Trademark owners should beware of a scam involving the Amazon Brand Registry. There have been several reports of rogue users exploiting the Amazon Brand Registry through the unauthorized modification of trademark registration records at the U.S. Patent and Trademark Office (USPTO). These scammers are submitting fraudulent requests to change the email addresses for trademark registrants, and thereafter, updating the brand ownership records with the Amazon Brand Registry.
A loyal reader brought to our attention the logo for a rather interesting chiropractic practice:
And, what are the odds a patient of Thorassic Park in Bradenton might need an adjustment after visiting Jurassic Park in Orlando? Might there be an opportunity for a shuttle service in between?
So, if you are the brand police for the Jurassic Park franchise, does the chiro-logo give you back pain? For the creatives in the crowd, does your spine tingle seeing this painstakingly cloned logo?
One of O’Leary’s most famous lines from Shark Tank seems to fit this very moment, as we mourn the loss of O’Leary’s Mr. Wonderful trademark application for roasted nuts, with a popular meme:
We’ve been down this road before, some themes intersect, and trademark value is filtered out:
Branding ZEROWATER with taglines like “For water that’s only water,” “Get more out of your water,” “If it isn’t zero, zero, zero, it isn’t just water” “If it’s not 000, it’s not ZeroWater,” and “If it’s not all zeros, it’s not ZeroWater,” all help to block Zero from pure and mere descriptiveness:
On the other hand, as the top image of the retail endcap shows (click the image to enlarge), the current packaging and product description adds blunt force to the now obvious meaning of ZERO:
“LEAVES ZERO DISSOLVED SOLIDS BEHIND”
Had this purely descriptive use of ZERO been present at filing, then ZEROWATER easily could have been refused as merely descriptive — why add it now? Especially with this far better existing copy:
“REMOVES VIRTUALLY ALL DISSOLVED SOLIDS”
While ZEROWATER can no longer be challenged as merely descriptive for “water filtering units for household use,” what about future applications having slightly different descriptions of goods?
Welcome to another edition of trademark stories that are inspired by billboard advertisements:
This one was captured for obvious reasons, if you’re familiar with our interest in brandverbing:
- Just Verb It? A Legal Perspective on Using Brands As Verbs: Part I
- Just Verb It? Part II: A Legal Perspective on Using Brands as Verbs
- Just Verb It? Part III: Testing the ‘Slippery Slope’ of Using Brands as Verbs
- Managing the Legal Risk of “Verbing Up” Brands and Trademarks
Stella Rosa (Star Rose) has poured itself an overflowing glass of Stella-trademarks (Stellabrate, Stellabration, Stellaween, Stella Peach, Stella Berry, Stella Red, Stella Pink, Stella Gold, Stella Platinum, Stella Bianco, Stella Babies, Stella Moscato, Stella Rosso, Stella Rose, It’s Stella Time, and Stella Gets Around), but it does not own the six-letter, one-word, star of the trademark show:
If the actual Stella trademark was in Stella Rosa’s constellation of trademark rights, it likely wouldn’t need to be coexisting or peacefully orbiting with the likes of these other wine “star” marks: StellaGrey, Stella Bella, Stella Mae, Poggio Stella, AquaStella, and Buona Stella.
While Stella Rosa can continue to brandverb with Stellabrate, and grow its constellation of Stella-trademarks, without Stella, becoming a really bright trademark star isn’t likely in this wine galaxy.
Much less in a beer garden:
A recent Mall of America and Nordstrom shopping trip (with visiting extended family), coupled with some initial moments of admitted boredom, led me to wandering through the shoe department:
Let’s just say, the stroll through the shoe department made it all worthwhile, to capture the above image, showing Louboutin’s latest fashion sense, leading to my mental stroll down memory lane:
Afterall, the spikes appear purely ornamental with the potential for acquired distinctiveness, and no functionality, well, unless this footwear is designed for, shall we say, painful kicks in the pants.
So, we’ll keep a lookout for new non-traditional trademark filings by Louboutin, while you keep a lookout for any look-for advertising that might set the stage for claimed rights in a spiked mark.
