Weak Marks Leave Only Stylistic Elements Protected: DIY Auto Edition

It is usually not good when the trademark office considers the whole text of your mark to be generic, as the registration for DIY AUTO REPAIR SHOPS demonstrates below. When you want to use a generic element in your mark to describe the goods or services offered, it is usually better to combine that with a unique text element so you have something protectable, to which your reputation can attach.

DIY AUTO, LLC applied to register the DIY AUTO and design, shown below, for the services of providing a website featuring information about automotive maintenance and repair service.

The Examining Attorney refused registration based on DIY AUTO REPAIR SHOPS and design, shown below, registered for the services of a do-it-yourself vehicle repair shop.

 

The Trademark Trial and Appeals Board reversed the refusal and allowed the application on DIY AUTO to register. The board said that “we find that the purchasing public, who are interested in repairing their own vehicles, will understand the terms DIY, DIY AUTO, and DIY AUTO REPAIR in the generic sense, rather than as indicating a particular source of do-it-yourself auto repair services.”

Here, given DIY AUTO and DIY AUTO REPAIR are generic, all that is left for the trademark registrations to protect is the stylistic (logo) presentation–i.e. the blue and white badge-like logo of the first mark and the orange and blue badge-like logo of the second mark–but not the text alone. That’s not a lot of protection considering consumers can use or encounter the mark audibly or orally. Indeed, words are often used by customers to refer to or request goods/services. See e.g. TMEP 1207.01(c)(iii).

The terms DIY AUTO are telling customers what they get in connection with auto repair and auto repair information, but the mark owners are not staking out any substantial ground that can distinguish one source of goods/services from another, apart from the graphics. Each of these marks are or will be registered, but the scope of protection is narrow.

It would be better if these parties attached DIY AUTO to a protectable text mark, e.g. ACME DIY AUTO. That way each could build brand recognition in the protectable text (ACME) and also inform customers what they get (DIY AUTO).

Avoid Using Trademarks Descriptively: Corn Thins and Rice Thins Found Merely Descriptive

Real Foods Pty Ltd. applied to register the mark “Corn Thins” for the goods of “crispbread slices predominantly of corn, namely popped corn cakes.” It also applied to register the mark “Rice Thins” for the goods of “crispbread slices primarily made of rice, namely rice cakes.” Frito-Lay successfully opposed the registration of marks on the basis that the marks are merely descriptive of the goods and have not acquired distinctiveness in Real Foods Pty Ltd. v. Frito-Lay North America, Inc. Nos. 2017-1959, 2017-2009 (Fed. Cir. 2018).

A mark is merely descriptive if it immediately conveys information concerning a feature, quality, or characteristic of the goods or services for which registration is sought. The Trademark Trial and Appeals Board (TTAB) and the Federal circuit agreed that a consumer would immediately understand, when encountering the proposed marks, that a feature or characteristic of the goods is that they are thin in cross section and made primarily of corn or rice, respectively.

Merely descriptive marks are initially weak and require acquired distinctiveness (a.k.a. secondary meaning) to be registered. Acquired distinctiveness occurs when the primary significance of a mark, in the minds of the relevant public, is to identify the source of the product rather than the product itself.

One fact that the TTAB and the Federal Circuit noted is that Real Foods advertising materials use the word “thin” to describe their products. According to the Federal Circuit opinion, the advertising included the statements that “They are delicious thin corn cakes, with ‘All Natural” flavoring” and “Corn & Rice Thins are THIN.”

While the outcome might not have changed in this case, a trademark owner should take steps to avoid using its mark descriptively in a sentence to describe an attribute of the product. It appears, in the opposition, the Real foods avoided using the term “thin” to describe its products and instead used “slim” or “slimmer.” But such use of slim or slimmer did not change Real Food’s prior descriptive use of thin in advertising, which was used as evidence against it.

Ultimately, the TTAB and the Federal Circuit agreed that Corn Thins and Rice Thins should not be registered because they were merely descriptive of the corresponding goods.

