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Posts Tagged ‘descriptiveness’

There’s an old comedy bit where the comic offers to teach you “everything you’re going to remember from college, ten years after graduation.”  The crash course is offered at a hefty price, but much less than four years of actual college tuition.  There’s a little of that in what we’re going to discuss here today, except for the hefty price of course.

Once you absorb all the knowledge in this article, people will come from miles around to meet you and marvel at your Giant Trademark Brain. And the Law of Averages says that some percentage of them will buy your product, too.

In more than 20 years of advising business owners in the area of trademark law, I’ve noticed many little tidbits of knowledge that I find myself passing along to client after client.  These are things that most business owners and marketing people either don’t know at all or have enduring misunderstandings about. 

Each of these nuggets of information, standing by itself, is not very impressive – but knowing all of them will really increase your comprehension of the trademark process.  For that reason, I have decided to present them all in one place.  So gird your loins and get ready for a crash course in trademark knowledge.

Thing 1:  Trademark rights are created by use of the mark on your goods or services.  Registration of your mark is an important way to increase and extend those rights.

Thing 2:  There is no functional difference between “trademarks” and “service marks” – trademarks identify goods (for example, BUDWEISER® for beer) and service marks identify… that’s right, services (e.g., HOLIDAY INN® for hotel services.)  So for the rest of this post, let’s simplify things by calling them all trademarks, or just marks.

Thing 3:  You don’t register a trademark for “everything,” you register it for specifically identified goods and/or services that are spelled out in your application.  The more types of “things” you want to cover, the more you’ll pay in filing fees for the application.

Thing 4:  Give a lot of thought to what goods/services you want to cover before filing your trademark application, because once the application is filed you cannot broaden its coverage (you can only narrow it, by taking things out.)

Thing 5:  New trademark applications literally are filed every minute at the U.S. Patent and Trademark Office.  Once you decide on a mark and goods/services, file your application as soon as possible to minimize the chances that someone else will “beat you to the punch.”

Thing 6:  No, you cannot file a trademark application or keep alive a registration for a mark you have no current intention of using, just to “keep people away from it.”

Thing 7:  The designations TM and SM that you see everywhere really have no official significance.  They are used unofficially, to indicate that the user regards the name as proprietary.

Thing 8:  You may not use the ® symbol with your mark until your mark is actually registered (not just filed.)  After the registration issues, you should always use it at least once on every package, advertisement, marketing piece, etc.

Thing 9:  You should always search a new product name (the earlier the better) before committing to it or using it.  Not doing so is a dare to the Trademark Infringement Gods.

Thing 10:  Because trademark rights arise from use (see Thing 1 above), trademark searching is an art and not a science.  When searching for potential users of conflicting marks in the vast universe of information out there, you have to choose some logical place to stop.  Always remember that, for these reasons, no trademark search is perfect – just the best search reasonably feasible at the time it’s conducted.

Thing 11:  Minor differences in spelling and inventive spellings won’t make an otherwise infringing mark “safe” to use or register.

Thing 12:  In a similar vein, you probably attach a much greater significance to small product differences within your industry than the general public (or a judge) will.  This means that when comparing products to determine whether you infringe someone else’s mark, the judge is not going to be swayed by the argument that “no one could be confused because the products are totally different – theirs is a 6-pin device and ours is an 8-pin device!”

Thing 13:  When choosing a new name, remember that the more closely it describes the product (or some feature or function of it), the more likely you are to have problems with availability and/or protection.  I could give you a half hour on why, but just trust me on this.  You’re much better off picking a name that is not descriptive.

Thing 14:  Word mark registrations are inherently more flexible than logo/design marks, because use of a registered word mark as a part of your logo is covered by the registration.  The reverse is not true.

Thing 15:  Because of Thing 14, when first starting down the registration path (and anytime cost/budget is a large factor), it’s usually advisable to register the word form of your mark first and register the logo version when finances allow.

