Trademark Titan™ Blog

Information for in-house counsel, brand owners and entrepreneurs. Committed to international trademarks, copyrights, branding and other IP issues.

Trademark Titan™ Blog  - Information for in-house counsel, brand owners and entrepreneurs. Committed to international trademarks, copyrights, branding and other IP issues.

United States Trademark Trial and Appeal Board Crushes Trademark Application for MONSTER Mark

Although this is not my typical style of blog post, I promised my 7-year-old son that I would use the recent U.S. Trademark Trial and Appeal Board (the “Board”) decision in In re Monster Cable Products as a “teachable moment.” You may be asking yourself why would my son know about that decision? Well, I must confess, and I’m a bit embarrassed to say so, when my son was a bit younger I began reading aloud Board decisions during our programmed “reading time” unbeknownst, of course, to my wife. Amazingly he enjoys them! Or at least I think he does, since he asks some pretty good questions and is able to stay reasonably “tuned-in.” Or maybe he just likes being with dad. Either way, it’s all-good.

Might I be creating a next generation trademark/IP lawyer? I really hope not as my secret dream for my son is for him to be a professional hockey player for the Boston Bruins (and I think it is his too) or for any professional hockey team for that matter (other than the for Habs, of course). But then again, I’d be pretty happy and a proud dad if my son were to score! a full college hockey scholarship at a nearby college and so I could use the “college fund” to buy my Porsche 911. Ok, on with the post. My son is now rolling his eyes.

This is yet another case of the trademark selection process running off the track. As I have blogged about many times, brand owners cannot ignore the importance of trademark selection and how the improper selection of marks has the potential to kill (or at least potentially harm) a brand. Brand owners must not only consider marketing aspects of trademarks (how a “mark” itself can “advertise” a product) but also legal ones. In my practice I work closely with many of my clients during the trademark selection process to ensure that valuable names are considered and ultimately selected.  Getting trademark counsel involved early during internal trademark selection discussion should result in the selection of valuable brand names and may even reduce the costs associated with the clearance phase due to the pre-screening of proposed marks early in the selection process.

In the case of Monster Cable Products, Inc., Monster Cable sought registration for the mark MONSTER, in standard character form, for various automobile products, including suspension struts, bumpers, automotive fender flares, automotive grab handles, automotive grille, grille guards, automotive light bars, rear view mirrors, roll bars, running boards, automotive seats, shock absorbers, air intake manifolds and truck bed liners.

The Trademark Examining Attorney refused registration of the mark MONSTER on the ground it describes certain characteristics, features and/or qualities of truck accessories. The Examining Attorney argued that because the term “monster truck” means a very large pickup truck, the use of the term MONSTER in connection with truck accessories identifies products used for monster trucks. So the Examiner refused registration. The Examining Attorney based his decision on the long standing trademark principle that a term is deemed to be merely descriptive of goods or services, within the meaning of Section 2(e)(1) of the Trademark Act, if it immediately conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services.

Monster Cable argued that the term MONSTER, when used in connection with automotive accessories, is suggestive, if not arbitrary, for the following reasons:

1. Just because the record shows that there is a vehicle referred to as a “monster truck” does not mean that the word “monster” is descriptive of automotive accessories;

2. The word “monster” per se has no direct relationship with automotive accessories; and

3. Because the average consumer does not drive a monster truck, the word “Monster” does not directly describe automotive accessories.

The Board disagreed, however, by stating the following:

One of the primary characteristics of a “monster truck” is its modified suspension. One of the products listed in the description of goods is “suspension struts.” Consumers encountering MONSTER brand suspension struts will immediately perceive the products as being for monster trucks. Furthermore, the record shows that roll cage kits, roof racks, nitrogen shock absorbers, floor mats, battery cable kits and parts, windscreens, windshields, and canopies are sold for monster trucks. These products correspond with roll bars, automotive cargo management systems, floor mats, shock absorbers, automotive battery accessories, and window covers and deflectors listed in the description of goods. As indicated above, consumers encountering the MONSTER mark in connection with these products would likely perceive the products as being for monster trucks. Finally, a consumer encountering MONSTER for truck steps and truck bed liners would also understand, without any need for analysis, that the products were for monster trucks.

