Tag Archives: Descriptiveness

Likelihood of — well, no, actually. Not.

Originally posted 2010-02-10 18:10:46. Republished by Blog Post Promoter

At least in some parts of the country, LIKELIHOOD OF CONFUSION is something judges actually sometimes don’t find.  Out there, for example.  No, the other side — yeah.  The left.  As Michael Atkins explains:

In Sand Hill Advisors, LLC v. Sand Hill Advisors, LLC — a trademark case involving companies with the same name — the Northern District of California found that northern California is big enough for both parties. . . .  For good measure, the court also found no likelihood of confusion — independent grounds to grant defendant’s motion for summary judgment:

Although Plaintiff and Defendant share the same mark, they offer completely distinct services to distinct consumers in separate markets. Plaintiff’s assertion that the parties overlap in the area of real estate services paints with too broad a brush. The record unequivocally establishes that Plaintiff and Defendant’s respective businesses share little, if anything, in common. The lack of overlap is underscored by the paucity of evidence of actual confusion, which consists of nothing more than a few misplaced calls and a misdelivered package over the course of the last ten years. Viewing the record in a light most favorable to Plaintiff, the Court finds that no reasonable jury could find that the parties’ common use of the ‘Sand Hill Mark’ is sufficient to create a likelihood of confusion.

That’s right:  “The paucity of actual confusion”–here’s a case where there actually was confusion, which is considered to be the silver bullet, usually mythical, of proving LIKELIHOOD OF CONFUSION, and the judge says, very nice, Mr. Plaintiff, but:

The not so bright line

320 Bus

Parallel lines never intersect, do they?

The preamble of the Lanham Act Section 2 is followed by six lower-case–lettered sections, the fifth of which contains four separately numbered “grounds” on which it is permissible to refuse registration. No form of the word “generic” is to be found anywhere in any of them. How, then, does the USPTO prevent registration of generic names of the goods for which the marks are intended to be registered? . . .

We all know that a thermos keeps liquids warm or cold substantially longer than if the soup or soda were kept in a non– vacuum-insulated container. Many apparently believe that THERMOS is one of the leading brands of thermos. This seems nuts.

John Welch links to this fantastic article in the Trademark Reporter by Anthony L. Fletcher, discussing the critical — and, like so much in trademark law, vaguely described — legal distinction between generic and descriptive trademarks (or rather, in the case of genericness, would-be trademarks):

Most trademark lawyers are aware that generic names are unavailable for trademark protection under any circumstances, while merely descriptive terms are available for trademark protection if, and only if, they have acquired secondary meaning in the marketplace. “Secondary meaning” arises from use of a descriptive, or otherwise unprotectable, word or phrase in such a way, for a sufficient duration, and with enough frequency, that it becomes uniquely associated with the user and/or the user’s product(s).

It is “secondary” in that it refers to an acquired, rather than to an inherent, meaning. Accordingly, it is critical to understand the “generic”–“descriptive” dichotomy for trademark management and planning purposes. Promoting a name that can never become a trademark as if that name were a trademark is an exercise in futility. While promoting a generic name as a trademark might result in a degree of trademark recognition by the public, when that begins to happen, competitors can step in and, with impunity, appropriate to themselves and/or their products whatever degree of de facto trademark meaning might have been created. . . .

Unfortunately, the consensus of United States legal authority on what is generic rather than descriptive, and vice-versa, has become somewhat discordant. . . .

On the face of things, it appears that generic words are most likely to be nouns, while descriptive terms are more likely to be adjectives. On the face of things, there are also hundreds of judicial and administrative holdings on what is generic and what is not. But what is needed is guidance for determining whether a term is  generic or descriptive. That is not to say it hasn’t been attempted.

And here I break off for two reasons (copyright infringement not being one; I’m nowhere near the fair use threshold).  One is that you, dear reader, need a break.  And the other one is that what follows is worth its own separate block quote: Read More…

I’m a CYBERLAWYER, too!

Originally posted 2008-01-19 22:31:00. Republished by Blog Post Promoter

Slashdot:

BigTimOBrien writes to mention the EFF is reporting that self-proclaimed cyberlawyer, Eric Menhart, has decided to trademark use of the term “cyberlaw” and is threatening other lawyers with legal action over the term.

Describing yourself as a “cyberlaw” expert is pretty lame, but I just may start right now. In fact, I think I just did!