Protecting Descriptive Marks: Principal Register and Supplemental Register

The USPTO maintains two registers of trademarks. The main register is the principal register while the other is the supplemental register. Most trademark applications seek registration on the principal register. Registration on the principal register provides the trademark owner with more rights and benefits than the supplemental register.

Principal Register

The advantages of owning a registration on the Principal Register, include that the registration on the Principal Register:

  • Provides exclusive nationwide right to use the mark in commerce on or in connection with the goods/services listed in the registration where there was no prior use by others (15 U.S.C. §§ 1057(b), 1115(a));
  • Is constructive notice to the public of the registrant’s claim of ownership of the mark (15 U.S.C. §1072);
  • Provides a legal presumption of the registrant’s ownership of the mark (15 U.S.C. §1057(b)),
  • Operates to provide a constructive use of the mark as of the filing date of the application that results in the registration (15 U.S.C.  §1057(c));
  • Enables the owner the ability obtain the assistance of the US Customs and Boarder Protection to prevent importation of infringing foreign goods (15 U.S.C. §1124);
  • Enables the option for registrant’s exclusive right to use a mark in commerce on or in connection with the goods or services covered by the registration to become “incontestable,” subject to certain exceptions (15 U.S.C. §§1065, 1115(b) );
  • Provides a basis for using a simplified process under the Madrid Protocol to a obtain trademark registrations in foreign countries. (15 U.S.C. §1141b).
  • Operates as a defense to state or common law claims of trademark dilution. (15 U.S.C. § 1125(c)(6)).

The Supreme Court said “Federal registration …. confers important legal rights and benefits on trademark owners who register their marks.” The Federal Circuit Court of Appeals said, “These benefits [of a federal trademark registration]—unavailable in the absence of federal registration—are numerous, and include both substantive and procedural rights.” So if you are serious about protecting your mark, you want to register it on the principal register.

Supplemental Register

However, when a trademark does not qualify for registration on the principal register, the supplemental register is a fall-back option. A trademark may not qualify for registration on the principal register if it is merely descriptive in relation to the goods/services and has not acquired distinctiveness, i.e. recognition in the relevant marketplace as a trademark. A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the corresponding goods or services.

Therefore, an applicant may seek registration on the supplemental register when its mark is merely descriptive and has not acquired recognition in the marketplace as a trademark. Further, an applicant might seek registration on the supplemental register if the mark has been refused on the principal register as merely descriptive and the applicant does not want to undertake the effort to attempt to prove to the USPTO that the mark has acquired recognition in the marketplace as a trademark.

The advantages of owning a registration on the Supplemental Register, include that the registration:

  1. Allows the registrant to use the registration symbol ®;
  2. May block the registration of a confusingly similar mark by a third party; and,
  3. Provides a basis for using a simplified process under the Madrid Protocol to a obtain trademark registrations in foreign countries.

The time period that a trademark has been use is one factor in determining whether a mark has acquired distinctiveness (and is thus register-able on the principal register). 15 U.S.C. §1052(f),  provides that “proof of substantially exclusive and continuous use” of a designation “as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made” may be accepted as prima facie evidence that the mark has acquired distinctiveness. The USPTO is not required to accept 5 years of use as establishing acquired distinctiveness, but they can and often do.

Therefore, one strategy to protect a merely descriptive mark is to seek registration on the supplemental register. Then after a period of time, such as 5 years, the applicant can seek registration on the principal register and rely on section 1502(f) for establishing acquired distinctiveness. Before seeking registration on the principal register, the registration on the supplemental register has the chance of blocking others from registering the same or confusingly similar mark. It may also have the effect of deterring others from using the same or a confusingly similar mark.

Yet, reliance on 1502(f) this might not work if third parties start using the mark for the same goods in the marketplace before 5 years of use. Then the applicant might not be able to say that its use was “substantially exclusive.” Nevertheless, the applicant could still attempt to prove acquired distinctiveness through other evidence.

