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The Trademark That’s Too Good to be a Trademark

Originally posted 2005-12-26 12:46:46. Republished by Blog Post Promoter

That’s what a generic mark is. The TTAB Blog reports that the TTAB has ruled that Lawyers.com, the consumer interface for the Martindale-Hubbell law directory, cannot be registered as a trademark for “providing an online interactive database featuring information exchange in the fields of law, legal news and legal services…”

John Welch writes, “It took the Board 29 pages to explain this seemingly inevitable result …” — inevitable to the commonsensical among us, yes, but maybe not to the narcisstic world of brand management and rent-seeking that rules the roost in public discussion of trademark. Hat tip to Evan Brown.

Kissing trademark rights goodbye?

Originally posted 2008-05-25 19:50:54. Republished by Blog Post Promoter

Hershey muffin pan

In-tag-li-oh’d

Eric Johnson‘s Pixelization blog has a sweet insight into a sticky trademark mess that Hershey’s could be, theoretically, getting itself into:

It’s a Hershey’s-brand three-compartment silicone muffin pan. When you bake muffins in this pan, they come out – adorably, of course – in the shape of oversized Hershey’s chocolate bars – complete with the Hershey’s name and logo intaglioed in the shape of the finished muffin. The imprint of the Hershey’s name and logo is substantially the same as what one finds on a Hershey’s milk chocolate bar, after the foil is unwrapped.

Clearly, if you buy this muffin pan, there is an implied license to use it to make muffins with the Hershey’s logo. That is, there is an implied trademark license. But, as you might expect, Hershey’s exercises no control over the muffins you make with their logo in the pan you purchased.

Thus, this looks like a case of “naked licensing” – a fast way for a trademark owner to be involuntarily stripped of trademark rights.

Whoops.

“Intaglioed” — nice! But, get it? You’re making stuff that officially, permissively, persuasively says HERSHEY’S on it in official lettering and the usually IP-crazy nuts over Hershey’s have no idea what on God’s green earth you’re putting out there with their name on it! Eric elaborates:

The packaging for the muffin pan – identified as a “Hershey’s Licensed Product” – contains this legend: “THE HERSHEY’S TRADEMARKS AND TRADE DRESS ARE USED UNDER LICENSE.” This prophylactic spray of legalese is steeped in irony. How could Hershey’s put such care into making sure the muffin pan manufacturer had a license and would declare the same, yet witlessly end up issuing a license to all muffin-pan buyers to start churning out food items under the Hershey’s brand?

Ironic, indeed. My first inclination is to say, “Aw, come on!” But he’s right, isn’t he? There’s no limit on how much stuff you can put out with your official Hershey’s trademark-imprinter-on-food-thingy; indeed, how could they place a limit on the consumer’s use? And nowadays, corporations and “IP equity owners” don’t ever just have a little fun with trademarks, or let anyone else do so, either — precisely because doing so just might be construed as abandoning one’s rights!

As Eric points out, the irony, again, is that this device is meant to act as an affirmative brand-building device. Of course, in the scheme of things, it just may be shown to be a whimsical, fun kitchen toy that “no reasonable person” would think was a license to manufacture competing products with the HERSHEY’S mark.

Maybe. But Hershey’s would certainly have it coming to them if someone asserted this this as proof of abandonment [UPDATE:  or, as Rebecca Tushnet suggests, “self-dilution”] as a defense to some kind of infringement action. One can imagine such a defense at least raising a fact issue for purposes of avoiding a summary judgment or defeating an easy likelihood of success showing on an application for preliminary injunction. It would be interesting indeed to demonstrate too that Eric’s example is not the only one of Hershey doing more or less the same thing with its (great) food-borne trademarks. So, you never know.

The chocolate’s too darned sweet, too.

Stop making cents

Originally posted 2006-11-12 00:11:30. Republished by Blog Post Promoter

penniesVia AdSense, that is. Phillip Lennsen reports that that’s what Google told this blogger, whose blog contains the word “GOOGLE” in its URL. The company cut off his AdSense feed. The Big G later relented, probably realizing there wasn’t much genericization risk (Google’s current, and belated, obsession) here and — because I know their trademark people are top-notch — recognizing brand-healthy nominative fair use when they see it.

Lawyers.com: No cigar

Originally posted 2007-04-13 12:06:29. Republished by Blog Post Promoter

lawyers_com_logoMartindale Hubbell law directory loses its Circuit Court appeal of the denial of a trademark registration for LAWYERS.COM, the trademark that’s too good to be a trademark.

Not like LIKELIHOOD OF CONFUSION. Now, there‘s a trademark.

UPDATE:  Want to put in a bid on Patents.com?

The dreaded dictionary

Originally posted 2012-05-10 14:06:05. Republished by Blog Post Promoter

From dis kind dictionary you couldn't lose out

A couple of years ago I wrote this post called “the Museum of Genericization,” about a feature on the online Mirriam-Webster dictionary called the “Top Ten Words from Trademarks.”  In the post I pointed out that they skipped a pretty obvious one — for obvious reasons.

