BRANDING Archives - Page 4 of 4 - Martin IP Law Group

BRANDING, INTELLECTUAL PROPERTY, TRADEMARKS

THE GENERICIDE OF A BRAND – TRADEMARK OWNERS WHO FAIL TO ENFORCE THEIR MARKS COULD SEE THEIR RIGHTS “BANDERSNATCHED”

Genericide is the act or process whereby a trademark term becomes so commonplace for the goods or services associated with it that the owner’s rights are diminished or lost as a result. Examples of once robust trademarks that fell victim to genericide include ASPIRIN (originally a trademark of Bayer declared generic in the U.S.), ESCALATOR (originally trademarked by Otis Elevator Company), THERMOS (declared generic in the U.S. in 1963) and LINOLEUM (declared generic following a lawsuit for trademark infringement in 1878). Genericide can be devastating to a brand that a company has spent significant time and money to develop.

One way to avoid genericide of a trademark is to timely obect to other’s generic misuse of the mark. Generally, this is done through the sending of cease and desist letters, and, sometimes through litigation to enjoin such misuse. Last month, Netflix released a new interactive narrative program entitled “Black Mirror: Bandersnatch” where the viewer makes decisions for the main character. In Bandersnatch, the decisions the viewer makes range from the mundane, such as whether to listen to Thompson Twins or Now 2, to more difficult decisions, such as whether to chop up a body or bury it. Bandersnatch is set in 1984 and revolves around a young video game programmer’s development of a video game based on the interactive narrative book “Bandersnatch” that lets the user make choices that affect the outcome of the game (much like the show itself).
In one early scene in the show, the main character refers to the Bandersnatch book as a “choose your own adventure book.” Chooseco, a small publishing company based in Vermont, is the owner of several U.S. Trademark registrations for CHOOSE YOUR OWN ADVENTURE which relate to it’s interactive narrative series of books for young adults. Last month, Chooseco filed suit against Netflix seeking $25 million dollars in damage for unauthorized use and disparagement of its registered trademarks. Chooseco effectively had no choice (no pun intended) but to take action against Netflix. If it would have ignored the alleged misuse, their mark would almost certainly be sliding down that slippery slope toward genericide. However, as Bayer AG discovered in 1922, bringing suit carries risks as well. Netflix will almost certainly raise the defense of genericism to the alleged infringement. So, ultimately, the court may decree the mark to be generic despite Chooseco’s attempts to avoid genericide by filing the action in the first place.

So, other than objecting to the misuse of the mark by others, how does the owner of a trademark or service mark prevent their mark from becoming generic? Wherever possible, the mark owner should give proper notice that the mark is registered. This is typically done through use of the ® symbol for marks registered with the U.S. Trademark Office or ™️ for marks protected by common law. The mark owner should never use, nor permit others to use, the mark as a noun (Kleenex instead of KLEENEX tissue) or verb (i.e. “Google it” instead of perform an internet search using the GOOGLE search engine), and it’s always best to use the mark in connection with the generic term (i.e. BAND-AID adhesive bandages). The mark should also always be displayed in all capital letters or a distinctive font which differentiates it from the surrounding text. In addition, unless the mark is already in the plural form, it should never be made plural (i.e. not two Cokes, but two COKE beverages). Lastly, if the mark is in danger of falling prey to genericide, the owner may want to educate the public as to their rights and the proper usage. One such clever campaign conducted by Xerox advised consumers that “you can’t Xerox a Xerox on a Xerox. But we don’t mind at all if you copy a copy on a Xerox®️ copier.”

While it’s a great thing for a mark to be well known and widely used, don’t let your mark get so well known and widely used that it becomes the generic or common name for a particular product or service. If you follow these guidelines from the start, it is unlikely that your mark will fall victim to genericide.

We are always here ready to help you acquire, protect and enforce your trademark rights. If you need to register a brand name, or if your brand is in danger of becoming generic, contact us to find out how to best protect your valuable asset.

BRANDING, COPYRIGHTS, INTELLECTUAL PROPERTY, TRADEMARKS

Rocket City Trash Pandas – A baseball team in Northern Alabama or a Guardian of the Galaxy?

After several months of consideration and public polling, on September 5, 2018 the town of Madison, Alabama (a suburb of Huntsville, nicknamed “The Rocket City” for its close association with U.S. space missions) and team owner BallCorps, LLC announced the name of its new AA baseball team, which will be known as the “Rocket City Trash Pandas.” For those of you unfamiliar with the modern slang terminology, “trash panda” is a commonly used term for a raccoon. The name makes sense, right? Rocket City for the region where the team will be based and Trash Pandas for an animal (commonly used as mascots for many sports teams) that is indigenous to the region. The name is fun, catchy and creative and perfectly suitable for use in connection with a baseball team in this universe. But, for a moment, let’s consider the Marvel Universe®.