Thing 16:  It can take many months for an application to mature into a trademark registration, but there’s no reason to hold off on using the mark in the meantime.  Quite the opposite, in fact – usually you’re better off starting use as soon as possible.

Thing 17:  The time to think about whether your new name will actually be available for you to use is as soon as possible.  Yesterday, if possible.  A month ago, better yet.  Leaving that issue until the last minute invites bad decision-making and disaster.

Thing 18:  Most trademark infringement disputes are resolved through negotiation before any suit is filed, usually with the “junior user” being provided some time period to shift over to a new name.  But don’t take this as an excuse to go forward with a name you know is questionable, because the first sentence often doesn’t apply where the infringement appears intentional.  In those cases, the aggrieved party may go straight to court.

Thing 19:  Using or registering your new name as a domain name does not create trademark rights, unless you use that domain name in a trademark-like way on your website. 

Thing 20:  Similarly, merely registering your corporate name with your state’s secretary of state does not create any trademark rights or constitute any type of government approval for you to use the name as a trademark.

Thing 21:  In the trademark world, as elsewhere, what goes around comes around.  Don’t try to nestle up to a competitor by using a similar mark.  You wouldn’t want anyone doing that to you.  Don’t make me be your mom on this – Golden Rule, and all that.

This is not, of course, intended as a complete list.  Hopefully it is helpful, though.  If I get good response on this article, I’ll think up some more bits of important knowledge.  And then, dear reader, together we can venture down the uncertain path of the sequel.

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All businesses have trademark issues that should be buttoned-down.  Family-owned businesses, though, tend to have more trademark issues – and potentially thornier ones – than many other types. 

Okay, MAYBE this family business can get by without addressing trademark issues, but YOURS CAN'T!

Long-standing and thriving family businesses can implode for many reasons when the patriarch or matriarch who started the business retires or dies.  Sometimes family members in succeeding generations lack the business skill or drive of the original generation.  Sometimes they disagree as to the best way to run or expand the business.  There are plenty of reasons for such businesses to run aground.

Trademark Issues are Different in Family Businesses

Often family members from one or more later generations have worked hard to develop and expand the business, and feel a sense of ownership.  Each member of each generation tends to develop the expectation that someday he or she will inherit ownership of at least some part of the business.  For these reasons, family businesses that fail to deal with succession planning in advance are even more likely to fail when succeeding generations take over. 

And what asset of a family business is more valuable than the trademark?  The trademark literally symbolizes all of the good will that each family member has worked to build for the business.  And making matters more sensitive, the primary trademark for many family businesses is the family name – something that all family members naturally feel entitled to use. 

Complicating things even further, it’s not unusual for different family members – brothers, sisters, uncles, aunts, cousins, and so on – to take over the independent management (even ownership) of different stores.  This is quite common in family restaurant businesses, for instance.

How Problems Arise

While the original generation is still in place, such arrangements usually can hang together.  But when that original generation leaves the business the succeeding generations can end up pulling the business to pieces, and the disputes often boil down to who owns and controls the right to use of the trademark.

I am aware of one family restaurant business where the business was started by a group of five brothers.  Eventually, the brothers opened up their own separate restaurants using the same name.  Later, some of their children opened up restaurants of their own, using variations on the name.  After many years had passed, a potential dispute arose over who controlled rights in the name.  Obviously, such a twisted skein of interlocking rights would be a nightmare to unravel.

I should point out also that trademark disputes in a family business not only can hobble or completely cripple the business, they also can make the business unsalable.  No purchaser wants to buy a business where the right to use and control the business’s primary brand name is in question.

Another problem that can arise where multiple family members claim rights in a family business trademark:  it is unclear who, if anyone, can enforce the trademark against an ouside infringer.  Where more than one party claims rights in the same trademark, the ability for one of those parties to enforce the mark is greatly compromised.