Obviousness, however, seems to be like intrepidity these days:  It is as it does.

Let me start again.  I mean to say that it is obvious to trademark lawyers, at least, that in most cases — Google being a notable exception (because due to its ubiquity, it gained far more than it has probably lost) — there is nothing worse for a brand, trademark-wise, than ending up in the dictionary.  Because that means you’re a word, not a brand.  Generic.  Kaput.

Well, obvious really is as it does, darn it!  Because look what mega-super-social-media-juggernaut Mashable just pushed out over the ‘tubes: Want Your Startup Name in the Dictionary? Choose Wisely:

The English language is constantly evolving. Experts at Merriam-Webster and the Oxford English Dictionary perennially add words that have been invented and accepted in our daily lexicons. The practice can be controversial, however, since it sometimes involves removing other, older words entirely.

For instance, the term “cassette tape” was recently extracted after it was deemed unnecessary and redundant. Both “cassette” and “tape” were in the dictionary already, and the words naturally refer to each other.

Lit majors and writers may get emotional when certain words disappear, but the practice nonetheless reveals where our language is heading. When examining recently added words, it comes as no surprise that many of these words are tech-related.

In particular, for a brand to gain entry into one of the world’s foremost dictionaries it must be deemed a universal, generic term. Take “Xerox” for example. The brand name is so common that it has since become a verb, as well: “Sheila, xerox that memo for me, would you?”

Yes, we know all about that.  But I’ll save you and Sheila the trouble:  The word “trademark” does not appear in the article.

Remember what I said about obvious?  It didn’t seem obvious, evidently, to Mashable that this could be an “issue.”

If your trademark becomes a word, you’ve lost your trademark, right?  And trademarks are desiderata, the avoidance-of-losing of the same being sufficiently important to make companies say really dumb stuff?

Isn’t that obvious?  Turns out it, er, doesn’t.

American Red Cross lands right cross against J&J

Originally posted 2014-05-14 12:43:30. Republished by Blog Post Promoter

Johnson & Johnson started it. The Red Cross wins it:

A federal judge last night ruled against Johnson & Johnson (J&J) in its suit to stop the American Red Cross from using the Red Cross emblem on first aid and other health and safety products sold to the public. The judge’s ruling represents a complete vindication of the right of the Red Cross charity to use its emblem or authorize others’ use of its emblem in the sale of products related to its mission. The money the Red Cross receives from the sale of these products is reinvested in its humanitarian programs and services.

Well, okay, that’s the Red Cross’s press release, anyway. Here‘s the opinion.

UPDATE: Good analysis from Ryan Gile.

UPDATED AND OVER:  Case settled.

Best of 2011: I feel like a table-tennis ball! (Updated 2015)

Originally posted 2015-03-06 11:35:50. Republished by Blog Post Promoter

First published March 3, 2011.

When I saw Sergiy Sivochek’s post about the PING PONG trademark, I thought it sounded familiar — and it is!  Pamela Chestek and I swatted it back and forth down in the comments of this doohickey a while back.  Seems that maybe, perhaps, the matter of whether PING PONG really functions as a trademark will be settled?:

I guess we will have to wait and see whether Ping Pong is destined to join the company of Yo-Yo, Aspirin and all other genericised trademarks, or if Escalade Sports will be able to steer the mark away from the danger. We might not even have to wait for long before getting some answers as Escalade Sports recently sued a Delaware corporation, Sandman Table Tennis LLC, over the mark.  (The complaint can be viewed here.)  Given that Escalade Sports is aggressively asserting its rights to Ping-Pong, I will not be surprised if Sandman attempts to defend itself by raising the genericism issue. That is, of course, if the case does not get quietly settled first.

I’d be surprised if they relied on anything but genericness (not” genericism,” at least in my book — that’s like a philosophy or religion of genericness, I think — and isn’t that already called something?) as a defense.  I’d also be surprised if, as Sergiy acknowledges, this little misunderstanding isn’t privately resolved well before that happens, as I explained in my volley back to Pamela.

Some of the “best” trademark rights are the ones that are never quite proved to be enforceable, after all.

UPDATE:  Complaint was filed on January 19, 2011.  Voluntarily dismissed on undisclosed terms, per PACER, nine days later.  No surprise there. What’s far more interesting is this: Read More…

MasterCard card. Card card. Card.

Originally posted 2008-12-17 12:21:30. Republished by Blog Post Promoter

Mastercard Card

A reader writes to New York Times Q&A guy Stuart Elliot with a question that’s on a lot minds:  What’s with this “Mastercard card” stuff you hear on the commercials?  There are, evidently, two answers, the second of which was LIKELIHOOD OF CONFUSION®’s guess and the first of which is… well, here, read it for yourself:

“Essentially, many times it’s because we’re driving consumers to use their physical payment card,” says Jon Schwartz, a spokesman for MasterCard Worldwide in Purchase, N.Y., “so we must distinguish between our brand and the MasterCard-branded credit or debit cards that consumers utilize to make purchases.”

