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.


July Birchbox

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. 

The theme this months is the senses. First up, I’d say this one is sight and smell: 
Another Color Club nail lacquer. I actually like the color, and it works well on my Sicilian-bronzed fingers, but this stuff is pretty gloppy, so I’ll probably remove it before anyone gets to see my appalling manicure skills.
Next, taste, and this Larabar treat. I’m not going to bother with the umlauts.
But I guess “uber” isn’t a bad name for a fruit and nut bar. It’s certainly not descriptive.
Next, sound. These aren’t even branded, so there’s not much to say other than I love the bright colors and am going to hide these from the kids so they don’t nick them.
Next, we have the core makeup products:
Good name – “jouer” means “to play” in French.
Eyeko, for eyeliner, is another good name. There’s nothing wrong with including a descriptive word as part of the mark if you can transform it into a distinctive trademark. EYE + another descriptive word wouldn’t work, but EYE + KO = a brand that looks and sounds unusual and is thus protectable.
Finally, smell, and another perfume. Or should I say hello?
I’m a bit confused by this one. The text on the left reads “We started Harvey Prince in dedication to our mother, and we craft exceptional fragrances that empower women to feel young, happy, slim, and beautiful.” Their website gives little insight as to how the name became Harvey Prince – all it says is that two brothers founded the company as a tribute to their mother, but they still don’t say who Harvey Prince is or why they named the company Harvey Prince. In fact, a search of the PTO records reveals that the name does not identify a living individual at all.
I am not really comfortable with the idea of two men hawking perfume to make women feel slim. I’m just saying.  Also, one of their other scents is called “Ageless,” and even if you’re paying tribute to your mom, who in your eyes never ages, please keep the word “age” out of it. I’ll give Hello a try, though, and we’ll see if it passes the migraine test.

The skeptic in me …

 . . . first thought this ad in US Weekly was a fake, or for a fake product:

Apparently it’s real, as you can see from Kraft’s website. Somehow I’m just thinking it’s not the most distinctive trademark. Even with a registration, it’s going to be hard to prevent competitors from proclaiming “you can use our dressing on anything.” Sometimes you can get too clever with naming.

I’m still alive*

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).

First is this:

The littlest Levy pointed these out, and asked “how can they call them that?” Without a good explanation for this apparent coexistence with Fig Newtons, I decided to make one up (and THAT, my friends, is the secret of good parenting!): Paul Newman and his blue eyes can do whatever they want, even posthumously.
And the second is much more trademark-geek-oriented:
So I picked up these chestnuts during the holiday season, thinking “Hey, Galil – that must mean they’re Israeli chestnuts, right,” since Galil is the Hebrew word for Galilee, the northern part of Israel. Anyone who lived on a kibbutz in Israel would think that, right? Well, wrong. A close examination of the packaging showed that these chestnuts are from China, imported by a Syosset, NY company. So this naturally piqued my interest, since the packaging shows that GALIL is a registered trademark.
A closer examination of the PTO’s record for the GALIL trademark registration confused me even further: You see, the PTO had apparently (the file history is incomplete, but you can tell) issued an office action asking, as they often do, whether the term sought to be registered has any geographical significance, or any meaning in a foreign language. Here’s the lawyer’s response”

I call bullshit. This lawyer should have known better and probably did. This is both a prime example of chutzpah and a prime example of the PTO being too damn lazy to do the proper research themselves. This response was filed in 2000, and the internet was available. Hell, geographic dictionaries were available. If these products didn’t come from the Galil (and they don’t now), this application should have been refused under section 2(e)(3) as geographically misdescriptive. I don’t see why this is anything other than fraud on behalf of the trademark applicant, and gross negligence on the part of the PTO. This kind of registration clogs the register, and can unfairly empower unscrupulous and overzealous owners of such registrations to bully other users.
But what I really don’t understand? How was Empire Kosher Poultry, two years later, able to secure registration for GALIL, with a statement saying that GALIL is Hebrew for “Galilee,” WHEN ITS PRODUCTS DO NOT COME FROM THE GALILEE? The Galilee is full of farms – how could any food product bearing the name “Galilee” not run into problems under the TTAB’s stated standards:
(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.

I, a member of the relevant public, an educated consumer and world traveler, assumed that Galil chestnuts came from Israel. This to me is a living example of PTO failure. Particularly since I recently received a refusal to register on geographic misdescriptiveness grounds that had me metaphorically kicking and screaming in my response to the PTO (I won, so there.) But sometimes I think the PTO pulls this kind of crap just to keep my mind active. Apparently it’s working!
UPDATE: Pam Chestek digs deeper and finds out exactly how Fig Newmans got their name!
*No reference to any ill health intended; I just like how the phrase makes me think of this excellent rock anthem.

Lawyers in love

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)


So when I showed him this trademark layout on our toothpaste this morning (which appears on the toothbrush package below as well), 

our trademark-addled minds simultaneously and seamlessly came to the same conclusion: the “with an extra” language had to have been added at the behest of a trademark lawyer. Is this statutory fair use? Can we realistically believe that the consumer sees that tiny print? Are they trying to elude an infringement challenge? Would this be a good exam question for law students? These are the types of questions that keep the Levy lawyers awake at night!

No, it’s not a very glamorous existence, and yes, we do occasionally talk about other things, though our daughters would disagree. I will grant you that other two-lawyer couples with two daughters and a black and white fuzzy dog may be more prestigious and accomplished – 

– but it’s nice to know I married someone who doesn’t find it weird when I read the toothpaste and in fact will grab it out of my hands to read it himself! You gotta keep the relationship lively!


(1) Jackson Browne’s song, by the way, is really not about lawyers at all, but it’s a great song.

No fatties, please!

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.”

So I was shocked to find this ad in March’s InStyle:

What surprises me most about this name is that the term “fat” isn’t even being used here to suggest enhanced hair volume, which is the only possible reason I could see using “fat” in connection with hair. No, Fat Foam is hair color. So while the trademark lawyer in me says “hey, at least the mark isn’t descriptive,” the weight-conscious woman in me says “Do I want to buy a product that will make me a fat ANYTHING girl”?  

The sacrifices I make

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!

Looks like dinner time around here

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.

h/t Dooce.

Luscious, but lame

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

Ceci n’est pas une pipe

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.


Signs of the end of trademark civilization, Vol. 1

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

And here’s one where they might’ve gotten it wrong

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.

Sometimes the PTO does get it right!

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!

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!