Solutions for Family Businesses

For all of these reasons, it should be obvious that trademark ownership is one of the succession planning details a family business absolutely must attend to, if family members want to ensure long-term survival of the business across generations.  How is this accomplished?

Ÿ  To begin with, the business’s trademark should be registered if possible.  I say “if possible” because family names are regarded by the law as a form of descriptive mark, and as a result they are inherently difficult to register as trademarks.

Ÿ  It is preferable that, if at all possible, the entity that owns the trademark registration should be a corporation or LLC – a formal legal entity in which the rights can be vested.  The governing documents for that entity should specify very carefully how ownership and control of the trademark will be handled when one shareholder or member dies or retires. 

Ÿ  In my opinion partnerships are less desirable for the purpose of trademark ownership (especially common law partnerships with no partnership agreement in place) because often partners hold an equal share in all partnership assets – that doesn’t solve the “who controls the name” problem, does it?  Whatever the entity, however, trademark ownership and succession should be specifically set forth, in writing and in a form that is binding upon all involved.

Ÿ  Further, starting as early as possible in the life of the family business, great care should be taken that all uses of the trademark by any “branch” locations or businesses are controlled through a written trademark license. 

Ÿ  These measures should be handled (or at least overseen) by an attorney skilled in the practice of trademark law.  Each member of the family business should have separate counsel looking after his or her interests, to avoid any potential conflicts of interest.

Family businesses face enough challenges in generational succession, there is no reason to create more problems by ignoring important issues like trademark ownership.  These precautions won’t guarantee that no issues will arise when a family business changes hands, but they certainly will help to minimize that risk.

PHOTO COURTESY OF FLICKR USER HANSOL, UNDER THIS CREATIVE COMMONS LICENSE.

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Choosing a new brand name is not as simple as “Do I like it? Okay, let’s go with it!”  Whether it is to be your flagship brand or just a new product or service in your line, there are many factors to consider in choosing a new brand name.  In this post and the others in this series, I’ll walk you through the most important of those steps.

Is it important that you stand out from the crowd?

In earlier posts in this series, I discussed the importance of getting good legal advice and of understanding the function of trademarks.   The next step follows logically enough (I hope) on those building blocks:

Step 3:  Think About How Important Exclusivity and Protectability Are To Your Marketing Plans

All trademarks are not created equal.  Some are easily protectable, and thus offer their owners a high level of exclusivity.  Others can be difficult or impossible to protect, offering virtually no exclusivity. 

The more distinctive your mark is – that is, the more effectively it performs the source-identifying function of a trademark – the more protectable it is likely to be.  For this reason, you should think carefully about how important exclusivity and protectability are to your plans for marketing your new product or service.

Certain kinds of trademarks are inherently more distinctive than others.  Marks that simply describe your goods or services are notoriously difficult to register and/or protect, and can even be difficult to clear with a strong legal opinion.  On the other hand, such descriptive marks may have a practical marketing value for your specific product that “trumps” the need for exclusive use of the name.  Again, an experienced trademark practitioner can help you sort through these issues and select a mark that fits your needs.

So ask yourself at the outset:  Is it important to my planned marketing position that I have a highly protectable brand name, one around which I can draw a large “ring of protection”?  Or, is it more important that my new name be descriptive of the product, even if it means competitors can closely duplicate my name?  The answers to these questions will be important (and not just from a trademark perspective) as you move forward towards your product launch.

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My last article discussed cybersquatting, and the remedies available in U.S. federal court under the Anticybersquatting Consumer Protection Act, or ACPA.  Here, we will consider what you must be able to demonstrate in order to win a case brought under the ACPA. 

Be ready to make these points when you get to court. And don't wear that blouse.

In the previous article I pointed out that the ACPA defines cybersquatting (which the statute, a part of the Lanham Act, refers to as “cyberpiracy”) as “registering, trafficking in, or using” a domain name that is identical or confusingly similar to another party’s distinctive trademark, “with a bad faith intent to profit from that mark.”  If the complaining party’s trademark is deemed a “famous” mark under the law, cybersquatting also occurs where the domain name would “dilute” the famous mark by tarnishing or blurring the public’s perception it. 

