coexisting third party registrations?

In the end, perhaps as they say, when you make your bed, especially with my pillow, you end up having to sleep in it, lumps and all, right?

Seeing these on the store shelf this weekend reminded me that we are still anxiously awaiting the USPTO’s decision from the Trademark Trial and Appeal Board (TTAB) as to whether the words “pretzel crisps” will be found generic for “pretzel crackers” –basically, a public domain category or class of goods term, in the same way that “footlong” was found generic for sandwiches.

It took the TTAB just under one year from oral argument to render the “footlong” genericness decision in Sheetz of Delaware, Inc. v. Doctor’s Associates, Inc.

By the way, did anyone notice that Subway did not appeal the genericness ruling, making the decision final? So, I’ll ask again, what about those Millions of False TM Notices to Remove?

If the TTAB takes the same amount of time in deciding where “pretzel crisps” falls on the Spectrum of Distinctiveness, it will be July before we know the answer, but something tells me the TTAB’s decision in Frito-Lay North America, Inc. v. Princeton Vanguard, LLC won’t be the final answer, it is hard to imagine either party letting this one go without an appeal.

The USPTO’s Trademark Acceptable Identification of Goods & Services Manual has listed “potato crisps” as a generic product designation since 1991 and “potato crisps and chips” since 2007, so can “pretzel crisps” expect a different result?

Dear readers, any predictions on how this one will be decided, and when?

 

 

 

 

 

 

 

 

A hot dog is a type of sandwich, and “footlong” denotes a type, category, or class of sandwiches (those measuring about a foot in length), making “footlong” a generic term and part of the public domain — incapable of serving as a trademark for any kind of sandwich.

This is true despite Subway’s claimed use of FOOTLONG since 1967, the more than four billion FOOTLONG sandwiches sold between 2000 and 2009, and the near doubling of annual FOOTLONG sales from $541 million to $936 million, following its highly successful $5 FOOTLONG marketing campaign which started in 2008.

Any secondary meaning in FOOTLONG that might have resulted from the extensive marketing campaign, is de facto, so it doesn’t count for distinctiveness — it doesn’t create enforceable rights, because purchasers readily understand that FOOTLONG identifies 12 inch sandwiches.

These are some of the findings and conclusions by the TTAB last week in the long-anticipated decision Sheetz of Delaware, Inc. v. Doctor’s Associates, Inc., rejecting Subway’s desire to own FOOTLONG as a federally-registered trademark for “sandwiches, excluding hot dogs.” For a more complete analysis of the 61-page decision, check out John Welch’s coverage over at the TTABlog.

If you’ve followed my writing on the subject, you’ll fully appreciate that the TTAB’s decision finding FOOTLONG generic for sandwiches — even if hot dogs are excluded — is not surprising:

The decision was written to be bullet-proof on an appeal that the TTAB assumes Subway will file. So, for the sake of completeness, the TTAB decided that even in the unlikely event it is wrong about genericness and FOOTLONG is actually descriptive, the evidence still does not show acquired distinctiveness. If there is an appeal it will be interesting to see whether Subway pursues a de novo federal district court trial (which would permit the introduction of new evidence) or whether it takes the existing record up to the Court of Appeals for the Federal Circuit (CAFC).

My prediction is it won’t make a difference, the result will be the same, FOOTLONG is generic for sandwiches, just like LIGHT and LITE is for beer. In my opinion, Subway’s pursuit was doomed from the start with its initial specimen of use from November 2007:

As the TTAB noted: “If the above-noted specimen shows trademark use of “Footlong,” then it must also show trademark use of 6″ Sub and Wrap.  As used in the specimen all three terms are displayed in the same manner (font, size, color, position), and used in the same way (i.e., to identify a type of sandwich).”

Of course, as shown at the top of this post, now when you see Subway’s FOOTLONG advertising (and in-store signage) it is littered with TM notice symbols closely associated with the term FOOTLONG. I’m not sure when that tactic started, but I believe it has been going on now for at least a couple of years. I remember being struck by the tiny after-the-fact TM stickers applied to the menu signage at the Subway located in the Minneapolis – St. Paul airport when I started following the Subway trademark bullying story a few years back.

With more than 26,000 Subway locations throughout the United States, and all the advertising done on the local and national level for the largest restaurant chain in the world, I shutter to think how many errant TM symbols are swinging in the wind, must be millions upon millions.

Even if an appeal of this decision would be hopeless for Subway, it might be worth filing one to at least avoid immediately facing the decision of whether to remove the multitude of stickers and the millions of false or misleading TM notices in advertising and on signage, given the TTAB’s ruling that FOOTLONG is not and cannot be a trademark for sandwiches.

Having said that, if an appeal over-turned the genericness part of the ruling, that would avoid the need for removal, even if the lack of acquired distinctiveness portion of the decision were affirmed, since it would keep the door open for Subway proving acquired distinctiveness down the road, and surely it would be able to freely use the TM symbol while it is still making that effort.

