There is at least one more 2018 Rapala billboard out there, just netted this one over the weekend:

Rapala’s clever Minnowsotan billboard inspired me to cast a few lines about the law concerning trademark disclaimers, as they often reel in some great questions from branding professionals.

Tim did a helpful post on trademark disclaimers, guiding why the USPTO requires them, their legal implications, and encouraging brand owners to properly resist them when they are unwarranted.

Let’s suppose Rapala sought to register Minnowsotan as a trademark for fishing lures. Putting aside wondering whether this little fish might ever attack, Rapala should lose no sleep wondering whether it would be required to disclaim “minnow” from the would-be Minnowsota trademark. No.

While it is true that “minnow” is an element of Minnowsotan, and there should be little debate that “minnow” is either descriptive or generic for a fishing lure depicting a minnow, a disclaimer is not required under the law by the USPTO when the applied-for mark is unitary (TMEP 1213.05):

“The test for unitariness inquires whether the elements of a mark are so integrated or merged together that they cannot be regarded as separable.”

“A unitary mark has certain observable characteristics. Specifically, its elements are inseparable. In a unitary mark, these observable characteristics must combine to show that the mark has a distinct meaning of its own independent of the meaning of its constituent elements. In other words, a unitary mark must create a single and distinct commercial impression.”

Using Minnowsotan as a trademark school hypothetical, it would be a pretty clear example of unitariness — with no need for a disclaimer, but what about Minnow Spoon for fishing lures?

In other words, is Minnow Spoon unitary for a fishing lure that depicts a minnow on a spoon lure?

Perhaps a cloudier answer than for Minnowsota, but usually two-word marks without compression, telescoping, or hyphenation, will require disclaimers of any descriptive or generic wording.

As it turns out, Minnow Spoon once adorned the Supplemental Register, as a merely descriptive composite mark, only capable of being distinctive, with no disclaimer of the generic “spoon” word.

Reading between the lily pad leaves, it appears the USPTO twice has considered Rapala’s Minnow Spoon to be unitary, as it allowed Rapala to federally-register the two-word mark on the Principal Register too, without a disclaimer of the obviously generic second term “spoon” for fishing lures.

Yet, that consistent disclaimer treatment appears inconsistent with the USPTO’s previous disclaimer requirement for “spoon” with the four-word Rapala Weedless Minnow Spoon mark.

Without getting too tangled up in the weeds at the USPTO, while generic matter must be disclaimed from marks registered on the Supplemental Register and the Principal Register (even under a showing of acquired distinctiveness, as was the case with Minnow Spoon), a disclaimer should not be required by the USPTO, if the composite mark is unitary.

Given that guidance, what would you expect with the “Original Finnish Minnow” mark? Well, that one was treated as not unitary, it appears, since a disclaimer of “minnow” was required. And, the same is true for Minnow Chaser and Clackin’ Minnow, as each one had “minnow” disclaimed.

The crazy thing about the “minnow” disclaimer for Clackin’ Minnow is that it was a Supplemental Registration, so the disclaimer should mean that “minnow” actually is generic for fishing lures.

A school of minnows in trademark class might be left thinking that both of the terms “minnow” and “spoon” are generic for lures, highlighting the importance of resisting them when appropriate.

SteepTea

The grocery aisles are fertile grounds for my keyboard, as you know. And, while I’m generally far more interested in coffee grounds than tea leaves (unless we’re speaking of the iced variety or reading between the lines of court decisions), the above shown box of tea bags caught my eye.

What initially captured my interest is the large yet engaging lower case branding of the word “steep” followed by the diminutive signature line “by BIGELOW” in all caps.

Given the descriptive character of the visually-emphasized word “steep” in connection with tea, and the “by” signature line of the well-known BIGELOW tea brand, my instincts told me a USPTO search would reveal a crowded field of marks containing STEEP, likely fueling my assumption that “steep” couldn’t be owned as a trademark for tea standing alone.

Turns out, STEEP was federally-registered back in 2004, for tea (as a single word mark with no style limitations), pursuant to an apparent showing of acquired distinctiveness under Section 2(f) of the Lanham Act, but the registration expired in 2010 and was cancelled under Section 8 of the Lanham Act in 2010, making way for the crowded field I imagined.

It also turns out, there is more to the story than I have time today to turn over every tea leaf of this one: The apparent principal behind the expired registration is back at the USPTO with a new STEEP application, claiming continuous use of STEEP for tea since 1994.

The irony is that the STEEP BY BIGELOW registration (first use in 2015) is now barring registration of the new STEEP application, here is the recent likelihood of confusion refusal.

So, I’ll leave you with a few questions that come to mind.

First, what’s the next move for the STEEP applicant?

And, looking back in time, did Bigelow add the signature line underneath the prominent use of “steep” to facilitate registration of STEEP BY BIGELOW and perhaps reduce the perceived risk of a trademark conflict with the prior registrant of STEEP for tea?

If so, will Bigelow regret not volunteering a disclaimer of the descriptive word “steep” since the USPTO oddly didn’t ask for one?

Assuming there are prior common law rights in STEEP and Bigelow wants to explain the lack of a disclaimer, might it point to the unitary mark theory?

Better yet, will the ineffective opposition (filed by the apparent principal of the prior registrant of STEEP) bar a future petition to cancel STEEP BY BIGELOW (to clear the path for re-registration of STEEP standing alone)?

If there are, in fact, prior common law rights in STEEP and the principal behind the STEEP application finds a way to federal court, has Bigelow relinquished a classic fair use defense in making “steep” part of its trademark use?