So if you believe your trademark is being cybersquatted, this definition sets up several hurdles for you to clear in order to show an ACPA violation.  Let’s think through them, in order of importance.

Bad Faith Intent

 Most importantly, you must be able show that the defendant acted with “a bad faith intent to profit” from your mark.  But how do you demonstrate that the defendant had such a bad faith intent?  As you might guess, cybersquatters rarely cooperate by admitting that fact.  

The ACPA, anticipating this, provides a number of circumstances that will be taken as evidence of a bad faith intent: 

Ÿ  Where the domain has not been used for a bona fide offering of goods or services, and the defendant offers to sell it to the trademark owner for a profit.  (Many cybersquatters try to avoid this by setting up a site under the domain that features some relatively generic content or links.) 

Ÿ  Where the defendant provided false contact information when registering the domain, or thereafter has failed to maintain correct contact information with the registrar. 

Ÿ  Where the defendant has registered a number of domain names that are identical or confusingly similar to the marks of other parties.  Or, 

Ÿ  Where the defendant intended to divert consumers from the trademark owner’s website to a site that harms the good will represented by the mark (whether for commercial gain, or in order to tarnish or disparage the mark.) 

This demonstration that the defendant operated under a bad faith intent to profit from your trademark is critical.  You won’t win an ACPA case unless you can make that showing.

 Distinctive Trademark

 The next important showing you must make as an ACPA plaintiff (admittedly, some might say it is most important) is that your trademark is distinctive.  The ACPA says that your mark must be “distinctive at the time of registration of the [offending] domain name.”  It specifically includes personal names, provided they are distinctive of your goods. 

Distinctiveness, in trademark terms, means that the mark is capable of identifying your goods or services, and enables consumers to distinguish them from those of your competitors.  If your mark is highly descriptive of your products, or if it is a surname, or if it is used by others in your field, then it probably will not pass the distinctiveness test. 

Bear in mind that your mark need not necessarily be registered to be protected under the ACPA.  Unregistered marks will be protected, as long as they are distinctive.

In addition to being an important threshold requirement in and of itself, the distinctiveness of your mark also is a factor in the “bad faith intent” determination.  The ACPA also provides some factors, all of which bear upon the distinctiveness of the plaintiff’s mark, that tend to show an absence of bad faith intent: 

Ÿ  Where the defendant has trademark rights of her own in the mark; and 

Ÿ  Where the trademark is the personal name of the defendant, or a name commonly used to identify him. 

(The ACPA also makes special provisions to prevent the dilution of so-called “famous” trademarks by cybersquatters.  For the sake of brevity here, I will leave consideration of that aspect for a later article on the topic of trademark dilution.) 

Registering, Trafficking In, or Using

 It should be a fairly straightforward matter to demonstrate that the defendant has registered, trafficked in, or used the domain name in question.  The important thing to remember here is that the bad faith intent mentioned above needn’t have been present at the time the defendant registered the domain name.  It can arise later, at any point when he is using the domain in connection with a website, or when she is “trafficking in” (i.e., offering to sell) the domain. 

So even if you originally registered the domain in good faith, you can become a cybersquatter if your later use or your attempt to sell the domain crosses the boundary into bad faith intent to profit.  The same is true if your use of the domain later crosses that boundary. 

The ACPA also carefully defines “trafficking in” as including (without limitation) transactions such as “sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer for consideration or receipt in exchange for consideration.” 

As discussed in the previous article, the ACPA provides a wide range of remedies.  Unless you can satisfy these three requirements, however – bad faith intent, distinctiveness of your mark, and registering/trafficking/using – your defendant will not satisfy the ACPA definition of a cybersquatter, and your law suit will fail.  The proofs necessary to elicit actual or statutory damages are a separate aspect of the suit, not considered here but good fodder for another article if anyone expresses interest.