In view of the foregoing, the Board affirmed the Examiner’s merely descriptiveness refusal.

Trademark Principles for Non-Distinctive, Merely Descriptive “Marks”

When selecting new brand names, brand owners must understand that descriptive terms are not protectable as “trademarks” upon first use. Descriptive terms must acquire secondary meaning before any trademark rights are acquired – if ever any. To read more about avoiding the pitfalls of descriptive “trademarks,” read my blog posts on that topic, including here, here, here and here.

As pointed out by the Board in In re Monster Cable, below are certain key trademark principles you need to know to avoid adopting non-distinctive, descriptive terms as “trademarks”:

1. A term need not immediately convey an idea of each and every specific feature of the applicant’s goods or services in order to be considered to be merely descriptive; rather, it is sufficient that the term describes one significant attribute, function or property of the goods or services.

2. Whether a term is merely descriptive is determined not in the abstract, but in relation to the goods or services for which registration is sought, the context in which it is being used on or in connection with the goods or services, and the possible significance that the term would have to the average purchaser of the goods or services because of the manner of its use; that a term may have other meanings in different contexts is not controlling.

3. The question is not whether someone presented with only the mark could guess what the goods are. Rather, the question is whether someone who knows what the goods are will immediately understand the mark as directly conveying information about them (i.e., whether someone familiar with applicant’s truck accessories will understand MONSTER to convey information about the goods).

4. It is a well-settled legal principle that where a mark may be merely descriptive of one or more items of goods in an application, but may be suggestive or even arbitrary as applied to other items, registration is properly refused if the subject matter for registration is descriptive of any of the goods for which registration is sought.

5. A term or terms are not merely descriptive of goods or services if one must exercise mature thought or follow a multi-stage reasoning process in order to determine the product or service characteristics. 

Rather than taking the “easy” way out by adopting “marks” that are capable of “advertising” the associated goods or services, select suggestive, arbitrary or coined terms to use in combination with the desired descriptive term(s). If Monster Cable had adopted a mark using that strategy, such as “Monster Planet” – “Monster Craze” – or “Pinnacle Monster Accessories” (assuming there are no prior users of those marks or similar mark, of course) it likely would not have been run over by the Board.

"ThumbDrive" Held Not Generic For Flash Drives By U.S. Trademark Trial and Appeal Board: Right Decision?

I’ve seen a bit of discussion lately about a recent decision issued by the U.S. Trademark Trial and Appeal Board (the “Board”) on the issue of trademark genericness. Much of that discussion seems to center around “why would the Board render such a decision?” I’ve had a chance to read the decision and give it some thought. I agree with the Board, on this one.

In the precedential decision of In re Trek 2000 International Ltd., the Board held that the United States Patent and Trademark Office (“USPTO”) failed to meet its burden to establish by clear evidence that the term THUMBDRIVE is generic for flash drives, thus unprotectable as a trademark.

Background

Trek 2000 International sought registration of the mark THUMBDRIVE on the Principle Register, on the basis of acquired distinctiveness, for portable digital electronic devices for recording, organizing, transferring, storing, and reviewing text, data, image, audio and video files; computer software for use in recording, organizing, transferring, storing, and reviewing text, data, image, audio and video files on portable digital electronic devices. Although Trek already owned a trademark registration on the Supplemental Register (the register for marks capable of becoming trademarks) for the mark THUMBDRIVE, Trek sought registration of the mark on the Principal Register (the register for recognized trademarks) on the basis the mark had acquired trademark status through acquired distinctiveness (meaning that consumers had come to recognize the term THUMBDRIVE as referring to the source of the goods). On a side note – it’s my opinion that the coined term THUMBDRIVE appears to be inherently distinctive for flash drives. It probably never deserved to find its way onto the Supplemental Register.

Initially, the examining attorney approved the mark for publication. However, shortly thereafter, the examining attorney requested jurisdiction be restored. Once the application was restored with the examining attorney, she rejected the application on the basis the term THUMBDRIVE is generic for the goods – thus not protectable as a trademark. Trek later appealed that decision to the Board.

