There are several different kinds of intellectual property protection (e.g., trademarks, patents, and copyrights). The borders between the types of protection are not always clear, and it may be that some subject matter is eligible for protection in more than one category. Conversely, it may be that qualifying for protection in one category excludes the subject matter from protection in another. This blog post examines the border between patent protection and trademark protection, particularly the border between design patent protection and trade dress.
Design patents protect the ornamental features of a manufactured article (while utility patents protect the utilitarian features). The drawings of a design patent show the parameters of design patent protection. Design patents remain in force for 14 years from the date the patent was granted if the application was filed before May 13, 2015 and for 15 years from the date the patent was granted if the application was filed on or after May 13, 2015.
Trade dress is a type of trademark that protects packaging or product configuration. Like other trademarks, trade dress marks serve as indicators of source. To qualify for trade dress protection, packaging or product configuration must be non-functional (that is, the features protected as trade dress must not be necessary for competitors to have to compete against the claimant) and must be either inherently distinctive or have acquired distinctiveness. Product configuration marks are considered inherently not distinctive and must acquire distinctiveness in order to qualify for trademark protection. Trade dress marks (like other marks) may be protected for an indefinite length of time.
A product design or feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. There are several factors one may consider to determine if a feature is functional. One factor is whether the features that are the subject of an application seeking to register trade dress were also the subject of claims in a utility patent. If so, the utility patent is strong evidence that the features are functional and therefore ineligible for trade dress protection.
But if a feature is protected by a design patent, that fact weighs against a finding of functionality (since design patents protect ornamental features) and may mean the design could be eligible for trade dress protection (even though it is still possible for other evidence to establish functionality). If the features are conclusively determined not to be functional, trade dress protection and design patent protection may exist for the same subject matter, either concurrently or consecutively, so long as the features are determined to be distinctive.
Deciding when, whether, and how to pursue design patent protection and/or trade dress protection may depend on a number of factors, including whether the design has been available in the marketplace before one files a patent application and whether the features are inherently distinctive or need to acquire distinctiveness before they can serve as an indicator of source. Having a design patent may aid in the development of trade dress rights by giving the features in question the time to acquire distinctiveness while the design patent remains in effect and prevents others from using the design. It is possible to facilitate the acquisition of distinctiveness through the use of “look for” advertising that instructs consumers of the product to identify the features as an indication of the source of the goods and services. Then, when applying for registration of the trade dress mark, the applicant can present evidence of the advertising in support of its claim of acquired distinctiveness. If the advertising is effective, this should also allow the applicant to produce evidence that consumers in fact recognize the features as an indicator of source. Thus, the applicant may secure trade dress protection prior to or after the design patent’s expiration.
Of course, not all packaging or product configurations that are worth protecting by design patents will merit trade dress protection. While obtaining a patent is typically more expensive than obtaining a trademark registration, design patents tend to be significantly less expensive to obtain than utility patents, and trade dress applications are often more expensive to prosecute than traditional trademark applications. Consulting with legal counsel will help decide the appropriate strategy for each case.
PS: Thanks to guest-blogger Sean Ritchie for co-authoring this post!
Hi everyone! You’re favorite Trademarkologist-in-training is back! I apologize for not blogging last month but my husband, Chris, and I were at the 2018 Masters Tournament® in Augusta, Georgia! If that’s not a “get-out-of-work-free card” then I don’t know what is!
Tickets to the Masters® have been referred to as some of the toughest tickets to score in all of sports, perhaps only rivaling tickets to the NFL Super Bowl. Aside from corporate sponsorships, being a PGA pro, and connections with people in high places, most people rely on the Masters® ticket lottery system (like me). Every year hundreds of thousands of people enter the lottery for tickets to the tournament and practice rounds and then wait in great anticipation to see if the odds were in their favor. Some people wait an entire lifetime for the opportunity to visit the hallowed grounds of Augusta National Golf Club®, where the Masters® is played – and trust me, it’s worth the wait!
The best way to describe Augusta National® is just pure horticultural perfection. Regardless of whether you are a golf fan, there is no denying the unmatched beauty that exists there, and, every year, during the first week in April, the top golfers in the world converge to play in the Masters Tournament® and compete to win a coveted Green Jacket®.
