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Organic Trademarks

With all the rage about Organic products and services weighing on our minds recently, I thought it would be a good time to address how this applies to trademarks. While the label of a product or the website for a service may say ORGANIC, does this mean they really ARE organic? Well, the USPTO is taking issue with that as well with their clause on “Deceptive Matter”. Here’s what they have to say about it:

“[There] is an absolute bar to the registration of deceptive matter on either the Principal Register or the Supplemental Register. Neither a disclaimer of the deceptive matter nor a claim that it has acquired distinctiveness can obviate a refusal on the ground that the mark consists of or comprises deceptive matter.

A deceptive mark may be comprised of (ANY ONE of the following):

(1) a single deceptive term;

(2) a deceptive term embedded in a composite mark that includes additional non-deceptive wording and/or design elements;

(3) a term or a portion of a term that alludes to a deceptive quality, characteristic, function, composition, or use;

(4) the phonetic equivalent of a deceptive term; or

(5) the foreign equivalent of any of the above

In laymen’s terms what it means is that a mark may not contain the word ORGANIC, or any spelling or phonetic variation thereof, unless the product or service truly is ORGANIC by definition. ORGANIC can generally be defined as a product or service produced WITHOUT the use of chemical fertilizers, growth stimulants, antibiotics or pesticides. Therefore, when a trademark name includes the word ORGANIC, the consumer naturally assumes it has conformed to the definition of the word. It is this assumption on the part of consumers that has prompted the USPTO to start handing out trademark refusals based on deceptiveness.

When an application comes across the desks at the USPTO that includes ORGANIC in the title, the applicant is required to state that the product or service is, in fact, Organic in nature. Here is an example of the USPTO’s response to one such application, which is now abandoned due to failure to respond:

“In this case, applicant’s mark includes the wording “ORGANIC,” which indicates that the goods contain organic ingredients. This feature or ingredient is important to a purchasing decision because consumers looking to purchase organic products will believe the applicant’s goods to be made from organic ingredients.

If the goods do not, in fact, contain organic ingredients, the applied-for mark will deceive the public as to an important factor in its purchasing decision...If the goods do contain organic ingredients, applicant can amend the identification of goods to state this fact, and the refusal will be withdrawn.”

Of course, there are many other situations in which USPTO would refuse a mark based on deceptive matter, but the use of ORGANIC as part of a name is just one example that is the basis for trademark refusal.

So, while consumers continue to see ORGANIC claimed on products and services more often, we can be assured that at least the USPTO is making steps to ensure we aren’t being deceived or misled while trying to make the conscious choice to go “green.”

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Happy St. Patrick's Day!

I hope all of you out there have a fun AND safe St. Patrick's Day! Let's take a look at some St. Patrick themed trademarks:

Here's a film production company named Saint Patrick, which, quite appropriately is located in Ireland. Check out their fun site here.

Killian's Red is the O'fficial Beer of St. Patrick's Day, at least according to MillerCoors trademark.

Need something to go with that beer? Try Saint Paddy's Cooked Corn Strips.

What is Immoral or Scandalous Matter?

Some may think this is a very subjective definition, but I assure you, the USPTO sees it differently. Here is what they have to say about it:

“Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), is an absolute bar to the registration of immoral or scandalous matter on either the Principal Register or the Supplemental Register.

Although the words “immoral” and “scandalous” may have somewhat different connotations, case law has included immoral matter in the same category as scandalous matter.

In affirming a refusal to register a mark as scandalous under §2(a), the Court of Customs and Patent Appeals noted dictionary entries that defined “scandalous” as, inter alia, shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation. McGinley, 660 F.2d at 486, 211 USPQ at 673 (mark comprising a photograph of a nude, reclining man and woman, kissing and embracing, for a “newsletter devoted to social and interpersonal relationship topics” and for “social club services,” held scandalous). The statutory language “scandalous” has also been considered to encompass matter that is “vulgar,” defined as “lacking in taste, indelicate, morally crude.” In re Runsdorf, 171 USPQ 443, 444 (TTAB 1971).

