“Merely Descriptive” Trademarks

I am often asked by clients if they can register a trademark for what they think is a great domain name that they have been offered and which would undoubtedly drive search results to their website. Sometimes the client has already swallowed the hook and purchased the domain, perhaps for many thousands of dollars.

If it looks too good to be true, of course, it probably is. When an especially catchy domain name suddenly becomes available to you, while it is conceivable that it may be a great and rare opportunity, often the corresponding trademark has not been snapped up already because it would infringe on the rights of a prior trademark owner—sometimes a powerful one—and the seller, usually a domain broker, often in a foreign country, is banking on the buyer making an impulse purchase before considering that they may have paid a lot of money for an unusable piece of virtual property.

Other times, a domain name may be a combination of a couple of words that perfectly describe your business. I get emails all the time offering to sell me domains like “AtlantaLitigationAttorney.com” or “GeorgiaTrademarkAttorney.com.” Many of these domain names have been scooped up and packaged by domain brokers hoping to turn a quick profit.  Of course, while using a domain like this might help to drive web traffic to your business (since they do contain common search terms), it will do little to help you brand your business—who would want to be called “Internet Search Engine” when they could be called “Google,” “Bing,” or “Yahoo”? When developing a name for your business, product, or service, remember that the strongest brands are usually those that come to associate your products and services with a unique set of qualities, not just to describe or name those products. Consumers think of Bud Light, Nike, or Chanel, for example, as a complete identity, even a set of lifestyle choices, not just the name of a product or company.

So I can’t register a descriptive name as a trademark?

Well, sometimes you can. But unless you have already been using and have become widely and exclusively known by a descriptive mark for at least five years, even if there were nothing preventing you from registering such a name, you still won’t be able to claim exclusive rights nationwide to a “merely descriptive” name simply through local use and federal trademark registration. “California Juice Co,” and “Saratoga Juice Bar,” for example, have both registered successfully on the Supplemental Register, a secondary trademark list for “merely descriptive” marks and which provides some, though not all, of the protections of the Principal Register.

While the Supplemental Register is sometimes seen as a stepping stone to later registration on the Principal Register, there are drawbacks to putting all of your marketing eggs into a basket you don’t yet fully own.  For example, it can be difficult to prove infringement of a mark registered on the Supplemental Register. Why? Because infringement occurs when there is a likelihood that consumers will be confused as to the source of goods or services uniquely identified under a particular mark, and registration on the Supplemental Register is by its very nature an admission that the mark is not strong enough to uniquely identify (and it therefore merely describes) the products or services in question or their source… and “mere description” is not something you can protect.

Of course, there are plenty of well-known marks that began life on the Supplemental Register and then moved on: “Five Hour Energy Drink” and “Chapstick,” for example. Such marks may be re-registered in the Principal Register in five years if they have come to identify the product or service exclusively in the marketplace and have thus achieved what trademark law calls “secondary meaning”; i.e., a unique brand identification in addition to the self-evident, descriptive meaning.

How can I create a unique trademark and describe my product at the same time?

Many companies bridge the gap between completely unique marks (which take a lot of energy and marketing expenditure to associate the mark with the product or service) and “merely descriptive” marks by opting for something of a hybrid. “Tiger Energy Drink,” “Longhorn Consulting Co.,” “Falcon Performance Products,” and “Frozen Pints Craft Beer Ice Cream” are all registered marks which are highly descriptive but have arbitrary and therefore “unique” elements grafted onto the descriptive portion of the mark to create a mark that is much more easily registrable and yet still describes the product.

Working with an experienced trademark attorney at Briskin, Cross & Sanford can help you to identify the likelihood that your proposed brand can be successfully registered as a trademark and, since the Trademark Office may take a year or more ultimately to reject an application for a mark that is not registrable, can save you a great deal of time and money as you seek to launch a successful company, product, or marketing campaign.

The End of the “Pomegranate Blueberry Flavored Blend of 5 Juices”

Imagine this…

You are sitting poolside, enjoying a bottle of Minute Maid’s “Pomegranate Blueberry Flavored Blend of 5 Juices” when you happen to look at the ingredients.

It slowly dawns on you the the self-described “Pomegranate Blueberry Flavored Blend of 5 Juices” only in fact contains about 0.3% pomegranate juice and 0.2% blueberry juice.

