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.
Spotted in a cafe in Sicily:
I don’t know, this month’s haul seems to be more the result of perspiration rather than inspiration, in the words of my 10th grade English teacher.
. . . first thought this ad in US Weekly was a fake, or for a fake product:
Nancy’s all-too-kind words today were a sharp kick in the butt to remind me that it’s time to get back in the blogging saddle. And I do, in fact, have a couple of tricks up my sleeve. (Translation: photos snapped on my BlackBerry that I should download).
(1) the mark’s primary significance is a generally known geographic location; and (2) … the relevant public would be likely to make a goods/place association, i.e., would be likely to think that the goods originate (or will originate) in the place named in the mark.
My husband and I have been married for 18 years. He is a trademark litigator, while I do trademark prosecution. We speak each other’s unspoken language . . . fluently. (1)
(1) Jackson Browne’s song, by the way, is really not about lawyers at all, but it’s a great song.
I don’t create brands; I just clear them as trademarks. I like to assume there’s some master list of rules for branding – at the top of the list being “Never Use the Term ‘Fat’ When Marketing to Women.”
More from the supermarket:
This is what happens when there’s a line at the supermarket. No, I don’t usually buy candy, but today I did have the time to examine the packaging of this new product featured right at the checkout line.
My first thought is – “drops”? Well, there’s another unprotectable name. Yes, think lemon drops or cherry drops – or even cough drops. These “drops” above are pretty much lozenge-shaped just like other candy drops. So while Hershey’s has affected a “tm” after “drops,” the term is generic.
Then I examined the tagline: No candy shell – No mess. Is that a slap at M&M’s? Is candy shell mess this year’s bedbug infestation? Alternatively, are they trying to say that even though there’s no candy shell on these, there’s still no mess?
Well, that’s where mere visual examination fell short. I actually purchased the package pictured and opened it up to see and taste just what Hershey’s is getting at here. So what did I find? Lozenge-shaped Hershey’s milk chocolate with a glossy coating instead of the usual matte, instant-melting finish that you find on Hershey’s Kisses. The coating looks kind of like the one on Milk Duds, except that it’s integrated with the inside. So the No candy shell – No mess tagline essentially combines two unrelated features of the product, which, IMHO, falls kind of flat: it’s not catchy and I have to think about the advantages it’s attempting to communicate.
All in all, I conclude that this is a product for which I can’t imagine the public was clamoring. But since M&M’s has been expanding its product line (mmmmm . . . pretzel M&M’s . . . ), I guess Hershey’s feels it must do the same. And the upside? My kids will be really excited that there’s chocolate in the house!
Here we go once again with miscellany from all around.
Okay, not only is the concept of push-up sushi in a tube disgusting, the name its creators came up with – Sushi Poppers – isn’t going to go very far from a trademark perspective. I’m just saying. Take a look for yourself:
Next on my agenda of randomness, Colorado pride:
Not only is it a great name , it’s great beer, with a delightfully incomprehensible slogan (“It’s Like Sputnik,” if you can’t see it), plus the benefit of using endlessly recyclable aluminum cans. Just watch out for its 8% ABV! Not that I learned the hard way or anything.
Finally, as for names that make me ponder the descriptiveness/deceptive misdescriptiveness/huh? continuum, I give you this:
The mark is registered,and didn’t receive an office action challenging it on descriptiveness grounds. I agree – can you imagine grilling beans that small? Right through the grate they’d go. No, I could easily make the argument against descriptiveness – that these are beans you serve to go along with grilled items; thus the mark is not immediately descriptive of the goods. Good call, PTO, on permitting registration.
Two out of these three sound like the makings of a great weekend. Enjoy!
Thanks to MSNBC for the photo of the icky sushi poppers!
Edited to add this Oskar Blues brew name – which I had quite a bit of difficulty explaining to the kids:
It’s delicious, and I am a sucker for a company with such egregious puns in its website copy. And yes, I see that it’s dented and will be careful when I open it!
Extra credit: “Chivas,” according to the goat soap’s website, means “female goats.” Sounds like an admission against interest as far as descriptiveness, no? Though perhaps not quite far enough to achieve genericness and run into the azucar morena problem.
(I just realized that this exam format must be a subconscious tribute to my sister’s completion of one half of her legal education. Heaven help her!)
Meanwhile, happy Chanukah where appropriate; blogging may continue slopeside over the holiday break, but you never know, so I wish you a merry Christmas where appropriate as well, and a very happy New Year to all.
I often find myself having to explain to clients that the first person to invent something that creates a wholly new category doesn’t also get to protect the name of the invention. My favorite example is cookie dough ice cream – great idea, but the company that first created the taste sensation may not prohibit its competitors from calling their products by that name.
Moreover, under US trademark law, abbreviations for descriptive or generic terms are not entitled to trademark protection. For example, “TV” is no more protectable than “television,” and “BLT” no more protectable than “bacon, lettuce and tomato.” (Mmm . . . bacon . . . )
That’s apparently not the case in France. One of the finest culinary joys you can experience in France is in the candy department: caramel au beurre salé
, or in English, salted butter caramel. The caramel can be found all over France, not only in the form of candies, but also as an ice cream flavor or filling for a pastry (try the Aoki tarte featured here).
Self-styled “caramelier” and chocolatier Henri Le Roux claims to have created the delicious substance back in 1977. But he took the creation a step further, and sought and received trademark protection for the mark “CBS” to cover “Chocolats, glaces comestibles, crêpes, biscuiterie, gâteaux, sucreries, à base de caramel au beurre salé.” Let’s just say that that wouldn’t fly at all here in the US, and it’s a reminder that every country’s laws regarding trademark protection vary.
