Words matter (Best of 2017)
Words are almost everything in a trademark registration, notwithstanding that one drawing. Stick with me. It’s going to get a little esoteric — not to say woolly — but hey, it’s a blog post. And you have my word that when we’re through, there won’t be any more.
So, it may sound obvious, but it is as clear as the pixels on the page you are perusing that the words (and the drawing!) on a trademark registration are, or should be, the only things that (besides the Lanham Act) define the rights granted by that registration. Other facts, “context,” intentions are (or should be, as we will see) irrelevant as far as the registration goes. This is true for both a word mark or a “design mark” (what most people think of as logos) or hybrids of trademarks that merely include words. (The difference between a design mark and a word-plus-design mark matters in all kinds of ways, and the taxonomy of trademarks itself would make a great blog post except that it already makes a great blog post, and Eric Waltmire wrote it.)
There are innumerable ways word choices that reflect legal principles affect trademark rights during the registration process. For one, as I wrote in my 2011 “don’t do it yourself” post, every registration is limited to the goods and services recited in that registration. There is no LIKELIHOOD OF CONFUSION, after all, between goods that do not and probably never will compete. Failure to recite goods and services properly can doom an application or, worse, result in a registration that provides false comfort because it does not protect what it should.
On the other hand, a well-tempered trademark registration can make a virtue out of the seeming vice of a vague goods description, as Steve Baird notes in a fascinating post putatively concerning beef jerky:
[T]here can be a fair amount of legal strategy in selecting to use the best generic name for a brand that is broad in scope, but is still bite size, memorable, and easily embraced by consumers. Similar strategy is required when seeking federal registration at the USPTO.
For example, if your brand is only currently being offered in connection with “tie tacks,” why not seek federal registration in connection with “jewelry” too, combining broad and narrow?
The far narrower “tie tack” description is a type of “jewelry” so use of the brand name in connection with “tie tacks” also supports use of the more expansive “jewelry” category.
Moreover, both terms are allowed and listed within the USPTO’s Acceptable Identification of Goods and Services Manual (ID Manual), allowing for this broader claim of rights.
Beyond an enhanced scope of rights, doing so would give the brand owner some comfort over time while expanding the offerings to commercially grow into the broader description, subject to any Section 18 challenges, of course.
Of course! The right choice of words, Steve explains, can be used to stake out the semiotic space around a trademark to the extent permitted by the law and regulations concerning trademark registration.
But, of course, there is again and above all the mark itself, which, once its existence is established, is defined by two dimensions: what we might call space (what is the mark?) and time (how — with what goods or services — is it used?). Steve’s beef jerky post demonstrates how insightful consideration of both dimensions, and the right choice of words to reflect that analysis, maximizes the grant of rights in a trademark registration.
Indeed, even the form of the drawing submitted with the application and displayed in the registration hangs on appropriate understanding of the verbal components in the application. The value of proper formulation is most urgently appreciated when that call comes from an Examining Attorney saying, hey, you’re pretty much good to go here — we’ll just need this little tiny disclaimer and we’ll send you right through…
Words matter a lot. In prosecuting a registration, a knowledgeable practitioner sweats over them, gives and takes with the Examining Attorney and, as Steve demonstrates, appreciates that they provide the framework that defines the mark in form and in action.
These two dimensions are not always unrelated, as demonstrated by a post John Welch wrote, in 2016, about the TTAB’s affirmance of a refusal to register a mark based on a consent agreement (a concept explained here by Erik Pelton) that the TTAB found sliced the onion too thin. The idea of the agreement was to allow a pair of competitors to use and register the marks TIME TRAVELER BLONDE and TIME TRAVELER for beer at the same time. The suggested difference between these two names reflects a concept trademark lawyers have a hard time communicating to clients, namely that distinctions in wording between two marks don’t matter as much as the marks’ overall commercial impressions.
The lawyers that drafted this agreement knew that there wasn’t much difference and that, in trademark law, there was none. So they cleverly hedged the two “different marks” with a set of subsidiary conditions of use — not, as defined above, with respect to identifying the goods and services, but in an entirely different sense: providing a consumer-perception “context.”
The hope was to shape the way the PTO perceived the overall commercial impression of the two marks so the new mark would not be deemed likely to be confused with the old one. Thus the agreement included well-delineated visual distinctions in how each company would use its version of the mark. These would vastly affect how the respective marks would, assuming the agreement was performed, be perceived in the market. What the applicant was doing, in other words, was urging the PTO to incorporate this “context of use” in a way that would transform the marks themselves and turn presumptively identical marks into mere fraternal siblings:
The agreement required that each party use its mark in connection with its house mark, that applicant use TIME TRAVELER or the word TRAVELER only in the mark TIME TRAVELER BLONDE, that the word BLONDE be displayed in at least equal prominence with TIME TRAVELER, and that each party use a trade dress not confusingly similar to the trade dress of the other.