You are outraged!

How can Minute Maid and its owner, Coca-Cola, get away with such misleading labels?

The good news is that they no longer can, thanks to POM Wonderful, LLC and a unanimous U.S. Supreme Court.

It begins (as it always does) with a lawsuit. POM Wonderful sued Coca-Cola, alleging that Coke’s label for its “Pomegranate Blueberry” juice deceives buyers into believing that the juice primarily contains both pomegranate and blueberry, thus violating Section 43(a) of the Lanham Act (which addresses situations where one company’s false advertising is causing harm to another competing business).

Coke’s response to the lawsuit was simple: its “Pomegranate Blueberry Flavored Blend of 5 Juices” label complied with the Food, Drug and Cosmetic Act (the “FDCA”) regulations, which trump the Lanham Act. Thus, Coke argued, if its label complies with the FDCA, it cannot be liable under the Lanham Act.

In a rare, and, dare we say, juicy unanimous decision, the U.S. Supreme Court sided with POM Wonderful (interestingly, it has been reported that Justice Kennedy stated during oral arguments that he was also misled by Minute Maid’s “Pomegranate Blueberry” label).

Now, a company harmed by a competitor’s false or misleading marketing of a food or beverage product can file a lawsuit under the Lanham Act, even if the marketing labels are regulated by the Food and Drug Administration and comply with the Food, Drug and Cosmetic Act.

The U.S. Supreme Court’s recent decision will have companies in the food and beverage industry scrambling to review, and possibly revise, their labels and marketing materials. Of course, this decision has farther reaching implications than just for Minute Maid and its competitors since the Supreme Court’s decision could conceivably apply to other businesses regulated by federal laws… like alcoholic beverages, transportation, even pharmaceuticals.

If you are concerned that your product label does not properly describe your product, or perhaps a competitor’s label falsely describes your competitor’s product and puts you and other honest businesses at a disadvantage, consult a trademark attorney at Briskin Cross and Sanford… before, not after, someone squeezes your juciebox for you.

Louboutin’s Immortal Sole Used to Attack Islam – Counterfeit Chic

Susan Scafidi, law professor and academic director of Fordham Law School’s Fashion law Institute (bio here) discusses Christian Louboutin’s efforts to seek an injunction from a court in Belgium preventing the use of his trademark red-soled pumps by a right-wing political faction in Belgium as a part of its anti-Muslim rhetoric.

Louboutin claims his brand is being tarnished.  Scafidi agrees: “This is a case of unauthorized use of a trademark in unrelated advertising, albeit for a political party and a point of view rather than a product.”  She also points out that Louboutin is not the only aggrieved party: the Belgian photograph shamelessly rips off the art of  Canadian feminist photographer Rosea Lake (original shown here), a fact about which Ms. Lake is none too pleased (see her own blogged response here).

Susan Scafidi’s full post (linked below) is well worth reading (as are all of her blog postings).

Louboutin’s Immortal Sole Used to Attack Islam – Counterfeit Chic.

Chocolate wars: the shape of things to come?

If claiming a trademark is all about protecting a brand, something that signifies the source or identity of your product in the marketplace, shouldn’t you be able to trademark a distinctive shape as much as you can trademark a distinctive name?

The answer is that you can.  In fact, you can trademark quite a variety of things that distinctively brand your product—a sound (the NBC chimes, for example); a color (the red soles on Christian Louboutin’s pumps so coveted by Sex in the City’s Carrie Bradshaw, not to mention Lady Gaga); a scent, a costume, a texture (more on these in future postings); and, not unsurprisingly, a shape.

Perhaps the most famous example of a distinctive shape is bottle designer Earl R. Dean’s 1915 design for what Coca Cola likes to call the “contour bottle,” known to some as the “hobble skirt” bottle (after the skirts of the early 1900s gathered below the knees and said to make wearers hobble).  Many Apple products certainly have a shape all their own—or is it?  Apple and Samsung have been slugging it out in court for years now over the shape of their overlapping products.  Apple claims that, in order not to infringe upon its iPad design, Samsung needs to make a tablet with a “cluttered appearance”: perhaps the issue is, as Thomas Baekdal cleverly put it in his 2011 baekdal.com article, “Apple never designed the iPad – they undesigned it.”