Dictionary definitions alone may be sufficient to establish that a proposed mark comprises scandalous matter, where multiple dictionaries, including at least one standard dictionary, all indicate that a word is vulgar, and the applicant’s use of the word is limited to the vulgar meaning of the word...(1-800-JACK-OFF and JACK OFF held scandalous, where all dictionary definitions of “jack-off” were considered vulgar) ...(Board sustained opposition finding that SEX ROD was immoral and scandalous under §2(a) based on dictionary definitions designating the term “ROD” as being vulgar, and applicant’s admission that SEX ROD had a sexual connotation)...(multiple dictionary definitions indicating BULLSHIT is “obscene,” “vulgar,” “usually vulgar,” “vulgar slang,” or “rude slang” constitute a prima facie showing that the term is offensive to the conscience of a substantial composite of the general public).”

A lot of verbiage to read in an attempt to get a feel for “scandalous” or “obscene”, I know, but the USPTO is pretty strict on their definition. And it’s no use using your creative spelling variations such as FUK or SH*T, the USPTO isn’t going to be fooled or lenient. Both of those variations are Abandoned marks after the USPTO had this to say:

Refusal: Immoral or Scandalous Matter

Registration is refused because the proposed mark consists of or comprises immoral or scandalous matter:

Certain commonly “scandalous”, or at least questionable words or phrases, may be allowed depending on the connotation and/or industry. For example, DICK, a series of hand tools, is a registered trademark. Since no evidence of a refusal for scandalous matter is recorded, I can only attribute this to the fact that Dick is a common nickname for Richard and that the product is nothing at all to be perceived as immoral or scandalous. I am sure it would be a different outcome if the product was, for example, a line of adult toys.

On the same token, we must consider that an application is at the mercy of the Examining Attorney at the USPTO that receives the application. An example is the mark YOU [heart] COCK, refused and now abandoned on the basis of immoral and scandalous matter, while COCK BRACELET, sporting a logo inclusion of a rooster, is registered for jewelry, namely bracelets.

So, you see, there is a small window of gray area, again depending primarily on connotation, but also on the subjective opinions of the specific Examining Attorney. A good rule of thumb, however: don’t expect to get a registered trademark and make a million bucks on your favorite, crude, insulting cuss rant that you coined over a couple of drinks with your buddies. Have fun, but keep it clean, folks!

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Suggestive Marks

One of our amazing researchers, Heather Roberts, took some time to write this article, which I'm extremely thankful as time has been limited as of late. Heather wrote a few more great articles that I'll be sharing during the rest of the week. Thanks Heather!

The strength of a particular trademark is gauged according to the Distinctiveness & Descriptiveness Continuum. To see a chart, click here.

What is a Suggestive Mark?

Here’s what the USPTO says: “Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services...(SNO-RAKE held not merely descriptive of a snow-removal hand tool)...(QUIK-PRINT held merely descriptive of printing services)...(BUG MIST held merely descriptive of insecticide).

Suggestive marks, like fanciful and arbitrary marks, are registrable on the Principal Register without proof of secondary meaning. Therefore, a designation does not have to be devoid of all meaning in relation to the goods/services to be registrable.” Basically, suggestive trademarks contain words or words that are seen as suggesting the product or service being offered but are not directly descriptive.

Should I Choose a Suggestive Mark?

While suggestive marks can walk the fine line of descriptive, it is certainly possible to find a suggestive mark that will lead your consumer to a certain conclusion of what product or service you offer by merely looking at the name.

While keeping in mind the issues of descriptive marks and making a conscious lean toward a suggestive mark, it will be something you’ll need to decide in terms of your industry, your customers, your competitors, your customers and your overall plans. Some of our clients really WANT to find a name that does the explaining for them in terms of what the service or product is at a glance at the name. Other times, our clients want something very unique without suggestion to the service or product within the name.

While Suggestive marks don’t necessarily “tell” a person what the product or service is, they do tend to make a very strong impression of what it might be. This may help cut down on explaining what the product or service is in the way or marketing, website content and advertising space.

What to Avoid When I Create a Mark:

Creative a suggestive mark is similar to that of creating a business name. You'll have to keep in mind all of the issues outlined above (industry, customers, plans, etc.). But when it comes to suggestive marks, don’t rely simply on spelling variations of a descriptive word or words associated with your product or service.

Because the USPTO will assign what is called a PSEUDOMARK when presented with a trademark application with unconventional spelling, this can be a curse to the success of your suggestive mark. We’ll explore PSEUDOMARKS in more detail another time, but what it means in laymen’s terms is that the USPTO is recognizing an unconventional spelling to mean a very conventional word or words.