Lather® (brand) soap recently caught my eye — and the lens of my iPhone — while in Palo Alto.
In other words, not merely descriptive, even though using the product surely produces some.
If so, I’m thinking Lather® soap is certainly close to the line between descriptive and suggestive:
- Lathereen® for hand soap (no disclaimer);
- LATHER UP® for soap (disclaiming “lather”);
- In a Lather® for soap (no disclaimer);
- Lather Me Up® for soap (no disclaimer);
- Lather Nice® for soap (no disclaimer);
- Lard Lather® for soap (disclaiming “lard”).
Brand managers, would you be in a lather if faced with these other “lather”-styled soap marks?
Trademark types, what gets you all lathered up when it comes to trademark enforcement?
- Karen Brennan, Senior Director, Intellectual Property, Best Buy
- Anne Hall, Technology Strategy Manager-Life Sciences, University of Minnesota
- Aaron Keller, Co-Author: The Physics of Brand; Co-Founder Capsule Design
- Tim Sitzmann, Trademark and Brand Protection Attorney, Winthrop & Weinstine
Their insights and perspective on launching new brands and refreshing mature ones were priceless.
Despite tricky last minute weather with a rainy metro area, an engaged audience still joined us.
In typical DuetsBlog-style, we avoided legalese, to bring trademark and branding types together.
If there are topics you’d like to have us cover next time, please let us know, we’d love your input!
I write today regarding a squirrelly thought: are the benefits of registering a hashtag trademark almost always outweighed by the consequences? In light of a recent Trademark Trial and Appeal Board (“TTAB”) ruling and the Trademark Manual of Examining Procedure’s (“TMEP”) provisions, hashtag marks offer much less protection than traditional character-based marks, such that the latter are preferable in most situations.
We’ve all seen hashtag words and phrases (without spaces between the words) in social media, most commonly on Twitter–but also now on other sites, such as Facebook and Instagram. By affixing a hash symbol (#) to a word or phrase in a post, users can garner attention, join in a movement, and possibly “go viral.” Popular recent trending examples are #MeToo and #TakeAKnee. And of course, who could forget:
Hashtags serve filtering, identifying, and promoting functions that have commercial advertising value. Thus, it is no surprise that hundreds of individuals and companies have applied for trademarks on “hashtag marks,” seeking to control the use of certain hash-preceded words and phrases. In fact, at the time of writing, there are over 1,900 such registrations. Hashtags are hip, and everyone wants one–or so they think.
In 2016, the USPTO added TMEP § 1202.18, which explains when “hashtag marks” may be registered:
A mark consisting of or containing the hash symbol (#) or the term HASHTAG is registrable as a trademark or service mark only if it functions as an identifier of the source of the applicant’s goods or services. . . . Generally, the hash symbol and the wording HASHTAG do not provide any source-indicating function because they merely facilitate categorization and searching within online social media . . . .Therefore, the addition of the term HASHTAG or the hash symbol (#) to an otherwise unregistrable mark typically will not render it registrable.
Recently, the TTAB applied this rule and other doctrines, holding that the addition of hashtags usually do nothing to make a mark distinctive. In the case, the TTAB rejected singer Will.I.Am’s application for a hashtag mark for #WILLPOWER because it was too similar to other registered marks containing”willpower,” and the hash symbol had no source-indicating distinctiveness, merely operating as a metadata tag for social media platforms.
The TTAB decision and TMEP provisions greatly narrow the registrability of hashtag marks, as well as their enforcement scope, such that it seems as if there is very little upside to applying for such a mark in most circumstances. An applicant does not need to register an otherwise-registrable mark as a hashtag mark in order to protect the mark if hashed. In such cases, a hashtag registration provides no more protection than a traditional character registration; the hash adds no additional layer of distinctiveness, just as it would not lend distinctiveness to an unregistrable word or phrase. Thus, an applicant should only apply for a hashtag mark in instances in which the non-hashed word or phrase lacks distinctiveness without the hash. If there is a case to be made for a traditional mark, the applicant should pursue that mark instead because traditional marks can be enforced more broadly.