(photo obtained from USPTO)
The powerhouse institution behind all of these iconic golf places, logos, and names is Augusta National, Inc. (“ANI”). ANI owns all trademarks, service marks, trade names, trade dress, and copyrights relating to Augusta National Golf Club® and the Masters®. Talk about a valuable and expansive trademark portfolio!
In addition to owning countless trademarks, including AUGUSTA NATIONAL GOLF CLUB, MASTERS, MASTERS TOURNAMENT, GREEN JACKET, AMEN CORNER, and A TRADITION UNLIKE ANY OTHER, ANI has also been very active in its claim of rights and enforcement efforts. ANI has not been shy when it comes to clearly defining what use is safe in the fairway and what is out of bounds. Just take a look at the disclaimers on its website. ANI takes it exclusive trademark rights very seriously!
For example, you can only purchase Masters® merchandise and memorabilia at the Augusta National Golf Shop® (yes, that’s trademarked too!). This explains why most people in the check-out-line are purchasing hundreds or thousands of dollars’ worth of items – racking up for friends, family, Christmas gifts, etc. Seeing as tickets to the tournament are elusive, you’ve gotta’ stock up and take advantage of the fabulous shopping when you get the chance! (Don’t worry – I did) The golf shop is even almost as magical as the course itself – check out their promotional video.
Recently, ANI brought a federal lawsuit against a Florida-based online auction site that was selling the famed Green Jackets® to people who did not in fact win the Masters®. In fact, the policy, customs, and rules of the Masters Tournament® provide that the Green Jacket® presented to the winner of the tournament cannot be removed from the course except during the first year following its presentation. All other times it must be stored on ANI’s premises and can only be worn on the course and during the annual tournament. In this particular lawsuit, ANI wants the site shut down and claims that the items, regardless of whether they are stolen or fake replicas, infringe their trademark rights. In addition to seeking injunctive relief, ANI, in its take no prisoners way, is also seeking monetary damages in the form of restitution, enhanced damages, punitive damages, liquidated damages, and its attorneys’ fees and costs.
The case is still ongoing and I will report back if there are further developments. All in all, ANI and the Masters® serve as a great lesson that securing federally registered trademarks and exclusivity is a powerful tool if you want to develop and protect your brands for generations to come.
Someone said a picture is worth a thousand words. If true, that would make it really difficult to compare a design mark and a word mark for likelihood of confusion purposes. Fortunately, a recent case from the Trademark Trial and Appeal Board (the “TTAB”) provides clearer guidance.
Aquitaine Wine USA, LLC sought to register the mark below in connection with certain French wines protected by an appellation of origin:
It was refused registration on the grounds of likelihood of confusion with the registration for the mark CHATEAU LAROQUE for use with wines having a different controlled appellation. Aquitaine appealed.
In this case, the TTAB had to analyze whether there was a likelihood of confusion between a mark comprised of both literal and graphic elements against a standard character mark. The TTAB began its analysis emphasizing the factors involving similarity of the marks and relatedness of the goods. The TTAB observed that when comparing a mark with a design element, the words are normally accorded greater weight because they make the greater impression on consumers and consumers use them to request the goods.
Applying this logic to the marks before it, the TTAB concluded that LAROQUE is the dominant element in Aquitane’s mark because of the size, placement and font of the word in the mark. Similarly, it concluded the term LAROQUE is the dominant element of the registrant’s mark because “chateau” was disclaimed as descriptive. Furthermore, the word ‘chateau,’ which refers to a large French country house or castle, and appears in registrant’s mark, corresponds with the image displayed as part of Applicant’s mark.
The TTAB emphasized its obligation to confine its analysis to the manner in which the marks appear in the drawings of the registration and application respectively (rather than the way the marks might be used in commerce). For what it’s worth, below is a copy of the specimen the registrant submitted when renewing its registration last year alongside an image of the specimen submitted by Aquitane in its application:
This may explain why the examining attorney focused on the ‘possibility’ that the registered mark could appear alongside the image of a chateau.
The TTAB spent some time reviewing the way it must analyze the similarity of the marks when one of the marks is a standard character mark. Registrations for standard character marks afford protection for the words (or letters or numbers) for use in any font, style, or color. Thus, when considering the similarity of the marks factor of the likelihood of confusion analysis, the TTAB considers that the words in the standard character mark could appear in various fonts, styles, or colors.