You must, eh?  Well, in this humble marketing-and-branding-savvy-law-blogger’s opinion, you’re not.  We can barely follow what you’re talking about, and that’s because what you’re talking about, Jon — can we call you Jon?, thanks — is incoherent.  MasterCard may think consumers understand this distinction via a 30-second spot, but how can they when it doesn’t even make sense no matter how long you stare at it in black and white?

MasterCard, he says, wants us to distinguish between these two things:

  1. “our brand” and
  2. “the MasterCard-branded credit or debit cards that consumers utilize to make purchases”

Well, what is “your brand” besides “the MasterCard-branded credit or debit cards that consumers utilize to make purchases”?  Read More…

Best of 2012: Apostrophe now

Originally published October 11, 2012.

Via Courthouse News, a report of a trademark lawsuit that I’d think was merely “apostrophal” if not for the fact that that august publication says it’s for real — and because here’s the complaint off PACER.  The story:

A Philadelphia delicatessen has sued the U.S. Patent and Trademark Office over an apostrophe, insisting that its “Philadelphia’s Cheesesteak” is “so superlative” so “gloriously gluttonous,” it could not possibly be confused with the generic “Philadelphia Cheesesteak.”

Campo’s Deli at Market sued U.S. Patent and Trademark Officer Director David Kappos in Philadelphia Federal Court.

Campo’s Deli, a “Mom and Pop cheesesteak and hoagie* shop, run by Mike and Denise Campo and their children Mike and Mia,” applied for a trademark in 2009, were rejected in 2010, appealed, and were rejected again after an oral hearing in March this year. But because the appeal board reversed the PTO’s refusal of trademark under §§ 1 and 45 of the Trademark Act, “regarding sufficiency of evidence of trademark’s use by plaintiff in commerce,” the Campos appeal de novo.

The doughty family says it’s been using the trademark since at least Jan. 1, 2009 at four retail outlets, including the home stadia [sic] of the Phillies, the Flyers and the Sixers.
Getting down to brass apostrophes, the Campos insist, in their 4-page complaint: “Plaintiff’s mark is, first and foremost, the description of a particular kind of sandwich of a particular quality or standard – a sandwich so superlative, it could only be called ‘Philadelphia’s Cheesesteak.’ . . .

“Plaintiff’s mark is descriptive of the unique and tremendously delicious goods it offers for sale to the famished masses, and is not, by contrast, an indication of the geographic origin of the sandwich, which would otherwise prohibit registration.

The apostrophe is worth saving; and the complaint (link above) is worth reading.  Cooked up by Philadelphia’s J. Conor Corcoran, an acknowledged legal windmill-chaser, it is certainly far juicier than the standard fare, including ingredients such as:

16. The difference in the two phrases, of course, is an (’s) which demarcates a particular kind of gloriously gluttonous sandwich provided only by the Plaintiff – not just a Philadelphia Cheesesteak, but “Philadelphia’s Cheesesteak.”

17. Plaintiffs mark is descriptive of the unique and tremendously delicious goods it offers for sale to the famished masses, and is not, by contrast, an indication of the geographic origin of the sandwich, which would otherwise prohibit registration.

18. For example, Plaintiff needs its mark so that in pursuing its franchising aspirations, the purchasing public will know that Plaintiff provides a particular kind of Philadelphia Cheesesteak, of such a tremendous quality, such a gustatory delight, and such a propensity for myocardial infarction that it could only be called “Philadelphia’s Cheesesteak” – the very best example of what is otherwise a very common sandwich.

Now, it is odd that the TTAB did not address the myocardial infarction argument in its August 7, 2012 decision (attached to the complaint).  In such  heart-rending situations I turn, naturally to John Welch, who explains like this: Read More…

Best of 2008: MasterCard card. Card card. Card.

First posted December 17th, 2008.

Mastercard Card

A reader writes to New York Times Q&A guy Stuart Elliot with a question that’s on a lot minds:  What’s with this “Mastercard card” stuff you hear on the commercials?

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

There are, evidently, two answers, the second of which was LIKELIHOOD OF CONFUSION®’s guess and the first of which is… well, here, read it for yourself:

“Essentially, many times it’s because we’re driving consumers to use their physical payment card,” says Jon Schwartz, a spokesman for MasterCard Worldwide in Purchase, N.Y., “so we must distinguish between our brand and the MasterCard-branded credit or debit cards that consumers utilize to make purchases.”

You must, eh?  Well, in this humble marketing-and-branding-savvy-law-blogger’s opinion, you’re not.  We can barely follow what you’re talking about, and that’s because what you’re talking about, Jon — can we call you Jon?, thanks — is incoherent.  MasterCard may think consumers understand this distinction via a 30-second spot, but how can they when it doesn’t even make sense no matter how long you stare at it in black and white? Read More…