Brevity: Not Just the Soul of Wit

I’ve recently noticed several businesses in our area that all seem to follow a similar naming convention: A single word name that’s suggestive of an element of the underlying business but not technically descriptive.  Here are my sightings: Sauce, a pizza/pasta joint (registered);  Splitz, a bowling center (registered);  and Squeeze, a smoothie bar (also registered).  (Full disclosure: I have eaten at Sauce and will definitely return!)

I like these names a lot, yet wondered whether the PTO had found any of them descriptive of the services.  A quick check of TDR for all of the marks indicated that all went straight through without objection.  That surprised me, because I cannot begin to count the times I’ve had to argue to the PTO that a particular term is not immediately descriptive of the goods or services at issue, but rather descriptive of some elemental function or feature of the product or service, consequently not descriptive to the consumer – and thus suggestive and registrable.  Sometimes I win, sometimes I get stuck with the Supplemental Register.  (Sometimes I even lose, but can’t bear to link to one of those.)  In any event, the fact that these three marks above were all registered without a hurdle reminds me again what a crapshoot the PTO game is. 

Meanwhile, bravo to these marks’ creators.

Updated: Duh.  I forgot about two local notables in this realm: Chipotle (now nationwide, got its start in Denver in 1993) and Garbanzo.  I am trying to provide sufficient substantiation so that I am not called out for a “bogus trend story.”

What they said – and then some.

Mike Atkins points to this Inside Counsel article on the TTAB’s crackdown on overly broad — and thus fraudulent — statements of use in registrations and renewal applications.  Hallelujah, I say.  If a trademark registration in the US is to be worth the paper it’s written on, it should cover only those goods and services on which the trademark owner can show actual use.  But while everyone is worrying about audits and ensuring they’re not caught on the next renewal, how do we prevent the problem in the future?

Well, how about filing the original application only for those goods or services the mark is being used with?  Sounds crazy, no?  Alternatively, file your ITU applications broadly — but when the time comes to file a statement of use, how about knocking out those items on which the mark isn’t being used?  It could workSimilarly, when it comes time for the 8 & 15 or renewal filings, don’t just ask the client if the mark is in use, give them a checklist to tick off each item or service, and advise them of the risk involved for saying something’s in use when it’s not.  This is not magic here.

But still, how did we get to this point?  My guess is that somewhere along the way US trademark practitioners started filing unreasonably broad identifications in their US clients’ applications, maybe because of section 44 envy (oh, those class headings!), and because they could tell their clients that gave them “broader coverage.”  But that long laundry list isn’t better (and from my past experience, who really needed to include athletic supporters among the promotional items bearing a media company’s mark anyway?) if you actually need to enforce one of those registrations against a competitor — who turns around with a counterclaim for cancellation and fraud.

What I think has changed over the past few years that others haven’t yet raised is that the Internet has made it extremely simple to verify the bona fides of a particular registration.  If my client’s application is being held up by an older registration with a laundry list of goods, I’m almost guaranteed the ability to track down an item listed in the registration that’s no longer being sold, contact that registrant or its lawyer, and advise them of their registration’s vulnerability, and get a consent for my client’s application.  But that’s fine, in my book.  Nothing wrong with keeping us honest, especially where there are declarations under oath involved, right?

I always say that a trademark registration is not your corporate mission statement;  neither is its purpose to reflect the full product line to which your company aspires.  It is a snapshot of a particular state of the world at a certain time.  If there is a purge and certain party members fall out of favor, do yourself a favor and purge those members from the list of goods.

(I think I need some metaphor therapy, stat!)

Next stop in the ranting express: Registrations for promotional items.  Betcha can’t wait!

Destination: The Colony of Rhode Island and Providence Plantations and the Commonwealth of Massachusetts

Well, I missed my 25th reunion but at least managed to get to Providence and Newport, RI, and Westport, MA, in the reunion year.  The girls and I enjoyed our friends’ 18th-century home, digging for horseshoe crabs and shells at the beach, and I tried to figure out how to get my body to handle humidity again.

Of course, there was a bit of touring.  Chief among the highlights on the trip was the excursion to Dartmouth, Mass., and the marvels of the Christmas Tree Shops store.  Any retail establishment with a slogan (registered!)like DON’T YOU JUST LOVE A BARGAIN? is a siren call to me, of course, but this one was junk shopping paradise.  Had I not been traveling carry-on only (after the Heathrow debacle of the spring, natch), it could’ve been a pricey trip.  As it was, I managed to spend $33, pass a delightful hour there, and come home with dish towels, potholders, paper lanterns, cocktail napkins, potentially counterfeit foam clogs for the other trademark lawyer in the family to examine, and a charming cow-shaped bag for stashing supermarket shopping bags, all cleverly secreted in my luggage.

But what I didn’t buy was so thrillingly emblematic of the store and its commitment to quality that I must share it:

                                                                                    

At only $1.99 it was so darn tempting, but I had to refrain.  The girls needed sweatshirts from Brown (yes, they now aspire to follow in Mom’s footsteps there, but I keep reminding them that knowing their multiplication tables will really go far to ensuring even initial consideration) and I just had a horror of checking baggage through O’Hare.  So the photographic memory will have to suffice.

But it wasn’t just shopping and wet towels.  The stroll down memory lane at Brown was thrilling (was it really that small?), and the visit to the Touro Synagogue in Newport moving, particularly George Washington’s assurances to the small congregation back in 1790 that the then-infant nation would give “to bigotry no sanction, to persecution no assistance.”  Wise to remember that today.

Next stop: A return to Seattle!