The parties disagreed about the scope of variations this would allow the TTAB to consider. Aquitaine argued that it would be impossible for the registered mark to appear in the same manner of display as its own because that would necessarily lead to copyright infringement of its artwork. The examining attorney argued that the registered mark could easily be displayed alongside an image of a house and vineyard in a way that would underscore the similarities between it and Aquitaine’s mark. The TTAB noted that both parties seemed to be arguing over the correct interpretation of a reasonable manners test. But this test was rejected by earlier precedent, which did not identify a replacement.
The TTAB took this opportunity to articulate such a test. The TTAB held that when comparing a standard character mark to a word + design mark, it would consider variations of the depicted standard character mark “only with regard to ‘font, style, size, or color’ of the ‘words, letters, numbers, or any combination thereof.’” At the same time, when the word + design mark includes a graphic representation of a word in the standard character mark, that fact will be considered in the analysis to determine the overall connotation and impression of the marks.
The TTAB found that the similarity of the marks in this case weighed in favor of a finding of likelihood of confusion. After considering the other likelihood of confusion factors at issue, the TTAB ultimately affirmed the examining attorney’s refusal to register the mark on likelihood of confusion grounds. The concurring opinion criticized the holding to the extent it seemed to limit the possibility or depiction of designs from its analysis of standard character marks.
So is a picture really worth a thousand words? Perhaps before the TTAB, a standard character mark is worth a thousand font, color, and style variations.
The groundbreaking Serial podcast was involved in two very different legal developments last week. The one that made the news involved its protagonist, Adnan Syed. The other, which you could be excused for having missed, involved its trademark.
The Serial podcast was a huge hit that introduced a lot of people – including me – to the world of podcasts. Its first season told the story of Adnan Syed, who was in jail, having been convicted of the murder of Hae Min Lee. Syed and Lee were high school students at the time of her murder and Lee had broken off a romantic relationship with Syed. Syed ultimately was convicted despite various holes in the prosecution’s case. Syed continued to maintain his innocence, and the podcast, in 12 episodes, compellingly explored the facts and the trial of the case from different angles.
On March 29, the Maryland Court of Special Appeals granted Syed’s request for a new trial. The court found that Syed had had ineffective assistance of counsel in that his attorney had failed to investigate a potential alibi witness whose testimony would have put Syed somewhere other than the scene of the crime at the time when the state claimed Lee was murdered. Although the appeals court did not exonerate Syed, he does get another chance to convince a jury that there is at least reasonable doubt as to whether he committed the murder. Fans of the show will no doubt be following developments in the case. The first issue will be whether the state wants to re-try the case given the factual weaknesses and the fact that Syed has already spent 18 years in prison.
For this blog, though, the big news was that the company that produces the Serial podcast, Serial Podcast, LLC, won some and lost some in its attempt to register the SERIAL trademark in different forms. The Trademark Trial and Appeal Board even issued a precedential opinion, which is of course super-exciting. The decision came out on March 26, just days before the decision in Syed’s case.
The question was whether Serial’s mark – the word SERIAL in word form and in logo form – can be registered as a trademark.
The application to register the word SERIAL as a trademark failed because the Board held that “serial” is generic for the services – “entertainment in the nature of an ongoing audio program featuring investigative reporting, interviews, and documentary storytelling.” A generic term is one the relevant public would understand as the common descriptive name of the type of goods or services. In this case, a “serial” is a story told in multiple episodes, which is an apt description of the podcast. Generic terms can never attain trademark status, so even though the public might understand that “Serial” referred to a specific show, no amount of proof of that public recognition could save the application to register the nameas a trademark.
The logo was a different story. Serial Podcast was trying to register two versions of the logo, one with color and the other without, as shown here:
Often a logo can provide the distinctive material that will allow registration, although even with a registration, Serial Podcast would not get protection for the generic word “serial.” The registration would protect against others using a similar logo, but apart from that, competitors could use the word “serial” however they wished.
The trouble was, even the graphic aspects were not very distinctive. The letters themselves are rather plain, particularly in the version without color. And the Board didn’t think putting the letters in rounded rectangles was very distinctive either.
