Doing it right

(Warning: A trademark prosecution geek post.)

Seven months and one week. That’s about my record, from filing to issuance of the registration certificate, for a use-based application:

It doesn’t always go this smoothly or quickly – sometimes you file with an ID that you actually want the PTO to help you fine-tune; other times you’re blindsided by a refusal ground that comes from left field. And of course, there are very important reasons for filing based on intent to use, which can significantly increase the filing-to-registration time span. But it’s reassuring to know that the system can work efficiently and (relatively) quickly when you get it all right up front.

You made it through this dry technical stuff? Have a doggy photo!

 

I have questions

First, did you have to? As I always say, just because you can, doesn’t mean you should.

Second, the SAXX mark is registered. Did Saks Fifth Avenue not care about it enough to oppose or sue? Their famous stylized mark is registered for “all articles of wearing apparel for men and boys,” FYI.

The PTO cared, for what it’s worth – and Saxx masterfully overcame the initial 2(d) refusal in a tour-de-force office action response that pulls no punches about the SAXX mark’s connotations, and indeed admits that the intention of the mark is to call male genitalia to mind. A ballsy approach, one might say – and a successful one. Kudos!

Next, while I have some curiosity about what a “ballpark pouch” might be, I’m not curious enough to Google it and suffer the consequences of the ads that might subsequently be served to me.

And finally, I guess “modern fit” is always preferable to, say, a medieval fit. Especially when it comes to underwear.

(Photo credit to my dear friend Adam, who is always on the lookout for me.)

Camera roll catch-up: Jess gets her dander up

When I see that a mark like THRŌ is registered:

for goods that include, you know, throws – I get all kinds of irritated. The owner has to disclaim the term “throw”  apart from the mark as shown – so what do they get? The ability to use the word with the diacritical mark? Against whom could you possibly enforce the registration? WHY BOTHER SPENDING THE MONEY? FFS, the mark is THRŌ for a throw, it’s right there on the hangtag?

Herein my rant for the day.

Camera roll catch-up: More brands of my youth

That’s right, PSSSST! dry spray-on shampoo. A revelation 40+ years or so ago and a product that probably started returning to the market about five years ago (I’m guessing – I suddenly started getting it in my Birchbox shipments). Yes, I can remember what it smelled like, but no, I cannot remember any commercials or catchy jingles. And what a great onomatopoeic trademark!

Camera roll catch-up; slogan edition

I’m pretty much worn out with all the CRAVE marks and variants out there, and their underlying suggestion that we’re all desperately trying to maintain healthful diets but are nonetheless captive to insatiable cravings that possess us and impel us to reach for something naughty.

But for dog’s sake, if you’re going to go the crave route, could you at least get the informal gerund correct?

CRAVE’N? Not “cravin'”? I despair.

Camera roll catch-up

Yes, I’ve been remiss. And each time I scroll through my iPhone to find a photo, I come across photos I’ve taken expressly for the purpose of blogging them. So here comes a new feature to showcase my photographic impulses.

The name is – [chef’s kiss] – just wonderful. The mark is even registered. However, a bit of a wrinkle there: the registration covers this stylization:

Trademark image

The owner filed its section 8 declaration using a photo of the product as it appears in my photo above. Is this the same commercial appearance? But the PTO accepted it. But this raises my eternal question of why don’t people simply file for the word mark rather than a stylization that they might change five years down the road?

 

 

Change of venue

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!

 

 

 

 

Law school exam question

I sent this photo straight to Professor Levy when I saw it. I think it’d make a great exam question for next year’s class at CU Law.

Gary Poppins

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 …

 

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.

A shitty name

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:

cacafe

Apparently, others are on to the caca too.

 

 

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!