Destination: Chicago

 

Wandering up and down Michigan Avenue, awaiting my husband’s arrival for his father’s funeral, I managed to find levity (or at least levity sufficient to float my boat, if nobody else’s) in branding at Sur la Table, a store I adore:

baked

As trademarks for baking dishes go, I have to give BAKED a thumbs-down. But Baked Occasions as a cookbook name? BAKED as a mark that is suggestive for Colorado and Washington, and now a few more states? Yeah, that just might work.

 

Destination: Paris, for trademark geeks only

Thanks to the INTA annual meeting in May and the Rocky Mountain IP and Technology Institute in June, my brain is chock-full of trademark knowledge and case law. Hence my having to take a snap of this establishment’s name immediately:

Freezbee

That’s FreezBee, for frozen yogurt. So, if we were in the US, would that be dilution? Likelihood of dilution? Does dilution even exist? What dilutive harm could the owner of the trademark possibly assert? This may all be academic, as it looks like the FRISBEE trademark may have fallen to generic status, and its ownership is certainly flaky. Still, it’s a fun fact pattern, and evidence of where my brain goes even on vacation in Paris.

More is often less

Would, or should, anyone really disagree with the proposition that the food you eat should taste good? I think not. But is that proposition on its own worthy of serving as a trademark? To wit:

Food Should Taste GoodW

I note that it’s registered, but think that registration won’t go far to enabling the mark’s owner to prevent others from saying – not using as a trademark – that food, in fact, should taste good. Your mission statement shouldn’t necessarily be the same thing as your trademark.

Similarly, if asked the question set out in this mark (which is registered, despite the absence of the symbol), I’d of course say “hell yeah,” though I wouldn’t necessarily view that question as a mark:

Wanna Betta Butt

While a slogan or catchphrase may be registrable with the PTO (because “Food should taste good” and “Wanna betta butt?” are not technically descriptive of the goods they designate), that doesn’t mean they’re good trademarks. Multiple word brand names do not roll trippingly off the tongue, are difficult to remember and thus susceptible to misidentification,* and ultimately make me think of one of Saturday Night Live’s most memorable fake brands, Oops! I Crapped My Pants!

 

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*Fun fact: I always refer to the women’s clothing store White House¦Black Market as “Black Tie, White Noise,” the name of a (highly underrated, IMHO) David Bowie album.

 

You can’t fool me

I spend so much time and money at DSW that it’s no wonder I have been officially designated a “Shoe Lover” (duh, as if I haven’t known this since Mr. Massey’s shoe shop in Newark back in the 60s …) With me, two teenage daughters, and a husband who loves shoes too, we’re there all too often, and are all too familiar with the brands they carry.

But when I saw this one I was speechless. I don’t care how many registrations* their owner has for this mark and marks incorporating it:

Klogs

IMHO, that’s a whole lot of money spent on something that’s virtually unprotectable. Is it worth trying to buy a krazy spelling of clogs? And would you even try to enforce it? (Hint: TTABvue contains no records indicating the owner of the KLOGS trademarks has opposed any applications based on its ownership of KLOGS. I rest my case.)

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*2(f), Supplemental, and with disclaimers of the right to use “clogs” apart from the mark as shown.

Worse than melty

I can’t believe I haven’t yet found a reason to discuss my visceral disgust at the popular marketing term “melty.” What in dog’s name is wrong with “melted” and “melting,” I implore you? Every time I see a commercial using the term – and it rears its ugly head more and more often (though the public seems to have been cringing about it for many years now) – I scream at the screen. (I mean honestly, why not “meltish” then while we’re at it?)

So it was with even greater disgust that I turned over a package of Starbucks Via to see this fresh horror:

roasty

Yes, that’s “roasty.”

Now for a quick detour: I had the great honor and pleasure of being a guest lecturer on trademark prosecution at the University of Denver Law School last week, in a trademark class taught by the esteemed adjunct professor Marc Levy (okay, I had an in). And one of the topics I discussed my steadfast reminder to clients to look terms up in Urban Dictionary to make sure your new trademark isn’t a dirty word.