Fortunately for Serial Podcast, there was some good (and unusual) evidence of public recognition that the Board found compelling. The Board was impressed with the use of the mark or close facsimiles in a Saturday Night Live parody sketch and in a Sesame Street graphic. Here is a screenshot of SNL’s Cecily Strong as the reporter/narrator of the podcast, with the logo behind her.
And here is the Sesame Street piece with a slightly altered version of the logo:
The Board reasoned that the humor in those pieces only works if the public recognizes the reference, so such high-profile uses were strong evidence of the public’s awareness of the logo.
The Board also found that knock-off merchandise using the logo, like the t-shirt below, were evidence of the public’s recognition, although it warned that Serial Podcast shouldn’t let unauthorized uses get out of hand.
With all that, the Board found sufficient evidence to show that the logo was had acquired distinctiveness, so that the public recognized it as referring to Serial Podcast’s services.
The registrations had not issued as of April 5, but should be coming soon.
Meanwhile, serial fans, an entity related to Serial Podcast applied to register S-TOWN and the logo and those applications went through without a hitch – see Reg. Nos. 5323056 and 5323149. You make it a lot easier on yourself when you pick a mark that is distinctive even without an SNL appearance.You can watch the whole SNL parody at this link: https://www.youtube.com/watch?v=ATXbJjuZqbc
No, even though we are down to the Final Four, I’m still not going to write about MARCH MADNESS®.
Rather, I’m going to continue to write about Quinn, Riley, Skylar, and Toby – the four Nor’Easter storms which dumped record snowfall this March. Now being born and raised in Montana, I know a thing or two about snow. However, four Nor’Easter storms in a single month dumping more than four feet of snow in some areas is something to write about!
For those of you who have not been watching the news recently, according to the Weather Channel, a Nor’Easter is a storm that:
(a) typically features winds from the Northeast (thus its name) off the Atlantic ocean;
(b) the storms dump lots of snow in the winter months, but snow is not a requirement for a Nor’Easter; and
(c) the storms are most frequent from September to April, but can happen anytime of the year.
And guess what? According to the good folks over at The Weather Channel, there was almost a fifth Nor’Easter this month. Fortunately for our friends on the East Coast, this low pressure system was too far out into the ocean to qualify as a Nor’Easter and caused only minor coastal flooding and beach erosion.
If Nor’Easters can be so destructive, cause so much damage, and be so widely reviled on the East Coast, then why do so many companies use NOR’EASTER as all or part of their trademarks?
My research revealed the first company to seek registration of NOR’EASTER as a mark was the Gillette Company in 1968 for use in connection with hand lotion. That application matured into U.S. Reg. No. 0871912 – but later went abandoned when it was not renewed.
One can understand the attraction of the word for the University of New England – the UNE Nor’Easters. There, the word Nor’Easters may strike fear in the hearts of their fellow Division III opponents.
Although its mascot, Stormin’ Norman, (voted #1 college mascot in all of Maine) does little to make one shake in their snow boots.
One can also see the connection with Nor’Easter Enterprises, U.S. Reg. No. 2,208,604, for NOR’EASTER for hand tools, namely, shovels (and presumably snow shovels). And, perhaps, one can see a connection with Charles River Apparel’s registration of NOR’EASTER for use in connection with jackets and pants as everyone needs such clothing to survive the elements.
But what about the other companies that use Nor’Easter as all or part of their marks?
In those instances, it is much more difficult to see the attraction of being associated with the dreaded storms. NOR’EASTER is currently registered as all or part of marks for use in connection with the following goods and services (in alphabetical order): beer, boats, coffee, hunting game calls, retail and wholesale distributorship services featuring seafood, vaping products, and windows (non-metal).
In conclusion, even a word associated the loathed snow storms can serve as a mark and be registered with the United States Patent & Trademark Office.
No, I’m not going to write about MARCH MADNESS® – that annual ritual of college basketball and the NCAA® basketball tournament.
Rather, I’m writing about the crazy winter weather which battered the East Coast with four Nor’Easter storms dumping record snowfall this March. After last week’s Storm Skylar and this week’s Storm Toby, some parts of the East Coast received over four feet of snow. It’s a regular blizzard.