On appeal, the Board had to determine, based upon the evidence before it, whether the term THUMBDRIVE is generic for flash drives.

Trademark Law Principles – Genericness

Whether a particular term is generic, and therefore cannot be protected as a trademark, is a question of fact. The determination of whether a term is generic is therefore, based upon the evidence made of record. The critical issue is whether that evidence shows that the relevant purchasers use – or understand – the term sought to be registered to refer to the category of products or services in question. Making that determination involves a two-part inquiry: First, what is the genus or category of products or services at issue? Second, is the term sought to be registered …understood by the relevant public primarily to refer to the genus or category of products or services? Evidence of the public’s understanding of a term may be obtained from any competent source, including testimony, surveys, dictionaries, trade journals, newspapers and other publications.

The primary purpose for finding that a term is generic, thus not eligible for trademark protection, is to prevent competitive harm. As noted by the Court of Appeals for the Seventh Circuit:

To determine that a trademark is generic and thus pitch it into the public domain is a fateful step. It penalizes the trademark’s owner for his success in making the trademark a household name and forces him to scramble to find a new trademark. And it may confuse consumers who continue to associate the trademark with the owner’s brand. …The fateful step ordinarily is not taken until the trademark has gone so far toward becoming the exclusive descriptor of the product that sellers of competing brands cannot compete effectively without using the name to designate the product they are selling.

Ty Inc. v. Softbelly’s Inc., 69 USPQ2d 1213, 1215 (7th Cir. 2003).

It is well established that the availability of other words for competitors to use does not, by itself, transform a generic term into a capable trademark. However, where the evidence of record does not show that competitors use the designation in issue, this may create doubt, depending on the totality of the record, as to whether a term primarily refers to a genus of products or services such that “sellers of competing brands cannot compete effectively without using the name to designate the product they are selling.”

USPTO’s Evidence of Genericness

The examining attorney offered the following types of evidence in support of her position that the mark THUMBDRIVE is generic:

1. Web page printout defining THUMB DRIVE as “one of many terms used in popular language for USB flash drive.”

2. Web page printout defining “USB flash drive” as a “small, keychain-sized flash memory device…also called a thumb drive.”

3. Excerpt from a web page defining “flash drive” as “a portable storage device…also called flash disk, key drive, thumb drive….”

4. Web page printout that says “Do you have an old thumb drive….”

5. An article that says “This thumb drive will self-destruct in 10 seconds….”

6. Commentary web pages that use the term thumb drive as referring generically to flash drives.

Based on the foregoing type of evidence submitted by the examining attorney, she argued that the evidence of record is competent and diverse and adequately shows the relevant consumers’ understanding of the term THUMBDRIVE as identifying a genus of goods such as those identified in the instant application.

Applicant’s Evidence Against Genericness

As you would expect, Applicant respectfully disagreed and offered the following types of evidence:

1. Declaration with U.S. sales figures of 4.3 million dollars for THUMBDRIVE branded products between 2002 and 2007, uses of the mark THUMBDRIVE on the Internet by Applicant and third parties, a statement that Applicant coined the term in 2000, a statement that Applicant co-branded the mark THUMBDRIVE with other third party companies and a listing of Applicant’s “family of THUMBDRIVE marks.” (To read more about a “family of marks,” check out my blog post here)

2. Articles and media usage of the term THUMBDRIVE as a recognized trademark.

3. Wikipedia entry for “USB flash drive” that recognizes the term THUMBDRIVE as a trademark of TREK and a statement that the term “USB flash drive” has become the defacto standard term for these types of devices.

4. Negative dictionary evidence: Merriam-Webster dictionary does not list the term THUMBDRIVE.

5. Samples of competitors’ websites that show use of the term “flash drive” as used as the generic term for the products.

6. Samples of Applicant policing its trademark THUMBDRIVE. Applicant submitted copies of letters to media outlets, whereby those parties agreed not to use THUMBDRIVE generically.