Let’s just say that Starbucks should’ve done that before forging ahead with its “roasty” usage.

 

A gentle reminder

I can’t tell you how many times in my career (now over 24 years in this trademark biz!) I’ve been asked “but what if we change the spelling?” You mean from candy to “kandy”? From cheese to “cheeze”? Or this:

music skool

The answer, I’m afraid, is still no. It’s neither protectable nor distinctive. You’re fooling no one.

And that, my friends, is my rant du jour.

Trademark didacticism and then some

Every once in a while I think it’s important to give credit to a particular brand for listening to their trademark lawyers and branding consultants, and not picking a completely descriptive mark.

Here’s a good example:

Living Proof – a solid, non-descriptive, suggestive mark. I’m assuming that it’s the line name and that Perfect Hair Day, a much less suggestive mark, is the product name. But again, Living Proof is an excellent beauty product or haircare name.

However, Living Proof Perfect Hair Day 5-in-1 styling treatment? A mouthful. (Not to mention the cutesy P H D initials …) While I applaud the affixation of a generic term (that’s “styling treatment”), it’s still tough for the consumer to keep track of all of these “long-ass names” (as blogger Poppy Buxom points out) to ensure she’s buying the correct product. Case in point: Garnier recently discontinued my favorite hair goop, and I set out to find hoarded backlogs on Amazon. Well, the full name of said product is “Garnier Fructis Style Survivor Tough it Out Glue with natural cactus extract – Extreme.” It took me ten minutes to sift through the names of all the available Garnier Fructis products and photos for me to verify that I wasn’t buying something that’d make my hair cling to my skull.

Bottom line? All of this fine print really makes it hard on us femmes d’un certain age who need reading glasses!

Destination: London Heathrow

Magazines for the return trip, of course. This time I found an ad in Marie-Claire UK that provided me with not just blog fodder, but trademark geek blog fodder:

What does this ad tell me about British trademark law? See the (R) after Pink Lady? Pink Lady is a cultivar* name – a cultivated variety of a plant. Under US law, cultivar names do not function as trademarks, and are therefore unregistrable. When a PTO examiner is faced with an application for a trademark for goods that include “live plants, agricultural seeds, fresh fruits, or fresh vegetables,” he or she must inquire of the applicant whether the term has ever been used as a varietal name, and whether such name has been used in connection with a plant patent, a utility patent, or a certificate for plant variety protection. [citation omitted] The examining attorney must also undertake an independent investigation of any evidence that would support a refusal to register, using sources of evidence that are appropriate for the particular goods specified in the application.” [emphasis added]

Why do I add emphasis? Because the PTO doesn’t always do its appointed duty, and registrations for cultivar names like ASPARATION and BROCCOLINI have slipped through.  I’ve actually investigated the PTO records on these registrations; there’s nothing in the respective file histories to indicate whether indeed the examiner made the necessary inquiry about plant protection. I think their registrations predate this comprehensive (and new, I think) language, and thus those registrations are probably bogus. But they’re there, registered, and, in my view, obstructing the rights of growers of that cultivar to call it what it is.

I’ve had clients in the past who have tried, unsuccessfully, to register cultivar names. As far as I’m concerned, cultivar names are the equivalent of generic drug names. You need to have a name to call the “drug that does x, y, and z” once its patent has expired so others may lawfully manufacture the drug; similarly, if others may lawfully grow the apple cultivar that’s been named Pink Lady, they shouldn’t be restricted from calling it Pink Lady.

And that’s what trademark geeks do when they read foreign magazines!

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*Bonus: Merriam-Webster online advises that cultivar rhymes with abbatoir, which opens up a world of possibilities.

September Birchbox – Streamlined

This Birchbox biz has been going on for some time. So to keep things more lively, I’m only going to focus on brands that are new to me.