As with the example shown above, the trademark Sno-Rake for a snow-removal hand tool is registrable on the Principal Registrar, however, if that description had read: “snow-removal rake” then the mark would likely be refused for being merely descriptive.

Here is a good rule of thumb:

* If any word or words of the suggestive mark also appear in the description of the product or service, even if spelled unconventionally, it is likely that the mark will be deemed descriptive.

If you want a suggestive mark, my suggestion (pun intended) is to put on your thinking cap, find variations on the name you’ve got in mind using a thesaurus and/or dictionary and play with variations of 2 or 3 word-combos. Always be sure to check your competition! If your competition has a variation on a suggestive mark that is similar to what you want to register, take heed as you don’t want your customers going to them on accident. Be creative, try out your choices on your friends and family, use them as your focus group and by all means, have fun with it! Happy suggestive mark hunting!

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Arbitrary Trademarks

The strength of a particular trademark is gauged according to the Distinctiveness & Descriptiveness Continuum. To see a chart, click here.

Arbitrary marks are not as strong as fanciful marks but they are still strong in terms of trademarks. Choosing an arbitrary mark certainly makes the trademark filing process easier, provided, of course, that the mark is legally available.

What is an Arbitrary Mark?

Here’s what the USPTO says:

“Arbitrary marks comprise words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality, or characteristic of the goods or services.”

This is an area that confuses folks a bit. I know that’s a question we get a lot – I can’t trademark a name that’s in the dictionary, right? Well, like anything with trademarks, it’s a gray area. If the product is apple juice then, no, the name APPLE cannot be filed for a trademark as it’s descriptive of the goods. However, if the product is a line of computers then, yes, APPLE can be filed for a trademark.

As long as your arbitrary word is just that – arbitrary – in relation to your goods/services AND the name is legally available, you’ve got a strong mark on your hands!

How do I Choose an Arbitrary Mark?

Choosing an arbitrary mark is similar to that of creating a business name. When it comes to arbitrary marks, your imagination is really needed. Here are some helpful guidelines:

1) Write down all of the adjectives that you want your customer to associate with your product or service.

2) Research your competitors - how often are arbitrary words used? Do most of your competitors use descriptive terms? What kind of keywords/keyphrases are used when searching for your product or service online?

3) What's the personality of your business? Is it serious and formal? Is it fun and funky? Describe your business as if it were a friend of yours.

Those are just some ways to go about finding the "feeling" that you want your product or service to convey. Once you’ve got that set, start thinking about all the different words that convey that feeling.

For instance, if your business is fun and funky words/phrases like Grave Concerns or Staid are probably not a good idea. Conversely, if your business is serious and formal, you’ll probably want to stay away from words like Bubbles or Poodles. Most of all, have fun with it!

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Fanciful Trademarks

The strength of a particular trademark is gauged according to the Distinctiveness & Descriptiveness Continuum. To see a chart, click here.

On the very left of that continuum are fanciful marks, which arguably are the strongest sort of marks to file. Filing these types of marks increase the likelihood of trademark registration (provided, of course, that the mark is legally available).

What is a Fanciful Mark?

Here’s what the USPTO says: “Fanciful marks comprise terms that have been invented for the sole purpose of functioning as a trademark or service mark. Such marks comprise words that are either unknown in the language (e.g., PEPSI, KODAK, and EXXON) or are completely out of common usage (e.g., FLIVVER).”

Basically, fanciful trademarks are either made up words or words that are seen as archaic.

Should I Choose a Fanciful Mark?

While fanciful marks are certainly the strongest types of trademarks, does it necessarily mean you should choose a fanciful word for your service or product? This is something you’ll need to decide in terms of your industry, your customers, your competitors, your customers and your overall plans.

Fanciful marks don’t necessarily “tell” a person what the product or service is so informing the public of that might require extensive work on your end. For a fantastic article about this very subject, I suggest reading Monster Amazon Crocs - Why Creative Brand Names Work Best by Phillip Davis.

How do I Create a Fanciful Mark?

Creative a fanciful mark is similar to that of creating a business name. You'll have to keep in mind all of the issues outlined above (industry, customers, plans, etc.). But when it comes to fanciful marks, your imagination is really needed. Here are some helpful guidelines:

1) Write down all of the adjectives that you want your customer to associate with your product or service.

2) Research your competitors - how often are fanciful words used? Do most of your competitors use descriptive terms? What kind of keywords/keyphrases are used when searching for your product or service online?