UPDATE: Eric Goldman rounds up the mockery, plus some background on Menhart, and adds:

Mr. Menhart has blogged a response to EFF that reinforces that he really doesn’t get it. Two unavoidable facts of life for him:

1) The PTO will bounce his TM application
2) If he ever attempts to enforce his purported trademark rights in “CyberLaw” again, he will be met by a buzzsaw of opposition from some very determined folks.

In light of these facts, most savvy lawyers would realize that the absolutely wrong approach is to dig in his/her heels.

I really do like Eric.

UPDATE:  More, from Brett Trout.

How generic is your cupcakery? Or is it CUPCAKERY™ after all?

Originally posted 2010-04-09 13:13:23. Republished by Blog Post Promoter

From Ryan Gile:  Is CUPCAKERY a generic term for a cupcake bakery?

At first, the word “cupcakery” seems somewhat suggestive–a unique play on the words cupcake and bakery. However, with the explosive growth of these specialty “cupcake” stores, several other “cupcakeries” have opened up in different parts of the country. Just a quick internet search revealed the following third parties using the word “cupcakery” to identify their cupcake store:

http://www.sibbyscupcakery.com/

http://www.acupcakery.com/

http://ourcupcakery.com/

And at least one company (with stores in St. Louis, MO and Knoxville, TN) is using the identical mark as The Cupcakery)

So would most consumers really associate the word “Cupcakery” with a single source–or more likely a merely descriptive term describing a cupcake bakery? . . .

While “cupcakery” may have been a unique word at one time, because The Cupcakery did not pursue trademark protection early (assuming that the company was the first one to use the phrase – a fact I have not verified), such oversight may have resulted in the word “cupcakery” joining the general lexicon as a word identifying a “cupcake bakery” rather than a word identifying a single source of goods and services.

Ryan’s made out a nice case for genericness.  But I think there’s still an argument for the term being protectible, at least in theory–there’s a lot more going on in the case than the genericness question, and you should read Ryan’s whole piece.  It is not usually the case that third party uses, in and of themselves, prove genericness.  A relatively new business that belatedly gets its act together and begins an IP enforcement program can, under some circumstances, recover its trademark, as long as it really is the senior user (and sometimes even if it’s not).

Overcoming such a problem may not be easy.  In the CUPCAKERY case, involving a former employee accused of violating all sorts of agreements and then opening up a competing business using the CUPCAKERY name, it may be easier than in other contexts.

Anyway, it’s a fitting dessert to the week, especially now that Passover is behind us!

Gadget goes gonzo

Originally posted 2010-02-08 23:24:32. Republished by Blog Post Promoter

Updated (see below) in September, 2011:

Firefly Digital explains the vision behind their, um, trademarks — including the one they claim a little outfit called Google is infringing:

They embody our passion, our vision and our values . . . They are descriptive of our products on many levels. Firefly is a business given life through ingenuity, hard work, the contributions of our employees and the trust of the many clients we serve. We’re prepared to protect that.

Wow, sounds awesome!  You go, Firefly guys!  All protectin’ things and stuff.

And what exactly is the “that” you’re protecting, and how?  Well, the “how” is a trademark infringement lawsuit.  Hey–that’s my passion too!!  And, and??  And the “what” is?

The “what” is the word “gadget” — or rather, the “trademark” GADGET. And the”infringement” of it.

Well, so?  Maybe it’s a mark for a kind of gum, huh?  Or a depilatory cream?  If you were to start a magazine called Gadget maybe that could be a good trademark, long as it wasn’t about, you know, gadgets.  I can think of lots and lots of things that go good with GADGET.  Lots of things, I should add, that embody our passion, our vision and our values.  I mean theirs. Of those things.

Okay, then, so do you give up yet?  Want to know what the trademark’s for?

The trademarks are for its “Website Gadget,” a content management system, and “Gadget,” a user-friendly application that works with its “Website Gadget.”

The company received a state trademark for “Website Gadget” in 2002 and federal trademarks for both in 2009.

Oh, you mean the registration covers a kind software… gadget?

Well, no.  No, no!  See, read right here:

They embody our passion, our vision and our values . . .   They are descriptive of our products on many levels. Firefly is a business given life through ingenuity, hard work, the contributions of our employees and the trust of the many clients we serve. We’re prepared to protect that.

Ohhh.  Software gadgets… and baloney!!

If it weren’t Google these Fireflies are suing I’d be depressed about this, almost.  Now I’m just going to enjoy it, I think!  What with the passion and the values.