Let’s start September’s with a marketing doozy:


I have, in the past, raged against pointless misspellings. So the extra “n” in the recognizable name “Racine” was strike one for me. Strike two? Package copy that reads “Powerful anit-aging [sic] agent.” Strike three? The “About” page that reads “At it’s [sic] roots, Racinne, a Canadian Beauty Company.” A strikeout, with bonus points for unnecessary capitalization!

Next, Airelle:

Here we have the doctrine of foreign equivalents at work. Airelle is French for “blueberry.” When the product contains blueberry extract, airelle is merely descriptive of the goods. And in this case, at least as of my publication date, the PTO has correctly applied the doctrine to refuse registration of a foreign term that is merely descirptive of these goods. Airelle had better luck with Berrimatrix, the other mark on the package, and got that mark registered.

Here’s a mark I just love:

That’s Ruffian, if you can’t see it. Love the name, love the color.

Finally, here’s a product whose marketers appear to have given up on the naming process:

Even the Birchbox insert is stumped; they call the product “This Is a Sea Salt Spray.” It’s marketed by the Davines Group of Parma, Italy. You see the legend “More Inside” on the bottle? Well, it appears that’s the product line name, so other products in the line bear monikers of, for example, “This Is a Volume Boosting Mousse,” “This Is a Medium Hold Modeling Gel,” and the finalist in the Gertrude Stein competition, “This Is an Oil Non Oil.”

The Davines website clearly outlines their focus on sustainable beauty, which is laudable. More head-scratching than laudable, however, is the inclusion of Ayn Rand in their sidebar of “Things That Inspire.” Also head-scratching is their claim to have created the “Davines” name from the names of their children, Davide and Stefania. I can’t quite make that add up, certainly not in any way that gives poor Stefania equal time!

In any event, Daughter #2 advises me that salt spray is great for curly hair and is pleased to take this off my hands.

Cleaning out my battery drawer

Could a less enticing headline exist anywhere? I think not. But one thing that did grab me was that Duracell really knows how to protect its trade dress. And just now, you’re probably thinking “the coppertop battery,” right? Well, so are they:

The battery has a copper top, so “coppertop” would be descriptive as a trademark and thus not registrable. But the copper top serves no function for the battery, so the result is that the copper top serves to identify Duracell as the source of batteries with copper tops. How does Duracell reinforce the recognition of that trade dress? With its constant repetition of “the coppertop battery” in its television ads, and with the legend in the photo above pointing out that copper top. That’s how you protect trade dress.

June Birchbox

Thanks once again to Birchbox, I’ve got something to blog about. This month there are a couple of marks that rankle.


First, we have Mirenesse:



Don’t get me wrong – I LOVE lip pencils, and expect a cage match over this one with my daughter. However, the name troubles me because it looks like a line extension of Mirena, the intrauterine birth control device. I know they’re not related goods, and I see no likelihood of confusion whatsoever. I just know that with my fertile (heh) mind, I see Mirenesse and think of Mirena.

But this one really irks me:



That’s right, it’s “100% Pure.” Where on earth do I begin with this? Let’s start: If the product is indeed, 100% pure, whatever that means, then 100% PURE is descriptive and therefore unprotectable as a trademark. It is also therefore a lousy trademark, because you cannot prevent competitors who have products that are equally 100% pure from asserting that same fact.

And yet this raises another question, one for the false advertising attorneys among us: What does 100% pure mean? For that matter, what do “100% natural” and “100% vegan” mean? Does the latter mean I can eat this? It’s vanilla bean and coconut, after all. This company alleges that its products contain no toxins, but the lengthy list of floral, fruit, and nut extracts contained in the creams, for example, could be highly allergenic, if not toxic, to one sensitive to those ingredients. I once used a cocoa butter skin oil that contained the admittedly all-natural Brazil nut oil – and broke out in a ferocious rash, natural or not.