Nonetheless, bravo, Henri: Keep the caramel coming even though you’re overreaching on the trademark front!
H/t David Lebovitz
John Welch at the TTABlog (nice to have met you in Seattle, John!) posted today a discussion of the TTAB’s recent decision in In re Helen Trimarchi and Michael Merr, where the Board took up once again the doctrine of foreign equivalents.
The issue here was whether a prior registration for GO GIRL for clothing could bar the registration of ALLEZ FILLES!, also for clothing. Heaven forbid the PTO should rely on an actual English-French Larousse to find a definition, or even on a French speaker – no, the examiner refused registration under 2(d) based on a Babel Fish translation of ALLEZ FILLES as “go girls.” Well, technically, yes, but in actual French? Non. Allez does mean go, and filles does mean girls, but if you asked an actual French person (or a French major such as yours truly), you would be met with a Gallic shrug of contempt for a stupid American product name that does not translate into anything that makes sense in French. Now, “allez les filles,” is a real phrase in French – one that I’d use, for example, in a cheery sing-song voice when attempting to herd my girls into the car in the morning, a la “Let’s go, you lazy slugabeds!” It does not, however, mean “go girl,” or even “you go girl,” which are used more to acknowledge accomplishment, as in “You just scaled that climbing wall at REI in 20 seconds – you go girl!”
So with my actual competence in the French language, I’m mystified at Judge Drost’s dissenting pronouncements in this case of the significance the mark ALLEZ FILLES purportedly conveys to people familiar with the French language:
It should be assumed that people familiar with a foreign language will
translate the words in that language unless there is a specific reason
for not translating the term, such as the term is the name of another
noteworthy object or it has another recognized meaning in the language.
How about the fact that the term has NO recognized meaning in the language? Thankfully, the majority opinion got this correct:
In view of the lack of equivalency based on the nonsensical translation
from a grammatically incorrect French phrase and the idiomatic meaning
of registrant’s mark, we find that any similarity due to the literal
translation does not outweigh the stark differences in sound and
appearance and does not create an overall commercial impression that is
confusingly similar to GO GIRL. Thus, taking into consideration the
vast differences in sound, appearance, and overall commercial
impression, and the lack of equivalency in meaning, we find the marks
to be dissimilar.
Where an arguable foreign language translation of a mark differs dramatically in sound, appearance, and commercial impression from the prior registration, as ALLEZ FILLES does here, I’m happy to live and let live. I’m more comfortable reserving the doctrine of foreign equivalents for preventing applicants from registering generic terms in a foreign language – the old Weiss Noodle precedent, or from preventing applicants from registering a phonetic equivalent of a competitor’s mark in another language. And I can see an arguable dilution angle as well, say, if a company sought to register MICROSUAVE for software.
But what I think is most important here is that the PTO should rely less on soulless computer software for its translations and more on real live people who speak the languages sought to be translated. Case in point: Babel Fish translated the title of this post as “this n’ is not a pipe.”
And everyone knows, it’s not a pipe – it’s just an image of a pipe.
The horror, the horror: Pending trademark applications for OCTOMOM. Not only is it true, but someone beat Nadya Suleman to it and filed an application for OCTOMOM a month ago in classes 9, 28 and 41. So expect a fun media battle with lots of misstatements about trademark rights, no doubt.
The saddest thing? Suleman’s class 41 application covers “Entertainment in the nature of on-going television programs in the field of varity [sic].” You say varity, I say variety – it’s still appalling.
H/t and eternal thanks to Nancy Friedman of Fritinancy.
Meet Welch’s new AquaJuice.
Now I know – you’re trying to figure out what it is. Lemme guess – water and juice? Well, the Welch’s website calls AquaJuice a “great-tasting naturally lighter juice beverage for kids.” (Emphasis mine). The Motley Fool’s CAPS blog investigates a bit further and finds out the truth: the label reveals that the product is 50% juice, 50% water. Eureka! That’d be aqua + juice, wouldn’t it?
I guess not, if you’re the PTO. Who knew the prefix “aqua-” had lost its status as the foreign equivalent of water and become suggestive? Interestingly, Welch’s entered this statement in the record: “The term “AQUA” has no
meaning or significance in relation to the goods apart from that of a
trademark.” Really? And yet the PTO bought it. Oh well.
PTO geek post alert!
One of the PTO’s most
exasperating grounds for refusal of registration is that the mark
sought to be registered is primarily merely a surname. While for Smith
or Miller that may be fine, there are plenty of really obscure surnames
that the public really just doesn’t view as a surname. (See this response to an initial refusal to register PUGET ENERGY on the ground that Puget is primarily merely a surname – it worked, by the way).
How delighted I was then to read David Lebovitz’s wonderful blog this morning: First, I learned about a new American chocolatier, Askinosie Chocolate.
Then I started to wonder . . . I see the (R) registration notice, but
I’m wondering whether that’s a surname. Sounds like “Ashkenazi,” the
word for Jews of Eastern European origin . . . wonder if the PTO had an
issue with that as a surname . . . Let’s check!
Well, I checked, and the PTO reflexively issued a surname refusal, but then backed off with little fuss.
The applicant didn’t even have to argue the rareness of the name, which
suggests to me that the PTO had a pretty weak case; normally, even when
their database shows as few as 30-odd listings of a particular name
among millions, they’ll raise the refusal.
So bravo to all, and now it’s time to track down that chocolate!
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.”
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 work! Similarly, 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!