My first reaction was “OH COME ON!” But does Vuitton suggest I should temper my indignation? I’ll leave it to the academics to discuss.
Apparently I’ve been blogging for over nine years now. So happy bloggiversary to me. Perhaps in celebration of those nine years, I’ve just made a big move from solo practice back to big firm practice. I joined the firm of Sherman & Howard L.L.C. on July 5 as Counsel. I’m delighted with this change of pace and lifestyle, and am very excited about the change. I’m also excited to discover downtown Denver, however belatedly after living here for nine years, to commute by train, and to relearn what dressing for work is all about.
BUT WHAT TRADEMARK ODDITIES HAVE I NEGLECTED TO SHARE SINCE MY LAST POST? I’m glad you asked. First of all, the INTA Annual Meeting in Barcelona was a thrill for many reasons, not the least of which was being introduced to fun brand Catalunyan names such as this:
And if Globber wasn’t enough, there’s this:
And one of the best window displays I’ve ever seen:
Yeah, some people think sewing machines. Others think about genericism, regardless of the language:
Finally, perhaps a bit too snarky for a bar name?
All in all, a grand time was had by all, it seemed, not to mention all the damn ham! Would return, 10/10! Meanwhile, until then, I’m enjoying my new digs and learning how to talk to people again – not just puppies!
Who would be the plaintiff here? P.L. Travers’s estate? Disney? And isn’t the mark somewhat tortured anyway? “Yeah, Poppins because it’s popCORN, get it?” Unless they were going for Poppuns – which I doubt …
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:
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.
You would think that in naming a product, maybe it would be wise to avoid a euphemism for excrement, right? Seems like that’s a basic proposition that everyone can agree on, right? Well, apparently you’d be wrong. I don’t know why these folks chose CAcafe as their trademark, but I can promise you that capitalizing the first two letters doesn’t stop me from seeing the caca here:
Apparently, others are on to the caca too.
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:
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:
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!
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:
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.)
*2(f), Supplemental, and with disclaimers of the right to use “clogs” apart from the mark as shown.
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:
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.
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:
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.
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!
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!
*Bonus: Merriam-Webster online advises that cultivar rhymes with abbatoir, which opens up a world of possibilities.
That is, why bother even slapping the “tm” on it?
FloorLiner … why, because it lines the floor? And another hint, if you’re using it in text as the object of the verb “provides,” your use of “absolute interior protection” is also descriptive and thus not appropriately asserted as a trademark.
This has been another public service message from Your Trademark Curmudgeon.
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.
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:
Yes, I’ve been a slacker. Many apologies. Mid-April to mid-May has been a trying time this year, but I’m trying (see what I did there?) to overcome it.
Sometimes graphic designers can muck up the look of a mark. Take this one, for example:
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.
Something is wrong with my camera, and this month’s haul wasn’t so exciting that I felt like re-taking all of the photos. But I think that two items bear mentioning and re-shooting:
Not that thrilling a haul. Two wins targeted at my demographic, the rest silly stuff.