Choosing a descriptive mark tends to put the applicant at a disadvantage in terms of trademark strength, at least initially. However, overtime if competitors do not use the mark, the mark might acquire trademark protection if the appropriate steps are taken. Seeking registration on the supplemental register is one step that may help in the process.

Amazing Woman: Is It Descriptive or Is It a Trademark?

Cathedral Art Metal Co, Inc. sued Nicole Brayden Gifts, LLC for trademark infringement arising from Brayden’s use of the term “Amazing Woman.” The Complaint alleges Brayden’s use of the term on a plate shown below is infringing.

AmazingWoman

Before getting to Brayden’s plate, let’s count the ways that Cathedral’s use of “Amazing Woman” on this plate (left) is not a trademark use.

First, “Amazing Woman” is not provided in a different font type, font size, color, or otherwise distinguished from the surrounding text. Second, it is used descriptively in the phrase “Recipe For An Amazing Woman.” Third, the poem that follows the heading purports to be exactly as the title directs, a “Recipe For An Amazing Woman.” Here’s what the poem on the plate says:

Start with faith and honesty

Mix in pure humility

Add strength of character that rises above the stress of life’s surprises

Fold in personality

Toss with generosity

Pour in love from a heart that’s true

Yield: one terrific, and amazing YOU!

Ask yourself, does “amazing woman” on this plate standout as a trademark? No. A reasonable consumer encountering that plate would not think that “amazing woman” is used to indicate a source of goods. Everything on that plate signals that “amazing woman” is used descriptively to describe how to purportedly “yield” an amazing woman.

The threshold issue for asserting trademark infringement is that the plaintiff has trademark rights. How do you obtain trademark rights? By using the mark as a trademark (or filing an intent to use trademark application and then using the mark as a trademark).

Maybe Cathedral uses Amazing Woman elsewhere in a trademark manner, such as in its catalog, but it does not on this plate.

Ironically, Brayden’s plate provides Amazing Woman in an enlarged and different font from the surrounding text, which is more indicative of a trademark use. But other factors point to a descriptive use such “Recipe for an Amazing Woman” and the poem purports to “yield” an amazing woman:

Start with a strong Woman; not the ordinary kind.

Add in love, compassion caring and consideration combined.

Sprinkle in generosity and kindness and friendship that’s pure and true.

Mix together with a blessing to yield one amazing woman. You!

Cathedral also claims trade dress infringement. The complaint describes the trade dress as including “a stylized presentation of the mark AMAZING WOMAN disclosed against a background of soothing distinctive colors, initially featuring a soft green-and-blue color scheme.” But the plates do not look that similar even setting aside the issue of whether Cathedral has acquired distinctiveness in the alleged trade dress.

Here are some more allegedly infringing products:

AmazingWoman2

Each one of those uses of “Amazing Woman” begins with “You are an” or “Recipe for an” indicating a descriptive use of the words.

Cathedral moved for a temporary restraining order, which, unsurprisingly, was denied. Cathedral has a uphill fight here.

If you want to develop trademark rights in a mark, do not use your mark descriptively. Further, present your trademark in a manner that makes it look like a trademark, e.g. in some way that is distinguished from the surrounding text.

Citation: Cathedral Art Metal Co., Inc. v. Divinity Boutique, LLC, No. 1-18-cv-00141 (N.D.GA 2018).

$200M in Annual Sales Under Highly Descriptive Mark Insufficient to Establish Trademark Rights

When you have a highly descriptive mark, even hundreds of millions of dollars in annual sales under the mark may not be enough to establish trademark rights.

magnestiaMagnesita Refractories Company (MRC) applied to register the mark MAGNESITA in two trademark applications for refractory products in class 19 and for online services related to using refractory products in class 37.

The USPTO found that the mark was generic for refractory products in class 19, and the appeals court agreed in In re Magnesita Refractories Company, 2016-2345 (Fed. Cir. 2017).

The court also found that MRC failed to show that the mark acquired distinctiveness in connection with the class 37 services. A mark has acquired distinctiveness when “the primary significance of the term in the minds of the consuming public is not the product but the producer.” Stated another way, the mark needs to act as a source identifier and not be merely understood by the purchasing public as descriptive of the goods/services on which the mark is used.