The latest round of the shape battles comes in Europe, where the United Kingdom’s Intellectual Property Office recently granted victory to Cadbury over Nestlé, ruling that Nestlé’s distinctive (ah, but now I am taking sides) four-fingered shape of the Kit Kat bar was actually, well, more functional than distinctive (give me a break!); and if a characteristic is predominantly functional, it cannot serve as a trademark (which is why Harley-Davidson eventually failed in its bid to trademark the sound of its motorcycle engines—“Harley-Davidson Quits Trying to Hog Sound,” the LA Times reported back in June, 2000).

Ironically, Nestlé had recently achieved exactly the opposite result in the European Union, where the board of appeal of the Community Trademark Office ruled in favor of Nestlé and dismissed Cadbury’s argument that the four-fingered shape did not distinguish Kit Kat from its rivals.  Funnily enough, the result is that Nestlé’s Kit Kat shape trademark is currently valid throughout the member states of the EU (which includes Britain) but invalid in Britain.  Of course, Nestlé can appeal the British decision and no doubt will (to the Easter Bunny perhaps?).

The Cadbury-Nestlé dispute is somewhat reminiscent of the Hershey case in the US, where in June, 2012, the Trademark Trial and Appeal Board finally permitted Hershey, over the objections of the Examining Attorney, to register its four-by-three, rectangular, recessed-panel-raised-border chocolate bar configuration, determining that it was finally more aesthetic than functional and had certainly acquired distinctiveness.  In the words of one reviewer of a brownie pan, the designer of which had shamelessly adopted the Hershey shape for its own product, the Hershey chocolate bar has become “a classic confectionary icon.”  (You can read the opinion of TTAB here).

Sweet!

$10 Well Spent

In 1986, the Port Authority of New York and New Jersey (“Port Authority”) sold the rights to use 3 little words to a Delaware non-profit organization.

The Port Authority has regretted that decision ever since.

Those “3 little words” are “World Trade Center,” and the Port Authority, along with thousands of other companies, now pays a pretty penny for the licensing rights to use “World Trade Center” in its merchandise and advertising. This right is especially important to the Port Authority’s current project: rebuilding the two (2) trade centers tragically destroyed 12 years ago today.

Should you be interested in joining the ranks and owning a license to “World Trade Center,” get ready to pay a bit more than $10.00. The World Trade Centers Association, the non-profit that owns the rights to “World Trade Center,” charges an initial $200,000.00 fee for the right to use these words, then charges an additional $10,000.00 fee every subsequent year for the continued use of the license.

And don’t think living outside of the United States means unlimited use of the words “World Trade Center” without these steep fees:  the World Trade Centers Association has trademarked “World Trade Center” in more than 100 countries.

So what is the lesson here? Never underestimate the value of $10.00 or the importance of a trademark.

Don’t be a magha: Scams and rip-offs that target business owners (part 1)

The word in Yoruba is “magha,” loosely translated into English as “fool.”  And, as we know, “a fool and his money are soon parted.”  There is little sympathy for maghas, who are seen as rich, greedy, and stupid by the young Nigerian scammers who work inside closed cyber cafés, harvesting email addresses and sending out those messages with which we are all so familiar:  one of your friends has been robbed while in London and needs some specific amount of money, down to the penny, to pay the hotel and taxi fare and get back to the United States.  Or perhaps you have won the Spanish lottery and all the writer needs is your bank information and a few personal details to transfer the winnings to you, minus his small fee.  Maybe the writer has read about your business on the internet, wants to purchase your services, appears to transfer a $10,000 deposit instead of the $1,000 requested, and requests that you process a prompt $9,000 refund as this is his life savings.  We all know how that ends up… we do, don’t we?

Of course, these scams don’t all originate from Nigeria by any means.  Nor are they new.  In fact, similar schemes have been around for literally hundreds of years—it is only the method of delivery that has really changed.  In the early 19th century, Eugène Vidocq used the term “Letters from Jerusalem” to describe letters an individual would receive from an unfortunate prisoner, the sole purported possessor of the secret of a certain buried treasure, who would share that treasure with you (yes, you!) if you would only assist him in retrieving it by sending him a few francs to bribe his way out of his current predicament.

My focus here, however, is on contemporary and highly credible-looking solicitations, most of them apparently legal, that are sent out by companies right here in the US but that nonetheless rely on the gullibility of “maghas” for their success.