Marvel Characters, Inc. currently holds, or is pursuing federal trademark registrations on almost 1,500 different marks and has been granted almost 10,000 federal copyright registrations. Included in that mix are trademark and copyright registrations to the Guardians of the Galaxy®️ movie and characters, including Rocket Raccoon®️, depicted in the second photo. When compared to the first photo that accompanied the Rocket City Trash Pandas announcement, we think you will see why we have concerns. Will a company that spends millions (perhaps billions) of dollars creating, developing and marketing its characters sit idly by while a AA baseball team in Northern Alabama uses images of an armor-clad Rocket Raccoon®️ to brand its new baseball team called the Rocket City Trash Pandas? We would be surprised if they do – Marvel even has a page on its website for people to report suspected infringement.

In the Trademark Universe, the owner of a mark may be provided with protection for a character’s name, physical appearance and distinctive designs and perhaps other qualities. Famous marks, which invoke an immediate connection in the minds of the consumers with a specific product or service and the source of that product or service, are given a broader scope of protection than ordinary marks. Examples of famous trademarks are APPLE, GOOGLE, MICKEY MOUSE and MAGIC KINGDOM. Acquiring famous mark status “often requires a very distinct mark, enormous advertising investments and a product of lasting value.” It is more than plausible that Marvel could make a case that its Guardians of the Galaxy®️ and Rocket Raccoon®️ marks have achieved “famous mark” status.

Even in the absence of a likelihood of confusion, the owner of a famous mark can bring an action for trademark dilution, which allows the owner of a famous trademark to forbid others from using that mark in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthorized use of another’s trademark on products or services that do not compete with, and have little connection with, those of the trademark owner. So it is not inconceivable that a famous trademark used by Marvel to refer to a comic book character might be diluted if another company began using a similar mark to refer to a baseball team.

In some ways the Copyright Universe presents a parallel universe. Under federal copyright law, it is well settled that stock characters are free for anyone to use. However, characters that are depicted graphically or visually, such as in comic books, television, or film are more likely to be extended copyright protection. Thus, a stock picture or graphic of a raccoon as part of the Trash Pandas logo would not likely constitute an infringement. However, as we can see from the second photo, the Rocket Raccoon character is not a “stock” character. Rather, there are elements to the character that render it protectable under copyright law – the particular look and features of the character’s face and the clothing are a few examples. Comparing the two photos above raises some serious issues of copyright infringement should BallCorps use the proposed logo design or one similar to it. Use of a stock image of a raccoon, or one that doesn’t look so strikingly similar to the Rocket Raccoon®️ character would diminish the potential for copyright infringement significantly, but may not be enough to avoid allegations of infringment which can be very expensive to defend.

Apparently BallCorps is not totally oblivious to issues of intellectual property regarding the naming of its team. On July 26, 2018 it filed two applications with the U.S. Trademark Office for registration of the name TRASH PANDAS. If the mark passes muster with the trademark examiner, it will be published for opposition for 30 days in the Official Gazette. It would not surprise us in the least to see Marvel oppose registration of this mark on the basis of potential dilution of its marks. We will continue to monitor the status of these applications as they progress and provide updates along the way.

What lessons can we take from this situation? When starting a new business and branding for that business, file early and often. The US Trademark Office allows an applicant to file an application for registration based on “intent to use” the mark, so actual use is not required. Thus, it may be possible to obtain approval of the mark before you even begin using the name/mark. The applications should also cover any and all goods AND services you intend to offer under the mark. You should also register your logo, slogans and other branding associated with your products and services. A clearance search and opinion from an experienced intellectual property attorney can also give you insight into the rights of others who may have similar marks, which could avoid costly litigation in the future. If you are starting a new business, launching a new product, or re-branding an existing company or product, contact us to ensure your path is clear and your assets are protected.

BRANDING, ENTREPRENEUR, INTELLECTUAL PROPERTY, START UP, TRADEMARKS

RESPONDING TO A REFUSAL TO REGISTER A TRADEMARK BASED ON DESCRIPTIVENESS

Even if the mark you are attempting to register is different enough from other registered marks such that there is not a likelihood of confusion between your applied for mark and a registered mark, registration may be refused if the mark is not distinctive. Distinctiveness of a mark generally lies on a spectrum, with inherently distinctive marks (registerable) on one end of the spectrum, and generic marks (unregisterable) on the other end. Inherently distinctive marks include those marks that are fanciful (made up terms such as EXXON, GOOGLE, ADIDAS), arbitrary (words that have no relation to the product or service such as APPLE for computers), or suggestive (words that provide a hint to a particular quality or feature of the product or service). Inherently distinctive marks are registrable without proof of acquired distinctiveness. Generic marks ( such APPLE for the fruit) are those words that are commonly used to identify the product or service, and as such are not registerable. Somewhere in between lie descriptive marks – those marks that describe a characteristic of the goods or services. Descriptive marks are only registrable if they have acquired distinctiveness or secondary meaning.