In terms of suing Google, though, I wouldn’t put a lot of stock on the “vision” thing, so much.  (Hat tip to Paul Raynor Keating!)

UPDATE:  No trademark for Firefly’s gadget:  Summary judgment granted to Google dismissing the action.  As I said last year:  A singular failure of “vision.”

Best of 2010: The generic agony of defeat

First published on February 11, 2010.

The best LIKELIHOOD OF CONFUSION® blog item title ever was evidently wasted  — and I’m sorry I didn’t keep you quite so up to date on this — but, as Ryan Gile reported less than two months ago on the case featuring the “my name is Coca and I am a cola; what’s the problem?” defense:

Looks like the trademark dispute between Trader Joe’s Co. and Gristedes Foods Inc. (previously blogged here) over the latter company’s planned use of the name “Trader John’s” in connection with a chain of grocery stores appears to have been settled.

Yes, it is a little odd that the guy in Nevada updated this item before the person blogging from just a few blocks away, but hey:  let me make it up to you.  Here’s a genuine CONFUSIO-VISION photo of the renamed store that I took a couple of weeks ago:

Not Trader John's any more

No, really.  That’s it.

Crime doesn’t pay, and trademark infringement is hardly ever a crime, but “Grocer John’s”?  That’s got to hurt.

The generic agony of defeat

Originally posted 2009-03-24 00:01:51. Republished by Blog Post Promoter

The best LIKELIHOOD OF CONFUSION® blog item title ever was evidently wasted  — and I’m sorry I didn’t keep you quite so up to date on this — but, as Ryan Gile reported less than two months ago on the case featuring the “my name is Coca and I am a cola; what’s the problem?” defense:

Looks like the trademark dispute between Trader Joe’s Co. and Gristedes Foods Inc. (previously blogged here) over the latter company’s planned use of the name “Trader John’s” in connection with a chain of grocery stores appears to have been settled.

Yes, it is a little odd that the guy in Nevada updated this item before the person blogging from just a few blocks away, but hey:  let me make it up to you.  Here’s a genuine CONFUSIO-VISION photo of the renamed store that I took a couple of weeks ago:

Not Trader John's any more

No, really.  That’s it.

Crime doesn’t pay, and trademark infringement is hardly ever a crime, but “Grocer John’s”?  That’s got to hurt.

Web 2.0, but nothing’s changed

Bulls Eye

Bull's Eye (Sitting)

Remember the silliness over the attempt by a certain attorney to secure trademark rights for CYBERLAWYER?  The notable part about how that went down was that the foolishness was abated by virtue of a cacophony of webby mockery, a completely virtual beclownment of the first order.

So how you figure this “intrepid” scoop from Jordan McCollum?:

That’s right, folks, you’re all once again about to lose your right to use SEO to refer to . . . well, anything. Back in 2008, one “intrepid” “SEO” [guy] decided he’d trademark [sic] the term and impose standards on the rest of us. That didn’t pan out, so someone else has taken up the [cause].

Or not. Apparently this person is confused about what, exactly, SEO will stand for once it’s trademarked. In the original filing, Search Engine Partners/Shangri-La Boutique filed as SEO standing for “Search Engine Optimization,” which the application claimed they first used in September 1996, and first used in commerce in September 1999. The filing also includes a pseudo mark (this is supposed to apply to other words that are pronounced the same way) of “Strategically Elevating Optimization,” which a company SEP acquired used as a slogan on its invoices. . . .

Or something.  This is actually pretty complicated, evidently, but as Jordan says, “Feel free to read the 250 pages of the filing.”  Well, for free–no, thanks.  (Last night was bad enough.)

But the real irony, of course, is that a self-described “SEO” (“O” meaning not “optimization” it appears but “Optimizerrrr”) would be so tone-deaf, Internet-wise, that he’d want to be next CYBERLAWYER.  Unless, of course, it’s, um, an SEO play?

Or something.

How to describe a Catch 22

Michael Hall considers the PTO’s “Heads I Win, Tails You Lose” policy, by which it uses trademark registrations as evidence to refuse new applications on the basis of “descriptiveness”:

[T]he Office routinely relies upon them in issuing merely-descriptive refusals, yet when an applicant introduces third-party registrations to support its position, the Office will often dismiss them with a form paragraph stating that third-party registrations are “without evidentiary value.”

It’s good to be the king!  Michael says this policy may be inching toward improvement, but, really, this whole concept that the PTO is exempt from any accountability for its prior determinations — now that’s what needs examination.