The court noted that “If a term is highly descriptive, the applicant faces an elevated burden to show acquired distinctiveness.”

MRC submitted evidence showing that MRC (1) sold $100 million in refractory products under the MAGNESITA mark during half the 2010 year and (2) sold $200 million or more annually in refractory products under the MAGNESITA mark from 2011 to 2014. The USPTO TTAB recognized that these sales figures were substantial. Nevertheless, they were not sufficient to establish acquired distinctiveness.

MRC also submitted a declaration attesting to exclusive and continuous use of the mark since 2008. This too what not sufficient to establish rights in the mark.

The court found that MRC should have submitted evidence demonstrating how the public perceived MAGNESITA as source indicating. Such evidence is usually in the form of a trademark survey and/or direct testimony of customers. But surveys are expensive to conduct, which is probably why MRC didn’t conduct one. Also, regarding direct testimony, companies are sometimes reluctant to bother their customers with requests for testimony and other help in legal proceedings.

Nevertheless, when you have a highly descriptive mark, even hundreds of millions of dollars in annual sales under the mark may not be enough to establish trademark rights. You will probably need to pay to have a trademark survey conducted. And, even that’s no guarantee. What if the results of the survey show that your mark is not recognized as source identifying by the relevant group of consumers?

Choosing a highly descriptive mark can be expensive, both in obtaining trademark protection and in defending the mark against attacks of others. Therefore, if you have the opportunity, you should consider choosing a stronger mark at the outset.

The Trademark is Descriptive: How to Respond to a Trademark Cease and Desist

Descriptive_Weak_TrademarkFrederic Towers began using the term “The Professional Portfolio System” in November 1982 for a computer-based portfolio valuation system.

Advent Software obtained a registration for the term “The Professional Portfolio” for computer programs used in the field of financial management. Advent first used the term in December 1983, more than one year after Towers’ first use.

Towers petitioned to cancel Advent’s trademark based on the similarities of the marks and the similarities of the goods, but lost.

Usually rights to use a mark go to the person or entity that first started using the mark in commerce. Here, Towers was first.

So why did he lose?

Because Towers’ mark was descriptive and therefore weak. This is the result in the case of Towers v. Advent Software, Inc., 913 F.2d 942 (Fed. Cir. 1990).

Descriptive Marks are Not Strong Initially

Not all trademarks are created with equal strength.

Descriptive marks are weak, at least initially. A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the corresponding goods or services.

The court found that Tower’s mark was essentially the generic term “portfolio valuation system” with the addition of the word “professional.” The term “portfolio system” described what the Tower’s software was used for, e.g. to manage a portfolio. The absence of the term “valuation” from the mark did not prevent Tower’s mark from being descriptive.

And the word “professional” conveyed information immediately to the purchaser that the product possesses professional capabilities. Therefore, the mark described directly characteristics and features of the product.

The court found that Tower’s did not have superior rights in the mark even though Towers’ used his mark first.

Over time a trademark owner might be able to generate trademark rights in a descriptive mark, if the mark gains recognition (i.e. acquired distinctiveness or secondary meaning) with the purchasing public. But Towers did not show this.

Responding to a Cease and Desist: Your Mark Is Descriptive

Therefore, if a plaintiff demands you stop using your mark, and that plaintiff started using the mark before you, you might be able to defend by asserting that the plaintiff’s mark is descriptive and therefore weak.

Evaluating whether the mark is descriptive involves understanding the goods or services that the mark is used on, and comparing the elements of the mark to those goods or services to see if the elements of the mark describe an ingredient, quality, characteristic, function, feature, purpose or use of the corresponding goods or services.

It also involves determining how long the plaintiff has used its mark and whether the mark has gained recognition with the purchasing public as a source of the plaintiff’s goods/services.

See other posts in this How to Respond to a Trademark Cease and Desist series:

Photo credit to Elliott Brown under this creative commons license. The photo was modified from the original to crop in on “weak bridge.”