My next article will cover a popular alternative to the ACPA approach: proceeding through arbitration under what are called the Uniform Domain-Name Dispute-Resolution Policy, commonly referred to as the “UDRP” approach.  Stay tuned!

PHOTO COURTESY OF FLICKR USER LANUIOP, UNDER THIS CREATIVE COMMONS LICENSE.

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Gaze into this man's dazzling smile, and repeat after me:  "His mark is registrable... His mark is registrable..."

Gaze into this man's dazzling smile, and repeat after me: "His mark is registrable... His mark is registrable..."

In addition to discussing the trademark and copyright registration process, I intend to examine in this blog some specific cases that are unusual or remarkable.  Today, I take up that second category.

Today’s entry deals with anomalous exceptions to the requirement that marks be distinctive (and, specifically, not descriptive) of the applicant’s goods in order to be registrable with the U.S. Patent and Trademark Office.  As I discussed in my previous entry on the law and theory of this topic, Examining Attorneys at the USPTO have long been gung-ho about refusing registration on the basis of the non-descriptiveness requirement.

With all of this law and machinery focused upon preventing the registration of descriptive terms, one might be forgiven for assuming that no merely descriptive terms ever get registered.  Not so, however – there are noteworthy cases of registrations for marks so purely and wholly descriptive that one wonders whether the application was examined by anyone, in any manner.  For some reason, there appear to be an unusual number of these registrations in the oral-care field.

Consider, for example, the case of the mark TOOTH WHITE®, which appears on the Principal Register as U.S. Registration No. 1,735,592.  TOOTH WHITE is registered for… wait for it… “tooth whitener in the form of toothpaste and tooth powder.”  The mark registered in 1992 without any apparent challenge on the descriptiveness issue.  This despite the fact that is difficult to imagine any meaning for “tooth white” other than to describe the effect of a tooth whitener product.  It perhaps stands to reason that when the proposed mark appears essentially verbatim in the generic description of the goods, there may be a descriptiveness issue.

In addition, the TOOTH WHITE registrant was not asked to provide any evidence of distinctiveness under Section 2(f).  Indeed, it would have been virtually impossible for the applicant to demonstrate the kind of long-term, exclusive use required by Section 2(f), since the application was filed under the Lanham Act’s intent-to-use provisions and thus the applicant did not even begin use until after the filing.

Next let us turn our attention to the mark KEEPS WHITE TEETH WHITE®, which is lodged on the Principal Register as U.S. Registration No. 2,759,140.  The mark registered in 1999, again without any descriptiveness challenge or showing of acquired distinctiveness.

The goods description for KEEPS WHITE TEETH WHITE includes “dental gels for the prevention and treatment of tooth stains.”  And what is it that such gels do, one may ask, if not “keep white teeth white”?  At least in this case the mark did not appear verbatim in the goods description.

As was the case with TOOTH WHITE, the KEEPS WHITE TEETH WHITE application was filed under intent-to-use, so no distinctiveness could have been acquired at the time the application was examined.  And, lest you wonder, the TOOTH WHITE and KEEPS WHITE TEETH WHITE applications were handled by two different Examining Attorneys.

Finally, I offer the former (now cancelled) registration of DENTIBLANC for “dentifrices.”  This mark registered in 2001 as U.S. Registration No. 2,442,119.  The translation of the mark entered by the applicant carefully points out that “[t]he term ‘DENTIBLANC’ is from the roots ‘DENTI’ which is suggestive of ‘teeth’ and ‘BLANC’ which is ‘white’ in French.” 

Need I say it?  No descriptiveness challenge.  No proof of secondary meaning.  Yet another USPTO Examining Attorney.  The registration was cancelled in 2008, when the registrant failed to file proof of use.

It is hard to imagine marks any more clearly descriptive than TOOTH WHITE, KEEPS WHITE TEETH WHITE, and DENTIBLANC.  Yet each application went through the USPTO “like grapes through a goose,” as the old trademark attorney said.  Each of the marks registered without comment from the USPTO on the issue of descriptiveness.