I’m just not seeing it though, I believe the genericness ruling will stand, but what do you think?

Let’s call it the Family Feud test of trademark suggestiveness . . . .

We’ve written a lot here about the all-important Spectrum of Distinctiveness, a key tool for those who name products and services, and for those who hope their selected names can be ownable as trademarks, upon their first use in commerce.

Last week, despite the clue I imbedded in my post about trademark suggestiveness (“so easy to write, I’ll probably do them while I sleep“), no one was able to connect the federally-registered floating feather image with the ZzzQuil nighttime sleep-aid brand, but there were lots of creative guesses.

What if I had asked the question in classic Family Feud style?: “Name something you associate with a good night’s sleep” — a message ZzzQuil no doubt would like to communicate about P&G’s sleep-aid product to potential consumers.

Based on my recollection of how the Feud is played, metaphors for a restful sleep would likely score well in the survey results, but a response like “sleep” (generic or descriptive of of the goods) would be ridiculed and lead to humiliation, as would any responses falling within the coined (making a word up a new word) or arbitrary (using a known word or image that has no relationship at all to a good night’s sleep) categories.

I’m thinking answers like (1) the moon, (2) stars, (3) clouds, (4) pillows, (5) sheep, and (6) Zzzzs, might score well. I’m not sure “feather” would have scored well, yet the floating feather image is a powerfully suggestive trademark for a sleep aid, it seems to me, one step removed from a goose-down pillow and the restful image of something easily floating in the air (perhaps, following a “pillow fight”).

Keep in mind that even within the suggestive category of the Spectrum of Distinctiveness, there is a range, or a spectrum within a spectrum — those candidates bordering the descriptive category are considered “highly suggestive” and are somewhat inherently weaker as trademarks than those suggestive marks bordering the arbitrary category (both ends of the spectrum within the suggestiveness spectrum, of course, are inherently distinctive and ownable as a trademark from day one upon first use). So, the more thought and imagination required to make the connection between the name or image and the goods or services, the closer the suggestive mark will be to the even stronger arbitrary category.

For this particular example, I’m thinking that sleep-aid brands that contain the ZZZ metaphor are highly suggestive, as evidenced by the many others who include that element in products associated with sleep: (1) ZZZ-EEES with 5 Sheep for an over-the-counter sleep aid (shown below); (2) ZZZ CHAIR for a sleeper love seat; (3) IT’S ALL ABOUT THE ZZZ’S for a mattress retailer; (4) HEALTHYZZZ for pillows; (5) INSOMNOMORE ZZZ with Sheep for medical services for the treatment of insomnia; (6) ZZZTIME for infant blankets; and (7) ZZZ for a herbal sleep-aid.

Perhaps the seventh example of those third-party marks playing on the highly suggestive nature of ZZZ for sleep-related products would provide a basis for seeking a narrower trademark claim and not pursuing registration of ZZZQUIL standing alone, but that would be too conservative for P&G, perhaps because of the substantial equity in the well-recognized NYQUIL brand that ZZZQUIL clearly leverages. It also has sought protection for ZZZQUIL in combination with the VICKS house brand and associated trade dress elements (including the floating feather).  Interestingly, Notices of Allowance recently issued to P&G on these additional ZZZ-formative intent-to-use marks for ZZZSLEEP and ZZZTIME, both for pharmaceutical sleep aids. In April, yet another ZZZQUIL intent-to-use application was filed by P&G for goods in Int’l Classes 3, 8, and 11. Do we have a family of ZZZ marks in the making?

Linking the ZZZ prefix to QUIL is far more unique than linking it to SLEEP and TIME, it seems to me. Hmmm, isn’t a QUILL a feather, and does that help explain the feather image? Lots to consider here.

Turning our attention briefly to another heavily advertised (prescription) sleep-aid, I’m thinking that a floating green butterfly would not score well under the Family Feud test of suggestiveness, but would it be ridiculed as arbitrary, at least before the Lunesta brand came along?

In other words, if the butterfly were to land, would it do so on the suggestive or arbitrary side of the line within the Trademark Spectrum of Distinctiveness?

Last question, how many times have you yawned while reading this post, assuming you’ve gotten to the end?

In the wake of all the discussion and debate over “trademark bullying,” NFIB (National Federation of Independent Businesses), the self-proclaimed Voice of Small Business, recently offered its members and followers “5 Steps to Avoid Corporate Trademark Bullying“:

  1. Do Your Homework;
  2. Choose a Descriptive Business Name;
  3. Use Common Sense;
  4. Consider Buying Intellectual Property Insurance; and
  5. When in Doubt, Consult an Attorney.