3) What's the personality of your business? Is it serious and formal? Is it fun and funky? Describe your business as if it were a friend of yours.

Those are just some ways to go about finding the "feeling" that you want your product or service to convey. Now when it comes to actually creating the fanciful mark, you can peruse through dictionaries of archaic words should you want to go that route.

If you want a completely made-up word, think about words and letters in terms of appearance and sound. For instance, many pharmaceutical companies employ common sounds (e.g. Vs, Xs and Zs are often used). Start with two or three letter combos and most of all, have fun with it!

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A Trademark Touch

Check out this interesting article on 'touchmarks' written by Stephen R. Baird, Esq. He defines what a touchmark is as well as the various challenges for claiming a 'touchmark.'

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What a Tweeting Mess!

Back in August, I posted about Twitter filing for the mark Retweet. The USPTO has since sent Twitter's legal counsel an Office Action suspending Retweet's application based on prior filings. However, let's take a closer look at these filings & perhaps we can figure out where Retweet is going to end up - abandoned or a real, live Federal trademark.

Here's what the USPTO is telling Twitter:

"Although the examining attorney has searched the Office records and has found no similar registered marks which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), the examining attorney encloses information regarding pending Application Serial Nos. 77724346, 77802071, 77797006, 77697186, 77749897, 77746004, 77725866, 77701645, 77695071...

Action on this application will be suspended pending the disposition of these application upon the applicant’s response to the office action."

Wooo, that's a whole lot of sevens! Okay, let's look at each one, in order...

TweetLaw is currently suspended pending the outcome of Tweet, which is owned by Twitter.

tweetdealz is currently suspended pending the outcome of a whole lot of filings, which includes Tweet.

TweetTV is currently suspended pending the outcome of quite a few filings. And yup, Tweet is one of them.

Cotweet is being published for opposition. This filing went to publication on the 3rd of this month. So far, no oppositions have been filed. If no oppositions are filed, this filing will move to registration.

TweetNetworking is currently suspended pending the outcome of 7 filings, which include Tweet.

tweetworking is also suspended because of other filings. And guess what? Tweet is in the mix.

TweetDeck is suspended because of Tweet.

tweetPhoto has filed using Twitter's pretty distinctive looking bubbly blue font but their refusal has to do with descriptiveness: "The relevant definition of ‘tweet’ is “[a]n entry posted on the microblogging service Twitter.” See attached. The relevant definition of ‘photo’ is “photograph.” See attached. Thus, the term ‘tweetphoto’ means an entry posted on Twitter to which a photograph is attached."

TweetMarks looks pretty to good to go except the USPTO is waiting for clarification on a specimen from them. They have until December 9th of this year to respond or the mark becomes abandoned.

Wowza. Okay, let's take a step back & look at these filings. A good chunk of them are suspended based on Twitter's filing for Tweet so let's look at that filing:

"Action on this application will be suspended pending the disposition of Application Serial Nos. 77695071, 77697186, and 77701645 upon receipt of the applicant’s response resolving the following."

TweetMarks, CoTweet, and tweetPhoto are the marks mentioned. Look familiar?

So what do you think the outcome of Retweet or Tweet will be?

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Trademarks for the Troops

A hearty THANK YOU from all of us at TradeMark Express to our troops.

Since it's Veteran's Day, I thought it'd be nifty to take a look at filed trademarks that are about the vets.

Hope for Veterans is owned by Community Hope and "is a transitional housing program...to provide a safe, supportive environment wherein former servicemen and women can start rebuilding their lives." Find out more about them here.

Recruit Veterans "is a service-disabled veteran owned and operated staffing and recruiting firm." Read more about them here.

Thank a Vet is a pending trademark for a clothing line. Buy the clothes here.

Trademarkia

Launched in September of this year, Trademarkia is a free, incredibly easy to use search engine that allows users to search the USPTO database of Federal trademarks, be they live or dead.

Two of my favorite features:

* Logo Themes: The USPTO does offer the capability to search logos on their site but it's a bit cumbersome. Here's an article about how one can do so. But Trademarkia's interface is much easier & really, it's just neat to browse through logos.

* Trademark Categories: aka Goods/Services Each classification is accounted for here & each has it's own snazzy design leading you into the International Classification. Once you're in a class, you can then look at Federal trademarks alphabetically.