If an applicant applies, however, only for a hashtag mark, then non-distinctiveness absent the hashtag will work to preclude the registrant from enforcing the mark in non-hashed situations. Even if the hashtag mark could be a mark on its own without the hash, the fact that the hashtag mark is either the first or only mark could result in a presumption against non-hashed distinctiveness–after all, why apply for a hashtag mark at all in such circumstances? It may also be more difficult to prove that non-hashed phrases, which in their non-hashed form are separated by spaces, infringe the hashtag mark. Imagine, for example, two competing phrases (the first example of which is a registered hashtag mark):
Life of a Busy Executive
If the hash provides the distinctiveness for the first example (and perhaps in tandem with the lowercase and squished text), then presumably the second phrase without the hash (and with spaces) would not tread on that distinctiveness, working against a showing of consumer confusion and infringement. Of course, the holder of the hashtag mark could prevent identical use by competitors in commerce, but not similar non-hashed uses.
Emerging trademark law teaches that hashtag marks are extremely narrow–intentionally so–and as we’ve discussed before, hashtag marks are also greatly susceptible to fair use defenses. There appear to be few upsides to seeking such marks, at least without first trying for a traditional mark. So although trademark commentary as of late has focused on the trendiness of obtaining a hashtag mark, the more important question is whether it is worth doing so. In most cases, the answer will probably be “no.”
— Jessica Gutierrez Alm, Attorney
Amazon’s patent (U.S. Patent No. 9,280,157) for a “System and Method for Transporting Personnel Within an Active Workspace” has been in the news recently.
The invention is described as a device for keeping human workers safe in an automated (i.e., robotic) work environment. In the Background, the patent discusses the rapid rise of automation in inventory-handling systems. “Technological advancements have made an ever-increasing amount of automation possible in inventory-handling and other types of material-handling systems.” ‘157 patent at col. 1, ll. 7-9. “However, there may be circumstances where it is necessary for human operators to traverse, or otherwise go onto, an active workspace where the mobile drive units are carrying out their assigned inventory-related tasks.” ‘157 patent at col. 1, ll. 14-18. An automated work environment can be dangerous for human workers. As a solution, the patent proposes a transport device to transport a human worker safely through an automated inventory-handling work area. The premise, and the described need for the invention, sound reasonable enough. However, it’s the drawings of this patent that are garnering some unwanted attention.
The patent illustrates and describes the transport device as, well, a cage for workers. The Detailed Description describes the device as a “cage-like structure configured to substantially prevent the user from sticking an appendage through the enclosure.” ‘157 Patent at col. 13, ll. 51-53. Importantly, the claims of the patent (i.e. the scope of protection) are relatively broad and do not specifically require the cage-like structure. Claim 1, for example, is directed to an inventory-handling system to transport a user within a workspace, the system including a first device to transport users within the workspace, a second device to transport users within the workspace, and a management module directing movement of the two devices. Of course, this doesn’t render the imagery of work cages any less concerning.
A recent study conducted by two artificial intelligence researchers drew attention to the patent. The authors referred to the patent as: “an extraordinary illustration of worker alienation, a stark moment in the relationship between humans and machines.” News of the patent quickly reached major outlets and social media.
Amazon’s Senior Vice President of Operations, Dave Clark, responded on Twitter: “This was never used and we have no plans for usage.”
This patent, the resulting blowback, and Amazon’s response highlight a couple of important points about patent protection.
First, patents (and, typically, patent applications) are publicly accessible documents. At the heart of the patent system is an exchange. The inventor obtains the right to exclude anyone from making or using the invention, but in exchange, must disclose that invention to the world. Thus a company seeking to obtain a patent, and particularly a high profile company like Amazon, should keep in mind that every word and drawing will be viewable by the public.
Second, Clark’s statement that the company has no plans to implement the cages is a reminder of the value a patent can have. A patent grants the owner a right to exclude others from practicing the invention. A patent owner need not actively practice the invention herself in order to enforce it against others. Even when a company is not looking to implement a particular invention, an issued patent on the concept may provide a leg up on competitors. The relatively broad claims of the Amazon patent, which do not rely on the cage design, allow Amazon to exclude its competitors from employing a system for transporting humans through an automated work space.