Speaking of blizzards, have you seen the complaint that Dairy Queen filed in federal district court in Minnesota alleging infringement of its BLIZZARD® mark? According to Dairy Queen’s complaint, “One of the most popular and well-known menu items at DAIRY QUEEN® restaurants is the BLIZZARD® treat, consisting of soft-serve ice cream blended with fruit, nuts, candy pieces, and other flavorings. The BLIZZARD® treat is a required core menu item at all DAIRY QUEEN® locations. For those of you not in the know, it looks like this:
Dairy Queen has five incontestable registrations for BLIZZARD claiming a first use date back to 1946:
It is fair to say Dairy Queen is very protective of its BLIZZARD mark. Which is why it did not take too kindly to W.B. Mason selling bottled spring water under its own BLIZZARD mark:
In the fall of 2016, W.B. Mason filed trademark applications with the USPTO containing “blizzard” as part of its mark for use in connection with spring water. Check out application serial nos. 87/210,712 and 876/210,633 both filed October 20, 2016 and claiming a first use date of September 15, 2015.
According to the complaint, upon learning of W.B. Mason’s applications, trademark counsel for Dairy Queen contacted the Applicant and requested the applications be withdrawn. W.B. Mason declined and the applications were passed for publication. Dairy Queen promptly opposed, alleging a likelihood of confusion between W.B. Mason’s use and Dairy Queen’s use of “blizzard.” See TTAB Opposition No. 9123851.
When W.B. Mason continued using its mark, Dairy Queen filed the trademark infringement action in its home court in Minnesota. Like I said, March! What a month.
We will continue to monitor this case and give you updates on how both the TTAB and the District of Minnesota address the likelihood of confusion issue presented by this dispute.
In the meantime, stayed tuned for next week where we will explore more of this crazy March weather and the four Nor’Easters.
The United States Patent and Trademark Office (the “PTO”) has launched a new pilot program designed to ensure that specimens of use submitted to the PTO reflect actual use of the mark in commerce.
A mark is “used in commerce” within the meaning of the federal trademark statute (the Lanham Act) when the mark is affixed to goods (or containers or displays) and the goods are sold or transported in commerce and/or the mark is used in advertising or promotional materials that describe the services and the services are rendered in commerce. In both cases, the use must occur in the ordinary course of trade. A U.S. applicant must prove use of the mark in commerce before the application may proceed to registration. All registrants must prove use of the mark (or excusable non-use) in order to maintain the registration. Thus, specimens may be submitted as part of initial applications and/or allegations, statements, and declarations of use.
Under the PTO’s pilot program, third parties are invited to notify the PTO through a designated email address of any improper specimens submitted by an applicant. An improper specimen is one that is not actually in use, but may have been created specifically for the purpose of appearing to satisfy the PTO’s filing requirements.
To notify the PTO of an improper specimen, one must send it objective evidence showing third party use of the same image without the mark or cite to the prior application or registration numbers in which the same images (bearing different marks) have been submitted to the PTO. The PTO must receive the correspondence no later than the deadline for opposing registration of the pertinent application, but the PTO expresses a desire to receive such correspondence prior to publication whenever possible.
If someone is interested in knowing the outcome of the PTO’s investigation into an allegedly improper specimen, they must monitor the TSDR status page of the reported application. The PTO will not respond to the person who notified it of the improper specimen other than by automated reply acknowledging receipt of the report. This PTO program is subject to change and may terminate at any time.
Like letters of protest, this program offers people a low-cost opportunity to identify problems with pending applications and ask the PTO to address them, thereby potentially avoiding the expense and burden associated with addressing them directly through a notice of opposition. Unlike notices of opposition, the person notifying the PTO of an improper specimen does not need to be someone who believes they would be damaged by registration of the mark that is the subject of the pending application. Because the PTO accepts notices of improper specimens only prior to the deadline for opposition, this pilot program will not address improper specimens submitted after the publication period expires.
Although not stated expressly in the PTO’s materials, this pilot program seems to have a purpose similar to some of the PTO’s other programs, like the proposed streamlined cancellation process described here and the audit program originally described here (and which went into effect in November, 2017). All seem generally designed to promote the accuracy and integrity of the federal trademark register.