Now it should be said that while Trademarkia is super snazzy, very easy to use & just overall cool looking -- this is a search of the Federal trademarks ONLY, meaning we're missing State trademarks & Common-Law databases.

Also another thing I noticed is in conducting my SAM test, the engine seems to work pretty similar to the USPTO, which means the user will need to be sure to check all possible variations of the mark when conducting this preliminary search.

SAM Test

USPTO Flaw #1, Sound: Trademarkia, like the USPTO, brings up 3 marks for IShine but not Ice Shine.
USPTO Flaw #2, Appearance: Again, same results as the USPTO - Trucool but not Turcool
USPTO Flaw #3, Meaning: This one was a bit odd as Trademarkia resulted in only 1 hit whereas the USPTO comes up with 23. Not sure what happened there.

Even given the above, I still strongly recommend folks use Trademarkia as a preliminary clearance Federal trademark search engine. It's far & above easier to use than the USPTO. Then once your mark clears that preliminary step, you can move on to the comprehensive part of the trademark process.

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Distinctiveness & Descriptiveness Continuum

Here's a visual snapshot of the USPTO's Distinctiveness & Descriptiveness Continuum. Click to view a larger version. I hope it makes the PTO's guidelines a little clearer plus I like charts, graphs & whatnot :)

So far I've written about merely descriptive marks so I'll be sure to hit the other sections & re-post this visual with links to each new post.

Descriptive Trademarks

The title here is a bit misleading as descriptive words are not typically allowed to be registered on the USPTO’s trademark Principal Register. Let’s back up a little...

One of the main points (some would argue THE main point) of having a Federal trademark is to have exclusive rights to a name, a logo or a slogan within your industry. Given that, words that “merely describe” the goods or services are not going to be allowed.

There are two main reasons the USPTO provides:

1) “to prevent the owner of a mark from inhibiting competition in the sale of particular goods”

What this means: The owner of the descriptive word(s) can’t trademark it as it could create a stranglehold, of sorts, on the word(s) within the industry. For instance, the word “trademark” is disclaimed on our Federal trademark registration on TradeMark Express, meaning we’re not claiming exclusive rights to the word “trademark” as it’s a descriptive word for our industry.

2) “to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products”

What this means: People should have the freedom to use descriptive words in advertising or in describing their goods/services. Using the example above, other companies offering trademark services should be able to use the word “trademark” to describe their services, in their advertising, etc.

So How do I Know if my Name is Descriptive?

As with anything trademark, it’s never black & white. Each situation is going to vary from the next. The basic litmus test is “does this word describe the product and/or service?” and if the answer is yes, then you’ve most likely got a descriptive name on your hands.

It is not necessary that a term describe all of the purposes, functions, characteristics, or features of a product/service to be considered merely descriptive; it is enough if the term describes one significant function, attribute, or property.

Here are some examples provided by the USPTO:

• APPLE PIE held merely descriptive of potpourri (most likely because the words describe the scent)
• BED & BREAKFAST REGISTRY held merely descriptive of lodging reservations services
• MALE-P.A.P. TEST held merely descriptive of clinical pathological immunoassay testing services for detecting and monitoring prostatic cancer

If you’d like help determining if your name is descriptive, please leave a comment or email me at dc@tmexpress.com

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Brainstorming Tips for Creating a Business Name

Here's a few things to keep in mind:

1) Keep your industry, your clients/customers, your advertising plan in mind.

2) The more unique & distinctive a name, the higher the chances that the name is legally available for use. And the higher the chances of obtaining the trademark.

3) Think of your business as having a personality. What kind of image do you want your business to portray?

Specific brainstorming tips:

Think about what you want but more importantly, think about what you DON'T want. If you don't want a 3-word name, don't bother with those. If you don't want non-English words, don't bother with those & so on and so forth.

What are the "types" of names you like? Think about words in their simple forms, e.g. adjectives, Latin roots, mythological names, etc. Compile a listing of the types & then seek out resources, such as books or sites, which specialize in those types.

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Free Preliminary Trademark Search

TradeMark Express implemented a new service recently - ONE free preliminary USPTO search completed over the phone with you. We always conduct a preliminary USPTO search before we start comprehensive search but this new feature does NOT require that an order be placed first.

If you'd like your ONE free preliminary USPTO trademark search, contact me: shannon@tmexpress.com; Contact Page; 800.340.2010