Board’s Decision

The Board noted that to deny the statutory federal registration, there must be clear and convincing evidence of the invalidity of that property right and a sound public interest served by its forfeiture. The Board went on to state that the “protection of the public interest includes ensuring that sellers who must use a particular term to compete effectively can do so.…”

The Board began by answering the first inquiry: what is the genus of goods? The Board concluded that the genus of goods includes those goods listed in the subject application. The Board next considered the second inquiry: the relevant consuming publics’ understanding of the term THUMBDRIVE. Is it perceived as a trademark or nothing more than a generic term for flash drive devices?

The Board first noted that the USPTO must prove with clear evidence that a term is generic. The Board also noted that although the evidence of record shows use of the term THUMBDRIVE as a generic term, it also shows the origin of that term being a trademark and extensive use of that term as a trademark. The Board also observed that the record shows that the term “flash drive” is the commonly used term of art for the subject products. Not looking so good for the examining attorney early on. But wait, there might still be a chance for the examining attorney recover from these early blows…

The Board went on by analyzing the examining attorney’s submitted evidence. It noticed that certain of the media references submitted by the examining attorney involved publications that agreed to stop using the term THUMBDRIVE generically. The Board also observed that with regard to dictionary definitions, the record shows that “the more mainstream references” do not have listings for “thumbdrive,” and two of the three references from the examining attorney’s evidence are definitions for another term, “flash drive,” where “thumb drive” is merely listed as a synonym. The Board was clearly not impressed with that evidence as demonstrated by its following statement: “we review this as weak evidence of genericness.” The Board also noted that while the record includes a few examples of online retailers using the term THUMBDRIVE generically, “it is quite noticeable that there are no examples of competitors using this term, and applicant submitted excerpts from competitors’ websites showing the absence of that term and the use of “flash drive” as the name for the goods.”

With the lack of competitor usage of the term THUMBDRIVE after ten years of use as a trademark, the Board concluded that such lack of use tends to indicate that the term THUMBDRIVE has not fully entered the public domain. It also stated that when a coined term used as a trademark is taken up by the public but not by competitors and the stakes “are the fateful step” of full “eradication” of an applicant’s commercial rights, the evidentiary burden to establish genericness is heavy indeed.  The Board also went on to note the following about today’s technological world:

“Today, with a 24-hour news cycle and 24/7 online global activity, undoubtedly many trademarks are misused repeatedly, perhaps, in part, because there is less time for editing and reflection before news reports or blog posts are released, and, in part, because what was the casual spoken word between people is now the written word posted to the world.”

The final blow to the examining attorney’s evidence came when the Board stated: “In other words, the evidence of record does not demonstrate a competitive need for others to use this term.” As a result, the Board concluded that the evidence creates doubt as to whether the term THUMBDRIVE is generic. As is the case with descriptiveness, any doubt as to whether a term is generic must be resolved in favor of Applicant. So the Board did.

Trademark Titan Blog Takeaways

1. Brand owners that fail to adequately police their trademarks run the risk, in limited situations, of losing their trademarks to the public domain.

2. Brand owners must not only police third-party misuse of their trademarks, but also misuse in the media and in dictionaries.

3. Companies that launch new – never seen before – products must not only adopt brand names for those products, but must also adopt generic names or likely see their once valid trademarks become the name for the genus of product. Remember yoyo and escalator? Yep, once trademarks.

4. Once a trademark becomes genericized, it’s generally too late to worry about it. When consumers begin to use a trademark to refer to the name of the “thing” itself, it’s time for its owner to spring into action and correct the misuse. There is no time for delay.

5.  Select marks that are inherently distinctive (and stay away from already or nearly generic terms), of which I have blogged about many times, including here, here and here.

Trademark Gaff #27: Thinking You Can Protect Generic Terms as Trademarks By MissSpelling Them

Ok. This is a cute move in an attempt to thwart trademark law. Unfortunately, it likely isn’t going to work. Thinking that you can simply misspell a term that is otherwise generic for your products is a fruitless attempt to build trademark rights; and quite frankly, likely a waste of time, money and effort. As Nike® would not say: “Just Don’t Do It!” You will get nowhere fast.

