No worries, I’m back at the keyboard, refreshed after a busy January, from the ATA Show in Louisville to Las Vegas for the SHOT Show, then Austin, and well beyond.

2019 is off to a rapid start, not sure where the first half of February went, so I’ll make sure this is a good one, and with a little luck, it might even be a great one:

Did my iPhone capture a production anomaly in the soap on display? Note the disconnect between the word and the stuff that I’m not sure I’d want to rub on me.

How often do we hear, “Oh it’s good enough,” or “Yeah, it’s pretty good”? — Good seems pretty watered down today, bordering on being just OK, a passing grade.

Kind of reminds me of AT&T Wireless’ funny Just OK Is Not OK commercials. Let’s just say, good seems much further from CNP than BGE — Barely Good Enough.

A Friday evening shopping run to Whole Foods provided inspiration for this blog post; as you will recall, it’s not the first, others preceed it, e.g., here, here, and here.

So, imagine my surprise that someone actually would try to “brand” soap as good.

Turns out, that someone has infused more than the common meaning into the word, incorporating the more active “do-good” kind, with a real social impact.

Before learning of that aspect to the brand, I was left wondering, is good — well, enough to serve as a distinctive trademark, in other words, is it ownable, as IP?

Turns out, it apparently is, Good Soap is federally-registered for “sustainably manufactured beauty products, namely fair trade shea butter soap” — no less than 500+ pages of evidence was submitted to establish acquired distinctiveness.

At the end of the day, I’m still left wondering about the reasonable scope of rights?

With the mildly laudatory Good, it’s probably no surprise that other coexisting soap marks have slipped into the same laudatory-themed bubble bath as Good Soap:

Besides all those, why did the USPTO allow this Good soap mark to coexist, much less achieve federal registration without a showing of acquired distinctiveness?

Perhaps another less-than-wonderful style of truncated examination at the USPTO?

With a broader identification of goods, covering simply “soaps” — and no apparent “do-good” double meaning, how did the informational matter refusal slip by too?

Back to what Good might mean to consumers, at first blush, it seems facially about managing normal expectations, but Great is about exceeding them.

Assuming the product attributes live up to the name, wouldn’t a brand rather be great than simply good? In other words, can Good Soap, ever be a Great brand?

By the way, this is not anywhere close to our first soapbox when it comes to getting lathered up over soap trademarks:

You can be the judge of what is good versus great. Yes, lather, rinse and repeat.

You never really need to wonder where the beef empanadas are, inside the display case, at least at Whole Foods, given the literal “beef” branding — visible on the edge of each outer dough shell.

This is a good example of a word appearing on a product that does not function as a trademark, as it does not satisfy the 3 elements of: identifying, distinguishing, and indicating a product’s source.

Instead, the word “beef” above connotes what’s inside, the primary ingredient of each empanada — you might say, it is merely informational, incapable of serving a trademark or brand purpose.

While “beef” could be a perfectly suitable and suggestive trademark for something not containing that meat, like clothing (assuming it’s available); as it is above, it’s simply a generic designation.

I’m thinking Whole Foods is missing out on an opportunity to also imprint on its empanadas a symbol that designates where they came from, who put them out, their source, don’t you think?

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?

Above the Law recently published a Techdirt story reporting that the USPTO denied Whole Foods‘ attempt to federally-register the laudatory trademark: “World’s Healthiest Grocery Store“.

The Techdirt story incorrectly seems to suggest that the global nature of the phrase is what caused the application to be refused, since Whole Foods has not yet achieved a truly global reach, according to a Washington Post article.

Truth be told, actually there is no connection between the extent of Whole Foods’ global reach and the USPTO’s decision to initially refuse registration, contrary to the Techdirt story.

In fact, the USPTO didn’t focus on whether the phrase is true, because it is laudatory and “merely describes a feature or characteristic of applicant’s services,” such that the consuming public would view it as mere puffery, not susceptible to actual proof of its truth.

Had the USPTO thought the phrase was capable of proof and it disbelieved the claim, it would have sought to refuse registration under the deceptiveness registration bar of Section 2(a) of the Lanham Act, but it didn’t.

In fact, the USPTO offered up to Whole Foods — once it puts in evidence of its use of the phrase as a trademark — an amendment from the Principal to the Supplemental Register, a more suitable address for non-deceptive marks capable of becoming distinctive in the future.

Of course, one of the principal benefits of a Supplemental Registration is that it prevents others from registering confusingly similar marks while the brand owner works to build and acquire the requisite distinctiveness needed for a Principal Registration.

In the end, it will be interesting to see how Whole Foods responds to the USPTO’s laudatory and descriptiveness registration refusal.

I’m thinking before it jumps at the USPTO’s Supplemental Register offer, it may try to argue against the descriptiveness refusal in the same way it successfully did for its federally-registered “America’s Healthiest Grocery Store” trademark application, when back in 2010 it overcame a similar laudatory and merely descriptive registration refusal of the highly similar mark.

So, while it’s clear that the truth of the phrases comprising the those “healthiest” marks had nothing to do with the initial laudatory/merely descriptive registration refusals, what’s not clear to me is why the USPTO didn’t refuse registration based on a prior Supplemental Registration for “The World’s Healthiest Foods” mark — owned by these folks.