A brilliant idea. But, said the TTAB, not happening. Because while the bells and whistles in the coexistence agreement might differentiate the way the parties intended the marks to be used — different trade dress, maybe different territories — from on board the registration train, TIME TRAVELER and TIME TRAVELER BLONDE look like signs for the same station. A coexistence agreement can’t change that.
But wait! Aren’t parties free to draw private boundaries to avoid bilateral conflict?
Of course! When they do, a rainbow is born!
If we could peer into the souls or bylaws of the would-be registrants at the moment the applicant sought to register its new mark based on this coexistence agreement, we would doubtless observe nothing but the best of intentions sitting together over a game of checkers, steaming mugs of cocoa at their sides.
And that’s fine for them. But the PTO’s primary duty is to the Primary Register, not the applicants. And as a matter of law the PTO can’t register two marks that are likely to be confused. It can’t do that because trademark registrations are very important things.
One thing that makes registrations important is that they are a presumptive legal determination of a mark’s validity under trademark law — not based on private negotiations. (Which is to say, they are supposed to be that.) Thus the PTO is duty-bound to, and did, reckon that notwithstanding the parties’ concord on the matter, these two marks were still likely to be confused with each other by the rest of the world, which was not invited to the parties’ party.
The TTAB explained this while also implicitly addressing the mistaken notion that trademarks are just assets and registration is a vault. No, the TTAB reminded the applicant: trademark registration is not just about you:
[W]hen marks are being searched and cleared, there is a presumption by searchers and attorneys afforded to an unrestricted registration that Applicant’s registration would not and should not be entitled to. . . .
[The agreement’s] promises . . . represent . . . [a] deviation from the parameters of the application and registration, and thus would result in a failure of the public notice function of registrations.
In short, there are no side deals to trademark registration. Extraneous “context” supplied by a contract is inherently foreign to the trademark registration regime. That system is premised on submission, confirmation and publication of a small set of specific empirical facts. These facts are published, mainly in words, on the face of a certificate of registration, by which the world is apprised of the registrant’s claim of right. Relying on this, the world makes its call, as the world will do.
In this calculus, the registrant’s intentions concerning use of that mark — even if embodied in an enforceable contract — are not relevant to the registration inquiry, and thus cannot supplement or shape the verbal description of the mark. TSDR notwithstanding, documents such as coexistence agreements (much less their interpretation) are not among the signals the PTO ultimately distills into the registration. The TTAB may not always be able to resist “enhancing” the bundle-o-rights seemingly delineated in trademark registrations, but in the TIME TRAVELER decision it drew a line around endorsement in the Register of private trademark law.
Superheroes are always different, though. In the real world, trademark law’s rejection of “context” is not a matter of doctrine but of pragmatism. A written contract setting out terms pursuant to which the applicant legally binds himself to use a mark a certain way is context all right — a meeting of the minds, a formal manifestation of mutual intent. A formal bilateral obligation may tell us more, provide us more context, concerning an applicant’s use of the mark than the applicant’s unilateral promise, or other evidence of use. Or it may not.
Either way, other than to confirm, in the examination process, the validity of the applicant’s representations concerning use of the mark, how can registration charge the world with notice of “context” when the only information found on the certificate of registration is a description of the mark, a recitation of goods and services, the dates of first use (whatever, um, that means), the identity of the registrant and the address of his Mailboxes Etc.?
And even if it could communicate “context” or intent as of the “time of registration,” how could the certificate do so a half millisecond after the registration were issued? And another four seconds later? And… now? Now? The certificate is static, but contexts, or intentions, or bilateral commitments concerning use can and very often do change. This is even true when intentions are memorialized in Times New Roman and saved as secure PDF’s. Like trademark goodwill itself, contracts are assignable, revised, replaced, amended and — happily for we who feed from such discord — breached. The train of use-intent is every minute leaving the station, and — even worse — who knows what we are seeing once it departs or even if we’re all seeing it at the same time.
So is it too regarding offensiveness, incipient civil unrest, and other qualities ascribed to trademarks, all qualities neither examined nor examinable. These are things revealed only in the hearts of men — and, sometimes, their expert scriveners, if hearts they can be said to have at all.
In trademarks, none of these things, but the word — accompanied, when appropriate, by drawings in JPG format, 5 MB or smaller with a filename less than 256 characters long (including the .jpg extension!) — endures.