Finally, if risk avoidance is the goal (hoping for a steep slide into neutralizing a likelihood of confusion claim), might it be more effective to play with the meaning of the marks element of a likelihood of confusion claim, perhaps by adding graphic elements that invite other meanings of “steep” as compared to the more obvious one for tea?

Thumbnail for version as of 15:21, 6 September 2009A 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:

  1. The likely meaning of a mark to consumers. Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915 (CCPA 1976). 
  2. 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).
  3. 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).
  4. 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).
  5. 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.

Continue Reading The Relevance of Third-Party Trademark Registrations

John Welch, over at the TTABlog, reported on a recent trademark specimen of use case (pdf here); one near and dear to my heart, since I represented the Applicant seeking to register the composite word-only mark DELI EXPRESS SAN LUIS for sweet rolls. At issue in the case was whether the product label specimen (appearing below) shows use of the DELI EXPRESS SAN LUIS word-only mark as set forth in the standard character drawing of the trademark application:

The Trademark Trial and Appeal Board (TTAB), in what it admitted to be a "necessarily subjective" analysis, examined the product label specimen — and on that basis alone — concluded it does not show use of the claimed DELI EXPRESS SAN LUIS mark:

Here, we agree with the examining attorney that the specimen depicts the two literal portions DELI EXPRESS and SAN LUIS in such a manner that consumers would not perceive them as constituting a single composite mark. First, the DELI EXPRESS portion is not only in a different font but is contained within a yellow-background, and then a larger red background, separated from the remainder of the packaging design by a black bar outlining the top left corner of the package. The other literal portion, SAN LUIS, is outside of that border area and is further separated by a fanciful triangle design and placed upon a green background. The term CONCHA appears below these two elements in a lighter green box. Taken together, we find that the impression left by this specimen is that the two elements, DELI EXPRESS and SAN LUIS, are two separate trademarks rather than the single mark shown on the drawing page (emphasis added).

I respectfully submit that these kinds of determinations — especially since they are admittedly and "necessarily subjective" — are not binary, either-or propositions. For example, it is entirely possible for a single specimen to show two trademarks that function as separate individual trademarks and also function together in the same specimen as a unitary word-only composite mark (see third-party registration examples below the jump).

Here, it seems to me, that the specimen in question shows multiple word-only marks (among others too, when designs and stylization is considered), including DELI EXPRESS, SAN LUIS, and the composite of those words, DELI EXPRESS SAN LUIS. Indeed, if a consumer were shown the product label and asked what brand of concha or sweet roll this is, it would be entirely reasonable and appropriate to answer: DELI EXPRESS SAN LUIS. If so, how can it be that the specimen does not show use of the claimed mark?

Given that the drawing shows the mark sought to be registered by applicant (TMEP 807; 37 CFR 2.52), given that applicants enjoy some latitude in choosing the mark to register and include in the drawing (TMEP 807.12(d)), given that the main purpose of the drawing is to provide notice of the nature of the mark sought to be registered (TMEP 807), given that the mark shown in a standard character word-only drawing need not appear on the specimen in the same font, style, size, or color (TMEP 807.03(e)), given that the USPTO actually encourages applicants to use standard character drawings (TMEP 807.04(b)), given that a standard character drawing is a quick and efficient way of showing the essence of a verbal mark (TMEP 807.04(b)), and given the "necessarily subjective" nature of the determination, I submit that the appropriate test for determining whether the specimen shows use of the verbal, word-only mark claimed in the standard character drawing, is whether it would be reasonable for consumers to request applicant’s product by the claimed trademark, given what actually appears on the specimen.

In other words, how might consumers request applicant’s sweet roll product? Again, I submit it is entirely reasonable that consumers who have seen the product label would request the product by asking for a "DELI EXPRESS SAN LUIS concha or sweet roll." Now, while they might also request a "DELI EXPRESS" concha or sweet roll, or perhaps a SAN LUIS concha or sweet roll, the most complete, accurate, and precise way to request the product would be to ask for a "DELI EXPRESS SAN LUIS" brand concha or sweet roll, and also thereby treat the words as a unitary composite mark, because:

  1. The DELI EXPRESS house brand (and primary brand) and the SAN LUIS secondary or sub-brand are the only brands and word-marks on the entire label;
  2. They appear proximate to one another, side-by-side on the same horizontal plane, at the top of the label, for easy, conventional reading from left to right;
  3. They form the dominant portion of the label since the design elements can’t be spoken;
  4. The DELI EXPRESS phrase appears in solid black lettering on a yellow-background, and the SAN LUIS phrase has a black-outlined border and it stems from a triangle design element matching the same yellow-background carrying the DELI EXPRESS phrase;
  5. There is no requirement to include generic words as part of the claimed mark, i.e., concha or sweet roll;
  6. Consumers familiar with applicant’s products are accustomed to similar label formats where the DELI EXPRESS house brand is proximately positioned with other sub-brands like SUPER MEGA, SNACKERS, COFFEES OF THE WORLD, and SUB SELECTS, to form federally-registered word-only standard character trademarks: DELI EXPRESS SUPER MEGA, DELI EXPRESS SNACKERS, DELI EXPRESS COFFEES OF THE WORLD, and DELI EXPRESS SUB SELECTS; and
  7. Consumers of packaged food products have been conditioned to perceive house marks and secondary marks as not only having separate trademark significance from each other, but also significance together, in the same specimen, even when different colors, styles and fonts may be used for each or portions of each, and even when other matter or wording may appear between them(see third-party registration evidence below the jump).

Continue Reading Trademark Specimens of Use: A “Necessarily Subjective” Standard