Every couple of weeks, for example, a client calls me and says he or she has received an envelope marked, “An Important Notification from the “United States Trademark Registration Office,” or something like that.   It is usually an official looking envelope.  It may be stamped “time sensitive” or sport a postage meter frank bearing a bald eagle and a return address from the “United States Trademark Registration Office” (careful, it sounds a lot like the United States Patent and Trademark Office… except that it’s not).

Inside is something that looks very much like a federal government form.  It may be poorly designed and cheaply copied, and it may even say in capital letters that it is a solicitation.  Did you notice that?  I said, IT MAY EVEN SAY IT IS A SOLICITATION.  The disclaimer, of course, is hidden in plain sight among such statements as “WARNING: YOUR TRADEMARK WILL BE CANCELLED IF YOU DO NOT FILE THE DOCUMENTS ABOVE DURING THE SPECIFIED TIME PERIODS,” “FEE: $375,” and “NOW DUE.”  To lure you in, the notice may also cite your trademark serial number or registration number, filing date, address, and other fiendishly accurate information, all harvested from public records, of course, though you may not even have known such records existed.

What “service” is the company selling for $375?  Perhaps that your trademark will be registered on some (worthless) international list; that you will receive email reminders when renewals are due (which your attorney will do for free anyway); that your trademark will be recorded with U.S. Customs and Border Protection (which sounds great but is perfectly useless for most marks); or that the company will “monitor” your mark using its “proprietary search engine” to detect potentially infringing uses (you can set up a free Google alert in about two minutes to do the same thing).

So what should you do when you receive a notice like this?  NOTHING.  If you are using an attorney for your trademark work (which you certainly should be) the USPTO will communicate directly with your attorney and not with you anyway, so you can safely ignore any solicitation (or just forward it to your attorney to worry about).

Thankfully, the USPTO has started publishing some of these scams on its own website to educate the public.

What?  You don’t keep up with the USPTO website over coffee each morning?  Fortunately, the trademark attorneys at Briskin Cross and Sanford do.  We stay ahead of the curve–and hopefully ahead of the scammers–to keep your intellectual property safe and to provide value and peace of mind in all trademark and general business matters.

Do Trademark Lawyers Matter?

This is not an existential question, but the title of a new research study by Deborah Gerhardt and Jon McClanahan, soon to be published in the Stanford Technology Law Review, 2013.

It is no secret that non-lawyers can file federal trademark applications, just as individuals can incorporate companies and perform any number of legal tasks for themselves.  The question is, is it really smart for them to do so?  Lawyers are often asked, if the online, self-help sites file all the documents you need for a whole range of legal services, all at what seem like reasonable prices, what do you gain by hiring a lawyer to do these things for you?

Gerhardt and McClanahan provide empirical evidence that may help to make the decision simpler.  On average, they discovered, only 42% of trademark applications filed by pro se (i.e., “do-it-yourself”) applicants were ultimately successful in registering.  When they looked at marks that got at least as far as the publication stage of the application process, 62% of non-lawyer applications made it that far, while 82% of lawyer applications were published.

The study also showed a substantial difference between applications filed by inexperienced trademark attorneys (for example, a solo practitioner who files just a few trademarks a year) and those attorneys who make trademark and intellectual property work a substantial part of their practice.  Applications filed by experienced trademark attorneys, the study found, were more than 50% more likely to register successfully than those applications submitted by pro se applicants.

And even that is not the whole story.  Let’s not forget that not all pro se applicants are alike—in fact, this group includes all the large companies that file marks for themselves using in-house counsel rather than hiring a trademark lawyer from outside the firm.  For example, the top so-called pro se applicants include American Greetings, Twentieth Century Fox, Hasbro, Avon, American Express, Nestle, Hershey, Victoria’s Secret, XEROX, McDonalds, and others.  If you take these applicants out of the mix (since they are really not true do-it yourselfers), the average entrepreneur who files his or her own trademark has a far better chance of having his or her mark rejected than ever seeing it register.

Since US federal trademark applications, even those that pass through the system without a hitch, take approximately nine months to complete, the marketing and lost opportunity costs of an unsuccessful application can make the actual application fees look like a drop in the ocean.  The question then becomes not can you afford to have an attorney prosecute your trademark application… but can you afford not to?