So enough of that. Let’s move on to the less inflammatory items. Here we have Suki:



It’s “exfoliate foaming cleanser,” and shouldn’t that be “exfoliant”? Seems that way to me.

Next, another Color Club nail polish:



Cute color, but I don’t do matte. And this makes THREE of these!

Finally, a well-established brand:



Dry shampoo (or shampooing sec, en francais) is something I tend not to bother with because I have such short hair that it takes no more than an extra minute to wash it in the shower. I guess it’d be good for overnight travel … but maybe I’ll just give it to the kids.

That’s all for this month’s haul!

May Birchbox – Geek diversion

This month’s Birchbox allows me to dive deep into the nuances of trademark law – so deep that I’m going to save the rest for another day. I’m sure you’ll be glad to have taken the plunge with me, though. Here goes:




This is a sample of YesTo Grapefruit products. If you’re familiar with the YesTo line, you know that they feature a number of fruits and vegetables to which we’re saying yes – e.g., carrots and blueberries. From a trademark perspective, however, these marks could be a bit troublesome; as I see it, these narrowly skirt the fate of being deemed a dreaded PHANTOM mark! (No, not this Phantom.)


What is a phantom mark? According to the Trademark Manual of Examining Procedure, a phantom mark is one that contains an element “that is subject to change.” The reasoning for the prohibition against such registrations is to “accurately reflect the mark that is used in commerce, so that someone who searches the register for a similar mark will locate the registration,” and that a mark that is missing elements “will encompass too many combinations and permutations to make a thorough and effective search possible.” TMEP § 1214.01

So how do the YesTo folks get around the phantom mark problem? By almost, but not quite, mutilating their trademarks. Yes, yet another somewhat obscure trademark rule holds that a mark must be “complete”; that is, the mark in the drawing must reflect the mark that appears in the specimen. Here is the PTO drawing of the YES TO mark followed by the mark as it appears on the products:

Trademark image
As you can see, there’s a “flavor” under the YES TO logo on each package – here, carrots, tomatoes, cucumbers, or blueberries. But that flavor isn’t, according to the PTO, part of the registered trademark. I’ll tell you what I think: I think YesTo sat down with its trademark lawyers and had a nice long talk about how to ensure its marks could be registrable and protectable and how to avoid both the phantom mark and mutilation problems – and switched to this new logo, which emphasizes the YES TO and clearly shows the fruit or vegetable as a variety name. But what about the little tomato, carrot, cucumber, or blueberry that appears right above “to” in the logo? Isn’t that part of the logo? I suspect the YesTo argument is that the little picture is also a variety designator and not part of the YesTo logo.

Well-played – but look at what you have to go through to get registration with a mark like this! 

More from the rest of the May Birchbox selection soon!

Logo nono

Sometimes graphic designers can muck up the look of a mark. Take this one, for example:




I am reasonably certain that this is meant to be the sunglass version of the regular Xperio lens. Indeed, looking at the company’s website confirms this guess. But something about the squishing of the UV onto the core Xperio mark bothers me. In fact, the website only exacerbates this confusion, as it contains two different logos for the XperioUV mark, and then shows the mark in text as you see in the bottom of the ad above, as two separate words. 

Every trademark lawyer and marketer has a different view, but I think that since “UV” is merely a descriptor to indicate sun protection, why bother making a fancy logo and gluing UV onto Xperio to try to make a new mark? “UV” is generic, and Xperio is so distinctive. Why not merely let UV function as generic, rather than trying to gin up a new trademark with it? It’s just line extension – so you’d have Xperio UV, Xperio Bifocal, Xperio Progressive, Xperio reading, as needed. But no one asked me …

This has been your trip into the mind of a trademark lawyer. Trust me, it’s no easier on this end.