This PTO program seems to be seeking assistance in identifying a particular type of improper specimen, namely, mock ups or fabricated specimens. Current technology makes it all too easy to create an image that could appear to be a genuine specimen even though the applicant has not made use of the mark in commerce. On the flip side, there are some specimens that are accepted as genuine even if it doesn’t look like much effort went into creating them.
In In re Kohr Brothers, Inc., 121 U.S.P.Q.2d 1793 (TTAB 2017), a precedential TTAB decision, the TTAB affirmed a refusal to register the mark CONEY ISLAND BOARDWALK CUSTARD for use with frozen desserts when the specimen consisted of the following:
The examining attorney had refused registration of the mark, observing in part “The specimen is a piece of paper taped to a wall with the mark and a stylized image of a cone dessert printed on it. The location on the wall appears to be above the top of a garbage can.”
On appeal in Kohr, the issue was whether the specimen satisfied the requirements for a point-of-purchase display for goods. The TTAB decided that it did not, but refrained from judging the nature of the specimen itself. When the applicant filed a new application seeking registration of the mark in connection with retail services featuring frozen desserts, the PTO accepted the same specimen displayed in a slightly different location:
The PTO’s mission to preserve the integrity of the federal trademark database is laudable. This program is one tool designed to help achieve that goal, but will necessarily be underinclusive. If you spot an improper specimen, consider taking the time to notify the PTO. If you are an applicant seeking to register a mark, be extra conscientious about working with your attorney to confirm that the mark is being used in commerce and that the specimen accurately reflects this.
There has been a lot of talk lately about the idea that the supply of trademarks is running short. A recent article in the Harvard Law Review supported that idea: after some “big data” analysis, the authors concluded that (1) there is a finite number of good word trademarks, (2) the supply of those good marks that are not already claimed is dwindling (what the authors call “depletion”), and (3) marks that are already claimed are often claimed by a number of different owners (what the authors call “congestion”). The authors found particular evidence of depletion in the area of trademarks for beverages.
Which brings us to beer. Through most of the post-Prohibition years of the 20th Century, there was a relatively modest number of beer trademarks in use in the U.S. There were regional brews in addition to the mega-brews, but even those were mostly large-scale operations. With Americans growing increasingly used to what might charitably be called “light, easy-drinking” brews, there was a lot of consolidation. According to the Brewers Association, by the end of the 1970s there were only 44 brewing companies in the U.S.
Then began the rise of the craft brew. Inspired partly by the dismal state of the brewing industry, beer enthusiasts took to homebrewing, and some of those homebrewers started businesses. Microbreweries and brewpubs began to sprout in the 1980s. Their numbers – along with the volume of their output – increased dramatically in the 1990s and beyond. By 1994 there were over 500 craft breweries in the U.S., and that number stands at over 6,000 in 2018.
Six thousand breweries, the great majority of them putting out multiple types of beer, means a whole lot of potential beer trademarks. It also means a whole lot of potential conflicts between trademarks, particularly given craft brewers’ penchant for giving their brews playful names. As one brewer put it after a little beer trademark dust-up: “There is a finite number of lame hop puns to be used.”
Predictably, a fair number of beer name trademarks have wound up before the Trademark Trial and Appeal Board. The TTAB hears applicants’ appeals when the Trademark Office refuses applications to register trademarks, and it also hears challenges to registrations by other parties. The key issue in many of those proceedings is whether the mark shown in an application is confusingly similar to a mark that has already been registered.
Here is a sampling of some of the recent TTAB proceedings involving beer marks, with images of the marks where they were available. In all of the applications below, the examining attorney at the Trademark Office refused registration of the applicant’s mark (the first of each pair of marks shown below) based on a likelihood of confusion with the previously-registered mark.