I offer these cases as true anomalies, with bemused affection toward the United States Patent and Trademark Office.  I believe that the USPTO does a terrific job in the vast majority of cases.  Unfortunately, any large organization can occasionally find that an employee has been asleep at the switch, and the USPTO is no different in that regard.

Cases like these do, however, increase the sting when one is faced with what seems to be an unnecessarily enthusiastic application of Section 2(e)(1) to refuse an application on the basis of descriptiveness.  They also make the Examining Attorney’s recitation of the mantra, “each case must be decided on its own merits, and evidence of third-party registrations is not persuasive” seem especially galling.

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One of the goals for this blog is to encourage discussion of the substantive process of registering trademarks and copyrights.  This entry focuses on the refusal of trademark registration for terms deemed “merely descriptive.”

It is a fundamental concept of trademark law that, as a general rule, trademark protection will be denied to terms that are “merely descriptive” of the goods or services to which they are applied.  Lanham Act Section 2(e)(1) codifies and applies this long-held principle to the federal trademark registration process. 

The idea behind this refusal to register descriptive terms is fairly simple: in order to be registrable, a mark must be distinctive of the goods (that is, in the minds of consumers it must identify a single source for those goods.)  Descriptive terms by their very nature apply to all goods of a particular type, and therefore do not identify any single source.  Moreover, public policy dictates that all competitors should be free to make use descriptive terms to describe their goods.  Giving individual parties the exclusive right to use descriptive terms would “impoverish the lexicon of commerce” and put competitors at an unfair disadvantage.

"Try my RED Brand Apples - only available from me!"

"Try my RED Brand Apples - only available from me!"

It is possible to register a formerly descriptive term, provided the would-be registrant demonstrates “secondary meaning” or “acquired distinctiveness” in the term.  This amounts to a showing that the applicant has used the term on a basis so long-term, exclusive, and widespread in scope that in consumers’ minds it no longer merely describes the goods in question, but instead functions as a trademark by identifying and distinguishing the applicant’s goods from those of others.  Again, Section 2(f) of the Lanham Act codifies and applies these principles to the federal trademark registration process.

The ease or difficulty of demonstrating distinctiveness under Section 2(f) depends upon how descriptive the term was at the outset.  Simply put, the more descriptive the term was to begin with, the more evidence of distinctiveness will be required before a registration will be granted.  From this it can be reasoned that at the furthest reaches of the descriptiveness spectrum – presumably, near the point where “descriptive” terms begin to bleed into the category of “generic” terms – there may be descriptive terms for which it would be impossible to demonstrate acquired distinctiveness.

The USPTO is set up as the gatekeeper for federal trademark registrations, and thus it is the enforcer of these principles.  The USPTO is charged with rejecting applications in which the mark is merely descriptive. 

My experience across over twenty-two years of dealing with trademark applications has been that USPTO Examining Attorneys have always been enthusiastic about rejecting applications where they perceive the marks to be merely descriptive. 

In recent years, however, this “Section 2(e)(1)” enthusiasm has grown to near fever-pitch.  Lately it seems (to this reporter at least) that if any possible interpretation of an applied-for mark can be construed as having even a vaguely descriptive bent, then a descriptiveness rejection is almost certain to follow. 

Examining Attorneys often argue forcefully that if there is any significance of the mark (not merely its primary significance) that can be viewed as descriptive, then the mark cannot be registered.  Sometimes a reasoned response crafted by a skilled advocate can persuade the Examining Attorney to withdraw the refusal.  Sometimes (again, it seems with increasing frequency lately) the Examining Attorney refuses to be persuaded and issues a final refusal, in effect daring the applicant to appeal the matter to the Trademark Trial and Appeal Board.

As we will see in my next entry, however, this process is not always applied on an entirely consistent basis.

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