March 2013 Birchbox

I am excited – they went for “March Madness” as their theme for the month’s goodies, and I, for one, have no problem with this whatsoever. Likely to be confused with the NCAA? Nope. Likely to be viewed of as sponsored by or affiliated with the NCAA? Nope again. Is it March? Yes. Does Birchbox reference the NCAA sporting events that take place in March in its copy? Yes again. But I still don’t mind, because referring to the grand slate of basketball tournaments that takes place in March – and the ensuing frenzy – is appropriate, when the NCAA has elevated the annual tournament to holiday status. You can’t define a season – not to mention making untold millions from broadcast rights and tickets and all – and then tell the public they can’t call it what you’ve named it.


The same goes for the Oscars and the Super Bowl, by the way.

Now that I’ve hosed myself down after this rant, I’ll resume our regularly-scheduled Birchbox blogging.

Here’s my favorite naming of the bunch:



Caudalie products are made from antioxidants that are derived from the byproducts of winemaking. So I’m already predisposed to like them. Calling this new collection “premier cru,” or “first growth”? Now I love it. I’ve used their products before and have liked them, particularly since they don’t overdo it on fragrance. Read their story here; you’ll want to go there.

Next, we have another foreign import:



It’s Miss Me perfume by Stella Cadente – “falling star,” in Italian. I like the perfume name and the company name. Unfortunately, the scent is a bit too powdery for me.

Next,



Serge Normant, according to his website, is a “renowned hairstylist” with an “eponymous line of transformative hair care and styling products.” With florid prose like that, I’m intrigued. But after scouring the site I can only conclude that the wild coifs depicted on his home page are not the results I can expect from using this dry shampoo. But I’ll try my best.

Vasanti’s website is a lot less glamorous than Serge Normant’s. But since its offering, pictured here – 



 – contains the term “face rejuvenator,” who am I to refuse it?

Finally, this month’s bonus shows an example of a good old-fashioned laudatory mark:



That’s Madewell. Can any trademark geek tell me why MADEWELL is registered on the Supplemental Register for paint but on the Principal Register for clothing? I can’t come up with a principled distinction, but I suspect the PTO can’t either.
Enjoy the madness!

December Birchbox

Just hear those sleigh bells jingling … It’s the “All Wrapped Up” December Birchbox delivery, and I appreciate its celebratory yet non-denominational enthusiasm – i.e., the accompanying card is not red and green with holly on it.

What’s the haul this time?
First, a repeater:
Apothederm is mincing no words here – Another year? Another wrinkle? Count me in. I still say the name sounds like “a pachyderm,” however.
Next, another brand repeater:
I still don’t think Juicy Couture skews to my demographic, and can’t imagine that its marketers targeted 50-somethings with the tagline “Smells Like Couture.” When I see a “Smells Like …” tagline, I immediately think of “Smells Like Teen Spirit,” Nirvana’s smash hit from its 1991 album Nevermind. I don’t want a fragrance inspired by grunge rock, okay? Birchbox, please: If you’re sending perfume samples, Taylor Swift and Juicy are just plain wrong when I’ve ticked the 45-55 box!
Sometimes, marketing people just work too hard, and here’s an example:
The company that makes this product, The Balm, appears to have adopted wisecracking 40s Hollywood glamour as its M.O., and that’s fine, though a bit close to Benefit’s vibe. This product is a “luminizer” – hence, Mary-Lou Manizer. Get it? Actually, I’m being a mite harsh. Lots of their names are quite cute – BalmsAway for eye makeup remover; BalmShelter for lip gloss, TimeBalm facial cleanser, for example. Mary-Lou Manizer just seems strained in comparison.
Another name I don’t understand: 
I thought it was LA as in “ellay,” the city, rather than “la” as in the French article, but their website shows otherwise. What can I say, I just don’t like the sound of it. Fresh is totally weak in the cosmetics area, so it’s hard to distinguish yourself from, for example, this company. And adding “la,” which means “the,” isn’t enough. I do like some of their other good names (e.g., Divas & Studs canine care products), as well as their conservation focus, but fundamentally find the name La Fresh to be … not so fresh?
Finally, a timely travel shampoo for the gym: 
The brand here is Number 4 (apologies for the photo quality). Why 4 – I mean, I know why not 2, but still? (Couldn’t help myself there – sorry.) 
A look at the company website reveals an inspiration statement, and here’s where the stars align: It’s Paris. Yes, Number 4 is “inspired by French culture, virtues and debonair ideals.” Whatever that means. So this product, from the Lumiere d’Hiver line, is somehow supposed to be connected to the fourth arrondissement in Paris, otherwise known as the Marais district. 
That’s all well and good, but “Lumiere d’Hiver“? Winter light? Have you been to Paris in the winter? Not only have I been there, but I’m heading there very soon for Noel. And the forecast is for wet, gray weather. So if we’re talking natural light, it’s not a connotation that speaks to enhancing the beauty of my hair. However, if it’s the artificial lights and festive displays of Christmas, that could work. I’ll just have to let you know.
So a Joyeux Noel et Bonne Annee a tous – and with any luck there will be destination blogging aplenty in the nouvel an!