Simply put, if a term is considered generic for your products, a novel spelling of that term is also generic if purchasers would perceive the different spelling as the equivalent of the generic term. The only exception to that rule is if you’re able to successfully misspell a generic term in a manner that the misspelling changes the term’s generic significance. However, such a strategy is unlikely to result in a protectable trademark.

In my own practice I see brand owners attempting this strategy quite often. One of the more common attempts is to misspell the term “cleaner” for cleaners. You’ve probably seen names of cleaners that use the term Kleener. That strategy is not a strategy at all. I’d consider it more of a branding gaff.  The same also holds true generally for descriptive terms.

Strategy: Select Inherently Distinctive Marks Then Add Generic Terms

If you must use a generic or descriptive term or terms in your mark because you want to “tell” the world what your product is, then I give you permission to do so; on one condition, however. You select a distinctive mark (i.e., suggestive, arbitrary or coined) and then simply add a generic term. Think of DieHard® Batteries and CloseUp® Toothpaste. That simple. Now go and build your brand.

Busting Trademark Myths: Part 1 of a Three Part Series

There are a number of myths that exist with respect to trademarks generally and certain trademark rights. Those misbeliefs have the potential for financially devastating young companies and killing new brands right from the gate. Understanding key aspects of trademark law is essential for building strong foundations for companies and their brands. Just as business owners take time to create business plans, they must also take time to understand trademark rights and then, once they do, grab their brands by their horns and not let go.

Myth 1 Busted: The Best Trademarks Are Those That Describe Our Products Because They Save Us Money on Advertising.

Unfortunately, that is generally wrong. Although marketers love descriptive marks because they can “sell” products with little advertising budget, marketers fail to appreciate that descriptive marks are not immediately legally protectable. Meaning that competitors may also use that descriptive “trademark” without trademark infringement. The reason there’s no trademark infringement is because consumers generally don’t perceive descriptive terms as source identifiers (or trademarks) but rather as descriptors about a product or service.  Accordingly, all competitors are free to use those same descriptive terms to promote their products. 

Turning descriptive terms into legally protectable trademarks usually takes many years and big advertising budgets! And some descriptive marks never reach trademark status. Think about that for a minute. A company can use a descriptive term as its “mark” for many years to later discover that it has no trademark rights at all. Even worse, its competitors can freely use its “mark!” Even if descriptive terms do acquire trademark rights (i.e., McDonalds and TV Guide) those rights are limited. For example, competitors may still use trademarks consisting of descriptive terms in a descriptive sense. Take for example the case of Whirlpool’s “Whisper Quiet” trademark for dishwashers. That mark was registered with the U.S. Patent and Trademark Office under section 2(f) of the Trademark Act. Meaning that Whirlpool admitted in its trademark application that its mark “Whisper Quiet” is a descriptive term – but has acquired trademark status through use. Although Whirlpool can stop competitors from using the term “Whisper Quiet” as a trademark, it likely can’t stop competitors from advertising that their own dishwashers are “whisper quiet” too.

The better approach to selecting brand names is to select names that are at least suggestive of the products or services. For example, Grey Hound for bus transportation services, Die Hard for batteries and Close-Up for toothpaste. Then simply add “descriptive” wording to the mark (i.e., “Die Hard Batteries” and “Close-Up Toothpaste”). That simple.

Myth 2 Busted: Whoever Uses A Certain Trademark First Is ALWAYS Entitled To Exclusive Rights.

Unfortunately, that is not the case. Trademark rights in the U.S. (and some other countries) are geographic in nature. Meaning that trademark owners generally only secure trademark rights in those geographic regions in which marks are used (absent securing federal trademark protection).

For example: Company launches product and brand name XYZ in the North East on January 1, 2010. Company decides to accept an attorney’s advice not to seek federal trademark protection and simply “TM it.” As of the product launch date, there were no other similar marks on the market (or filed for at the U.S. Trademark Office) that would pose any barriers to the mark’s use. On January 1, 2012, Company decides to launch its product and brand name XYZ nationally. Unfortunately for Company, another company launched the confusingly similar trademark XYYZ for the same product in March 2010 in California. That company has since expanded aggressively from Western United States through the Midwestern and Southern parts of the U.S. Since trademark rights are geographic, Company will likely be barred from expanding into those geographic regions in which the second company has commenced use of the confusingly similar mark.