I suppose it’s kind of hard to argue, in general, with doing your homework, using common sense, buying insurance, and when in doubt, consulting an attorney, but choosing a descriptive business name to avoid a trademark conflict? That’s taking it a bit too far, don’t you think?

Actually, when you drill down below each step, there is much more to say about each of them, and I’ll make sure to do so later, but for today, I’ll focus on what I call, “dreadful Step Number 2.”

As you know, we don’t like the D-word here, and as you will recall from a couple of years ago in my prior posts, “A Legal Perspective on the Pros and Cons of Name Styles,” and “Staying on the Right Side of the Line: Suggestive v. Descriptive,” we established the strong preference for suggestive as opposed to merely descriptive names and marks, and we addressed the all-important Spectrum of Distinctiveness for trademarks:

Nevertheless, NFIB, in support of mere descriptiveness, indicates:

If you’re deciding what to name your business, you’re more likely to prevent a trademark infringement lawsuit if you pick a general name that describes your business’ services—Plumbing Contractors Inc. or Accounting Services LLC, for example—instead of something more specific. While your business name may overlap with another’s, there is less chance for them to stake a claim on those terms. Just make sure that your business name still stands out.

Putting aside the unanswered question of how a small business may hope to “stand out” if it follows “dreadful Step Number 2,” let us not forget, Subway recently convinced the U.S. Trademark Office it has exclusive rights in the term “footlong” for submarine sandwiches, claiming that it has acquired distinctiveness in the “merely descriptive” term, and is asserting those claimed rights against Casey’s General Store, among others.

If a small business really wants to have a hope for avoiding any and all possible trademark conflicts, it needs to live in the generic category (Dan’s take, here), not the descriptive one (where there is the real potential for the acquisition of exclusive rights by others and where there are naturally more legal claims that actually surprise their targets), but who wants to be generic?

I can’t and don’t embrace the message of waving the white surrender flag, conceding any hope of naming creativity or any hope of clearing and adopting a truly distinctive name or mark. Even small businesses with limited budgets can and should do better.

If a small business uses common sense, does its homework, and consults a competent and experienced trademark attorney, there is no reason to limit itself or place false hope in pursuing “dreadful Step Number 2.”

If nothing else, I think we may have found another D-word.

Hat tip to Mark Prus who flagged this topic for me and even offered up a portion of the title, minus the question mark.

  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.

Continue Reading Texas Toasted? How to Slice the Trademark Spectrum of Distinctiveness

John Reinan provided yesterday a marketer’s perspective that questioned the value of coined trademarks. In my experience, as a trademark type, one place on the spectrum of distinctiveness where both trademark and marketing types can have their cake and eat it too, is the delicious category of suggestive trademarks.

From the legal side of the coin, suggestive marks are immediately protectable and generally enjoy the additional benefit of their inherent strength. On the marketing side of the coin, suggestive marks communicate something about the goods (but not as directly or immediately as descriptive marks do), so the marketer need not start from scratch in educating the consumer, as one must do with coined marks.

For some additional posts discussing the spectrum of distinctiveness, the important line between descriptive and suggestive trademarks, and related issues, see here, here, here, and here.

What is often forgotten about the fine line in differentiating between descriptive and suggestive marks is the subjectivity of making the determination. In practice, this can be a rather fuzzy sort of bright line. What is also frequently forgotten is how narrow the rights can be with some suggestive marks — those said to be highly suggestive or very close to the merely descriptive border.

A stroll down the baking aisle in your local grocery store provides a nice place to illustrate both points. For example, when shopping for cake mix it is hard to miss the apparent importance of "moist" plus a superlative as key selling points — "moist" being a merely descriptive term that immediately and directly describes a desirable characteristic of a finished cake. Indeed, Betty Crocker has Super Moist, Pillsbury has Moist Supreme, and Duncan Hines has Moist Deluxe:

    

These three different brands compete with one another on the very same store shelves and the fact that they peacefully coexist and compete directly without any apparent consumer confusion (despite their similar names) helps illustrate the point of how narrow in scope some suggestive trademark rights can be.

On the point about subjectivity, as the links above demonstrate, you might be surprised to learn that the Super Moist mark was permitted registration by the U.S. Trademark Office as a suggestive and inherently distinctive trademark. Whereas, the Moist Supreme and Moist Deluxe marks were considered merely descriptive, and the U.S. Trademark Office required evidence of acquired distinctiveness (a/k/a secondary meaning) before registration was permitted on the Principal Register.

So, where descriptiveness ends and suggestiveness begins can often depend on who is asked to apply the legal test. Perhaps that is why the U.S. Trademark Office is supposed to approve marks as suggestive, when in doubt. Can someone explain the doubt in favor of Super Moist, and the lack of doubt with Moist Supreme and Moist Deluxe? Because I’m not feeling the need to exercise much imagination, thought or perception to appreciate that each brand communicates a really, really moist cake.