8-BIT ALEWORKS versus 8 BIT BREWING COMPANY (refusal to register affirmed by the TTAB)
TIME TRAVELER BLONDE versus TIME TRAVELER (refusal to register affirmed despite the parties’ agreement to coexist)
BLACK FOREST versus BLACK FOREST BREWERY (refusal to register affirmed)
THE SAISON D’HERETIQUE versus HERETIC BREWING COMPANY (refusal to register affirmed for beer, but allow registration for root beer and other non-alcoholic beverages allowed)
MUTT versus LAZY MUTT (refusal to register affirmed)
WOODY WHEAT versus WOODY STOUT and WOODY BROWN ALE (refusal to register affirmed)
PRINCESS YUM YUM RASPBERRY ALE versus YUMYUM (registration allowed)
Some of the applicants in those appeals argued that small differences between the marks were enough to avoid confusion because craft brew drinkers are a sophisticated lot and could be expected to distinguish between the marks despite their similarities. The TTAB routinely rejected that argument. As a general matter, the TTAB will presume that consumers will not make careful distinctions between similar marks on similar goods when the goods are inexpensive. It can’t help the applicants’ case that, with beer marks, the goods are often ordered in noisy bars without the opportunity to examine the labels, and sometimes when the consumer’s ability to distinguish is compromised by having partaken of the goods.
The crowding of beer marks will only get worse, particularly if brewers try to protect the names of multiple beers in their product line. One option for brewers is to focus on choosing a protectable mark for the brewery, register that where appropriate, and not worry so much about the name of each different beer that the brewery sells. With the popularity of IPAs and other styles, it’s not uncommon for one brewer to offer multiple different versions of the same style of beer, so it may be necessary to name each beer – with or without “lame hop puns” – meaning lots of marks. The reporting indicates that craft brewers have a history of a “live and let live” attitude unless there is a clear problem, and that attitude is probably a good approach in the case of most beer trademarks. As the Godfather of homebrewing, the great Charlie Papazian, would say: “Relax. Don’t worry. Have a homebrew.”
The opening ceremonies for the 2018 Olympic winter games take place Friday, February 9, but competition has already begun. In addition to competitions on the ice and slopes, there are competitions among brand owners. Official sponsors of the Olympic games pour lots of dollars into exclusivity, promotions, and advertisements related to the Olympics. And sometimes the competitors of those sponsors engage in ambush marketing.
But what about marks related to the Olympics themselves?
The marks surrounding the Olympics receive extra special protection. As regular readers of this blog know, in the United States, one obtains some common law rights in trademarks through use. Obtaining federal registration greatly strengthens those rights. And once a mark is deemed famous within the meaning of the Lanham Act, it may be protected against dilution. But there is yet another form of protection, afforded to only a very select few marks. These marks have statutes that specifically protect them.
Congress has given the United States Olympic Committee (the “USOC”) the exclusive right to make commercial use of certain marks, including OLYMPIC, OLYMPIAD, CITIUS ALTIUS FORTIUS, and other marks related to the Olympics. The USOC protects its statutory right zealously, and has a WEBSITE that identifies logos, words, and phrases it owns or has the exclusive right to control. Part of the website is dedicated to informing the public about permitted and unauthorized uses of the USOC’s intellectual property. As explained on the website, the USOC’s funding comes from sponsorships, so it has an interest in controlling use of the marks to maintain and obtain future sponsors. The USOC may seek civil remedies available to trademark owners under the Lanham Act against unauthorized uses of words and symbols related to the Olympics. The USOC has authority to permit contributors and suppliers to use the marks.
The USOC may even consent to third party registration of marks that include one or more of the terms restricted by the statute. The USOC has done this on some occasions. For example, it permitted the French soccer club, Olympique Lyonnais, to register the mark OLYMPIQUE LYONNAIS (& design) and use it in connection with the soccer club and related merchandise that had been used in the past. However, on most occasions when the USOC is consenting to third party registration of a mark containing a term protected by the statute, the consent relates to an application filed by the International Olympic Committee (the “IOC”). The IOC has filed applications in the United States based on foreign registrations owned by the IOC and then has assigned (most of) the US applications to the USOC.
If you were to file a trademark application that includes a term related to the Olympics, like OLYMPIAD or CITIUS ALTIUS FORTIUS, you would receive an office action citing to the statute above and presenting it as a complete bar to registration. Without consent from USOC, you would likely be out of luck.
But there are some exceptions to the statute. Notably, anyone who used the restricted words or symbols for lawful purposes prior to 1950 is not restricted from continuing to use them. Also, the term “Olympic” is not prohibited when it is not used with other insignia protected by the statute, it refers to naturally occurring geography that received its name prior to 1998, the and use is primarily limited to the western part of Washington state.