Had Company secured federal trademark registration prior to any third party uses of confusingly similar marks, Company would have had the exclusive right to expand nationally with its trademark XYZ.

Myth 3 Busted: Selected Marks Are Available For Use And Registration As Long As There Are No Other Competing Marks With The Same Spelling.

Wrong. A mark is available for use and registration only if there are no other marks considered confusingly similar. For example, Company selects the mark HIGHWAY (word only, no design element) for its transportation and logistics services. Company searches the United States Trademark Office database and finds the registered mark HI-WAYS with a design of a highway for transportation services. Although the marks are spelled differently and the selected mark HIGHWAY does not have a design element, the mark HIGHWAY would likely not be registrable and would likely be considered infringing of the registered mark HI-WAYS and design because the literal elements of the marks are phonetically similar and they convey the same connotation and because the parties services would likely compete within the transportation services field.

Stay tuned for my next post where I’ll bust three more trademark myths, including myths about domain names and “exclusive” rights granted by federal trademark registrations.

Revisiting The Four "D’s" of Brand Name Selection

Brand name selection does not have to be difficult. Proper consideration of brand names does take time and thought-provoking analysis, however. Not considering the following four brand name factors could potentially prove fatal for a company’s new product launch.

1. Distinctiveness – Is the name legally protectable?

Terms/names that are considered to be generic for products are never protectable as trademarks. For example, the term Lawyers.com for providing legal services via online channels will never receive trademark protection. Selecting a generic term as a trademark is brand suicide.

Further, names that merely describe certain attributes of a product will not receive trademark protection upon first use and may never receive trademark protection. Although descriptive terms may become eligible for trademark protection once the “mark” has been put to continuous and substantially exclusive use, that can take years and tens of millions of advertising dollars. I hear marketing folks say that if my mark is descriptive, I don’t have to spend much money on advertising, right? If that were only true. In fact it takes MORE money and resources to advertise a descriptive “mark” because it can take tens of millions of advertising dollars to convert a legally unprotectable descriptive term into a recognizable trademark.

Tip: Select brand names that are legally protectable upon first use.

2. Distinguishable – Is the mark distinguishable from the competition?

Why select a mark that is not distinguishable from the competition? Although a selected mark may be “legally” distinguishable from competitors’ marks, it still may get lost in a noisy marketplace of similar marks.

Companies that use marks similar to their competitors’ marks run the risk of losing sales and potentially developing bad reputations that belong to their competitors. For example, if a competitor’s product with an overall similar name receives bad press or even worse kills someone, that publicity may inevitably rub off on those companies with products with similar names. Why take that risk?

Tip: Only select names that are legally protectable and sufficiently distinguishable from the competition.

3. Da Position – Does the company have a positioning strategy?

A brand name should communicate a product’s positioning strategy. Select a name that begins the positioning process. For example, what products have the slogans “Melts in Your Mouth Not in Your Hand” and “The Uncola?” Those slogans positioned their products at the top in their respective categories. Also consider whether a slogan can re-position the competition. Think about how Procter and Gamble re-positioned Listerine with the simple slogan “Medicine Breath.” Re-positioning a competitor with a slogan is one way of gaining market share.

Tip: Select a mark or slogan that will capture the position or niche and then don’t let it go!

4. Da Attributes – What are prospective purchasers looking for?

Selecting a mark that suggests an advantage of a product or a result that consumers want from a product can be a game changer. Rather than look at how a company perceives its own product, a company should look at how consumers already perceive it’s product or similar product, then look for the solution in the mind of consumers. Then select a name that reinforces consumers’ perceptions. What do consumers want from car batteries, for example? Of course, they want a long-lasting dependable battery. That’s why the mark “Die Hard” has been a huge success.

Tip: Select marks that convey attributes desired by consumers.