A reverence for teeth

Sometimes you know what a company is getting at in its naming process but the execution fails due to powers beyond their control. Take Theodent, for example:

The innovative ingredient in this toothpaste is described as “Rennou™, a non-toxic proprietary blend of a naturally-occurring extract found in chocolate” is derived.” Leaving aside discussion of “Rennou,” I note that since theobromine is the alkaloid found in the cocoa bean, it wasn’t hard to figure out how they put “theo” and “dent” together to form “theodent.”
But there’s a catch: I’ll lay odds (having recently been to Las Vegas) that “theo” is far less commonly recognized as suggesting chocolate (though this company is trying to prove otherwise, deliciously so) than it is as referring to religion.
Theos, in ancient Greek, means god or gods. Our language is full of theo-  and –theist  words: theology, theocracy, apotheosis, monotheism, ad infinitum. Theobroma, for chocolate? The food of the gods.
So when I see Theodent, I don’t think chocolate – I think religious or godly teeth. And then I think there’s something nefarious going on, which is of course overthinking, but I can’t be the only one with that takeaway, can I?

November Birchbox

So we finally gave in and joined the local health club/gym. We’re far from the oldest or least fit there, so that’s encouraging; most encouraging, though, is the salutary effect the elliptical machine is having on my elderly spine. But now I need to coordinate my routine and bring along a set of toiletries for post-workout ablutions.

Birchbox this month is right on target for my traveling toiletry/cosmetic needs, even if not all the trademarks hit the mark.
First, with a killer trademark, is Archipelago pomegranate soap:
Love, love, love Archipelago as a trademark. It’s not at all descriptive, but it’s evocative and appropriate for soap. Bonus: it smells great.
Second, with an okay trademark, is ModelCo “Fibre Lashxtend” lengthening mascara:
ModelCo is fine as a trademark – not descriptive; suggestive of the fashion models beauty ideal towards which we all strive, right? – but what I’m really excited about is that this is a full-size tube, and I already ran out of the sample size tube of Chantecaille from last month’s Birchbox shipment, and wasn’t all that wowed by it.
Another item that will serve me well at the gym is this Oscar Blandi hair spray:
“Pronto” is a cute designation for the product without being too descriptive; any aspect of  “pronto” suggesting speed of use is kind of meaningless once you think about what a quick hairspray would mean. Think about it … Now, as far as a quick hair care routine, well, that’s different. I can confidently state after about ten visits to the gym that I have the shortest hair care routine of any woman I’ve seen so far. Wash, spray or schmear, fluff, go.
Here’s what happens when you have good intentions but the reality of the mark defeats you:
On the heels of argan oil we now have marula oil, which, according to the marula.com site, is great for dry and mature skin (yes and yes!) and is derived from the marula fruit
Marula products are sold through The Leakey Collection – and yes, it’s related to that Leakey: the founders are the son and daughter-in-law of renowned anthropologists Louis and Mary Leakey. The products they promote are African-made, fair trade, sustainable – everything you could want. So I feel only crass and superficial when I complain that I am just not so sure I want anything with the name “Leakey” on my face. But more seriously, I do understand the desire to propagate the Leakey name and heritage; having grown up in the generation of “Born Free” and “Wild Kingdom” I easily recognize the Leakey name and legacy. I’m just not sure it can overcome its phonetic handicap to translate to a new generation. I’d be happy to see it prove me wrong! In any event, I’m definitely going to see if it works on my dry and mature skin!
Finally, the bonus:
A sample of John Varvatos Artisan eau de toilette. Artisan is in fact an excellent name for a fragrance. I approve. And timely – during the recent tonsillectomy convalescence, my daughter found great solace in streaming episodes of “Queer Eye for the Straight Guy” from Netflix – where I first heard mention of John Varvatos, thanks to fashion guru Carson Kressley. 
Good job, Birchbox – I look forward to using all of these!