So enjoy the Olympic games, but maybe look elsewhere for the inspiration for your next branding campaign.
Fans of the tear-jerking NBC drama This Is Us will be aware of a certain incident with a kitchen appliance that had a big effect on the show’s Pearson family. (Fans who don’t know what I’m talking about and don’t like spoilers should read no further.)
Fans already knew that one of the main characters died prematurely, but the cause was not revealed until a January episode showing what happened. Turns out that a slow cooker with a temperamental switch caused a spark, which ignited a towel, which ignited the draperies, and things went from bad to worse.
Fans freaked out, taking to social media with tales (and gifs) of throwing away their Crock-Pots. The Crock-Pot Brand people leapt into action, quickly creating a Twitter account (@CrockPotCares) to deal with the public relations problem that had been dropped in their lap like a delicious and family-pleasing but nevertheless painful batch of hot soup.
By all accounts, the Crock-Pot folks did a pretty good job of dealing with the public relations fallout. They tweeted out messages of empathy and information about their product’s enviable safety record:
They also released a statement – too lengthy for Twitter – saying in part: “For nearly 50 years, with over 100 million Crock-Pots sold, we have never received any consumer complaints similar to the fictional events portrayed in last night’s episode. In fact, the safety and design of our product renders this type of event nearly impossible.” That statement even invited NBC’s help in correcting the misunderstanding, and the show’s creator obliged with his own tweet:
Something they did not do, which is a little surprising, is point out that the device in the show was not branded as a Crock-Pot. As shown below, the slow cooker in the Pearson home lacks the prominent RIVAL CROCK-POT branding from Crock-Pot slow cookers of the era . . . although other parts of the Pearson device, such as the switch and the handles, do suggest that the This Is Us props department may have de-branded a Crock-Pot brand cooker. Perhaps they did that at the same time they were rigging it to emit the deadly sparks – a thing which, from what I’m told, a genuine Crock-Pot brand slow cooker has never done and simply would not do.
So the Crock-Pot people seem to have passed up an opportunity to say “that’s not us” to fans of This Is Us. This despite the fact that the owner of the mark, Sunbeam Products, in 2014 obtained a registration for the mark IF IT DOESN’T SAY CROCK-POT THEN IT’S NOT THE ORIGINAL.
And there’s a related trademark issue here. Every so often we have discussed on this blog the possibility of “genericide,” which is the death of trademark that occurs when the trademark becomes the generic name for the product. Genericide is relatively rare, but when it happens, it is often because the company that first commercialized the product enjoyed such success that it dominated the market and, in the mind of the consuming public, the trademark became not only the name of the product but also the name of the type of product. Companies whose brands have achieved such prominent status that they threaten to become generic often take steps to ensure that the public is aware of the difference between the trademark and the generic term. If the public considers it a generic term, it can no longer be protected as a trademark and it becomes available for use by competitors. No brand owner wants that.
The CROCK-POT trademark seems like one that is so closely associated with the type of product that there could be a concern about genericide. That’s presumably the reason for the IF IT DOESN’T SAY CROCK-POT THEN IT’S NOT THE ORIGINAL mark.
Given all that, this might have been a good opportunity for Sunbeam’s people to point out that a malfunctioning slow cooker is not the same as a malfunctioning Crock-Pot® brand slow cooker. They might have pointed out that the guilty slow cooker couldn’t have been a Crock-Pot® brand cooker, because it didn’t say Crock-Pot, and, as a wise person once said, “if it doesn’t say Crock-Pot then it’s not the original.” They could have kindly requested that people not refer to the Pearson’s cooker as a “crockpot” when they freak out on social media. And they could have playfully lectured Mr. Fogelman, who didn’t help them out on the genericide point when he seemed to use “crockpot” as a generic term in his tweet about “those lovely hardworking crockpots.” But if Sunbeam has made any effort to do that, I haven’t found it. I would guess that they were so busy with the public relations rapid-response team that the trademark team couldn’t get a word in.
A final note: the Pearson Family Crock Pot even has its own Twitter account (@ThisIsUsCrckPt), but I’m not absolutely sure it’s genuine. The picture looks pretty different. But you know these Hollywood stars – maybe it’s just had some work done.