One of the more common grounds for rejection of an application for registration of a trademark is that the mark is “merely descriptive” of the trademark owner’s goods or services. In response to an initial (first office action) descriptiveness refusal issued against an application, the trademark owner has four options: (1) file a response to the office action arguing that the mark is inherently distinctive, (2) accept that the trademark is descriptive and provide evidence that it has “acquired distinctiveness”, (3) accept registration on the Supplemental Register, or (4) abandon the application. The decision on which of these options is best depends on the descriptiveness of the trademark, the length of use, the past sales and marketing, and the trademark owner’s budget. However, each of these has its hidden weaknesses that a trademark owner should discuss with an experienced trademark attorney before making their decision.

Filing a Response to the Office Action Arguing the Mark is Inherently Distinctive

The line between descriptive marks and suggestive marks is often blurry and an experienced trademark attorney can assist you in determining (and arguing to the Trademark Office on your behalf) on which side of the line your mark falls. There are a number of decisions out there where Federal Courts and/or the Trademark Trial and Appeal Board (TTAB) have established guidance as to where that line should be drawn in certain situations. An experienced trademark attorney can apply that law to the facts of your application and, in some cases, can make an effective argument that your mark is suggestive (registerable) rather that descriptive (not registerable). If there is a possibility of overcoming the rejection, this option should always be on the table and included in a response to the office action.

Submitting Evidence of Acquired Distinctiveness

Another option in responding to a rejection based on alleged descriptiveness is to submit actual evidence that the applied-for mark has acquired distinctiveness in connection with your goods or services. This can be done alone, or in combination with a response arguing that the mark is inherently distinctive. Acceptable evidence of use can include:

advertising and promotional materials that specifically show or promote the applied-for mark in use as a trademark and source-identifier;
dollar figures for advertising devoted to such promotion;
dealer and consumer statements indicating recognition of the applied-for mark as a trademark;
other evidence that shows consumer recognition of the applied-for mark as a trademark for applicant’s goods.

Unless your mark is extremely descriptive, if it has been in use for five years or more, the trademark office will generally allow trademark owner to claim acquired distinctiveness under the Lanham Act’s five-year presumption by filing an affidavit attesting to five years use with no additional evidence. If the trademark is extremely descriptive or if it hasn’t been in use for five years, the trademark owner can provide evidence of customer affidavits, sales, advertising, earned media and more to show that it has met this threshold.

Registering on the Supplemental Register

Another option would be to accept the trademark examiner’s assertion that the mark is merely descriptive, but amend the application to seek registration on the Supplemental Register. However, marks registered on the Supplemental Register do not receive all the protections given to those registered on the Principal Register. Specifically, placement on the Supplemental Register does not provide constructive notice of ownership or a presumption of ownership in the event of infringement litigation, does not support a later claim of incontestable status, does not imply the right to exclusive use of the mark, nor does it allow the mark owner to request exclusion of imports by the Bureau of Customs. It does allow the registrant to use the federal registration symbol ® and it serves as a bar to subsequent registrations that would create a likelihood of confusion.

Abandoning the Application

While this may seem obvious, it is important to note that a trademark application may be withdrawn without prejudice at any time before it is adjudicated before the TTAB in an appeal. This means that a trademark owner may abandon its trademark application for any reason and file it again sometime in the future. This approach has a few clear drawbacks: the trademark owner will have no federal protection for their trademark and will have to rely on their common-law rights, which apply to the geographic area where a trademark owner can show it has trademark recognition of its mark. This will make enforcement of the trademark difficult and potentially expensive. There will also be a public record that the application was abandoned. This will not be a legal admission of any kind, but could provide an opposing party with additional ammunition in a legal dispute.

There any many factors to consider when deciding the best way to deal with a descriptiveness refusal. If a trademark is truly descriptive (i.e. there little to no chance of winning on an appeal), then providing evidence of acquired distinctiveness (if possible) or amending to the supplemental register may be the only way to gain any federal rights in the descriptive mark. However, for a company faced with this decision, it is always important to consider the long-term consequences. Remember that every huge company was once a startup facing similar decisions about their trademarks and a trademark registration is only as valuable as its owner’s ability to enforce it against potential infringers. A trademark owner should consider all of the options before making a decision that could affect the long-term strength and scope of their trademark.