September’s Birchbox

Not that thrilling a haul. Two wins targeted at my demographic, the rest silly stuff.

In my demographic, anything with the word Bulgari:
Another brand that works well for me, Caudalie – whose products are made with grape and vine extracts:
But then it went downhill – yet another Color Club nail polish, so my daughters can add to their collection for their home nail salon events.
Next, “The Brush Guard” “brush guard variety kit”:
I have the sneaking suspicion that these brush guards are the original wrappers cosmetics brushes came in, which someone has diligently hoarded and decided to repurpose (a word I loathe) for essentially the same purpose for which they were originally used. I suppose if I were a better person I’d treat my cosmetics brushes more lovingly … but I’m not, so I won’t. 
Trademark Geek Digression: I note that THE BRUSH GUARD has actually been registered with the PTO for “covers for cosmetics brush bristles; brush covers for cosmetics brushes.” Even with the exclusive right to “brush” disclaimed, this registration is a disgrace, IMHO, and should never have gone through. If you can ask yourself “what does this device do?” and reply “guard the brush,” then the mark should have been refused as descriptive if not generic. Once again, it’s registrations like this that clog the register and unfairly accord overbroad rights to trademark owners – which, in turn, often leads to aggressive yet unfounded assertion of those rights against legitimate descriptive use. (See KP Permanent Makeup, Inc. v. Lasting Impression I, Inc., for a broader discussion of this topic.)
Finally, of no use to me, there is a piece of elastic ribbon cut and tied and cleverly called “The Twistband.” This appears to be merely 6″ of elastic ribbon. Neither an original name nor idea here. Moreover, I’ve had short hair for all but about three years of my life. I can offer it as a bribe to whichever daughter tidies her room best, but it’s not really an item for the young 50-something.

NSFW or for Dad

I think I’ll let Dan Savage’s commenter here express some thoughts on the merits of a new product called Masque. From the trademark perspective, however, I’ll be a bit more forthcoming: Masque, for a product whose purpose is to “mask,” is descriptive, and possibly even generic, of the product, and therefore likely unregistrable. The fact that they use the French spelling doesn’t change that analysis one iota.

That is all.

Destination: Marina di Ragusa’s finest caffè

Spotted in a cafe in Sicily:




See the ® symbol there? CAFE NOIR is registered in Italy for coffee and coffee shop services. So, French major, what does “café noir” mean? Why yes, it means “black coffee.” 

Now, is there any chance in hell that BLACK COFFEE could be registrable for coffee in the US? Of course there’s not, and trying to sneak a fast one past the PTO by stating that, for example, “caffè nero” means “coffee black,” rather than “black coffee,” thankfully, won’t fly. Look, if your client’s mark is a dud – descriptive or geographically descriptive – tell the client and save them the money, instead of fabricating definitions or feigning ignorance to the PTO. You’ll do us all a favor.

I’m not saying you should miss Caffè delle Rose in Marina di Ragusa, though. And take their cannoli, please, if you’re ever offered the leftovers:



Just take the claim of trademark rights con il beneficio del dubbio, as they say there.