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"What Not to Name Your Product"
By: Mark C. Jacobs
When I sat down to write this piece, I purposely chose
the title, "What Not to Name Your Product," so that you
would better appreciate and understand that there are
specific rules pertaining to the registration of
trademarks. These rules dictate, for example, which
marks are not registrable (generally) and which marks
relating to specific products or services are not
registrable. And my subsequent comments about trademarks
will be applicable to both trademarks and service marks.
Some Necessary Background
First, a trademark is not the same thing as a service
mark. The registration symbol ® means that an
application had been both filed and registered with the
United States Trademark Office, and it cannot be used
until the federal trademark/service mark registration
process is completed. The letters ™ and _, on the other
hand, simply mean that a party has merely adopted a
chosen mark as its identified brand for a product or
service-basically, the ™ is used to show the adoption
and reservation of the mark as that party's brand for a
particular product or service.
Generally, a trademark is the brand name or mark
assigned by a user to identify the source of goods,
while the service mark identifies the source of the
services. Some marks, though, can serve as both a
trademark and a service mark (an example is American
Express, which offers credit card services to consumers
as well as branded travelers checks).
In choosing a mark, one must remember that trademarks
always must be adjectives and not nouns. They have to
modify a noun. As a result, there is no such thing as a
"Buick" in the world of trademarks, but there is a
"Buick motorcar."
A mark also should not include the surname of the
applicant. Consequently, a company owned by Tom Jones
should not apply for Jones™ as a mark for sausages. But
Tom Jones an individual could register Mr. Smith™ for
sausages so long as "Mr. Smith" did not refer to a
specific person, living or dead.
Finally, one should also bear in mind that geographical
names are extremely difficult to register. California™
for lettuce grown in Salinas is not registrable, as such
a mark is deemed to be geographically descriptive of the
product. A mark can also be rejected for registration if
it is geographically misdescriptive: Berlin™ for a beer
made in Korea, conjures up a certain image for the beer,
which is a false image.
Ask Yourself, "Is It A Mark Or Not?" Before Doing The
Paperwork
Let's assume that a company called Reader, Inc. makes
luggage and it wants to introduce a new line of luggage
which luggage is to be identified by a trademark. Can
the mark Roll Along™ be applied to it, all of whose
pieces are on casters? The answer is probably not.
While Reader, Inc. could utilize the term Roll Along for
its goods, in this case a specific line of luggage, it's
unlikely that registration would be achievable. The term
Roll Along™ is descriptive of a characteristic or
property of the goods, since luggage on casters should
roll along. If the mark is descriptive of the goods or
services (or describes a characteristic of the goods or
services) then the term is not a registrable trademark
or service mark, and therefore it should not be adopted.
Okay, what if Reader, Inc. now decides to name its
luggage line Square Corner™? If the luggage has square
corners instead of rounded corners, then the use of the
term Square Corner as the trademark for luggage would be
descriptive of a characteristic or property of the goods
and, as such, would also not be registrable.
But now let's suppose management called the product
Square Corner™ luggage but all of the suitcases had
rounded corners? It certainly would not be descriptive
of a characteristic or property of the goods, right?
Well, in this case the term would be deemed by the
Trademark Office as "mis-descriptive," and therefore not
registrable for luggage-and, for that matter, the mark
"Square Corner" when applied to many other products that
have specific shapes would also not be registrable.
On the other hand, Square Corner™, if used for a line of
bathing suits or office chairs, would be a perfectly
acceptable mark for registration as the term is NOT
descriptive of this type of goods. Similarly, Roll
Along™ would be a potentially registrable mark as
applied to a toilet, or a line of cosmetics.
Okay, now let us suppose that Reader, Inc. wants to
utilize the term "Black ‘n Brown" as the new mark for
its new luggage line? Again, the term "Black ‘n Brown"
is not registrable because we know that the luggage line
includes certain suitcases that are black in color and
others that are brown. "Black ‘n Brown," thus, would
again be deemed descriptive of a feature or property of
the goods.
A color designation when used as all or part of a mark
may or may not be registrable depending on its ultimate
use. Purple™ for paint, thus, would not be registrable;
however, Black Velvet® when applied to an alcoholic
beverage is acceptable.
Could, or should, the term Acme be applied to and
registered for the Reader, Inc. luggage line? Perhaps.
The mark by itself may be registrable, if no other
company uses the word Acme for luggage-and that can
readily be discovered by running a trademark review or
search. But because "Acme" is such a ubiquitous mark,
even if potentially registrable, would management want
to use it? There can be no total exclusivity to the mark
Acme for any and all goods, because Acme is such a
common brand here in the United States.
A more astute management decision would be to use a mark
for which total exclusivity of use over all product
lines and services would be available. Such a mark is
called a "coined" term. Good examples of coined terms
are Exxon, Nikon, Kodak, Sony. These words have
significance only as trademarks, only as adjectives, and
are not found in the dictionary.
Another mark that Reader, Inc. might consider is LUGALL™.
This term, when used as the trademark for luggage, would
be deemed generic, which is different from being deemed
descriptive. A generic term is descriptive of every
product of that type-a mark that is descriptive of that
particular item or a characteristic of the item, but
which might not be descriptive of every product of that
type. So, Sticky™ is generic for masking tape, but
LUGALL, while generic for all suitcases, would also be a
perfectly registrable trademark for household candles.
Well known former trademarks that have "gone generic" or
which have lost their ability to serve as an indication
of the single source of a particular item or service
include "cellophane" and "aspirin." But Kleenex® and
Xerox® remain the brand names of their respective owners
for facial tissue and photocopiers.
A Careful Choice Can Spare You Future Problems
If you don't devote adequate time, care and attention in
choosing a proper mark, you could end up frustrated and
wasting needless time and effort.
In 1986, for example, the U.S. Trademark Office refused
to register "LOTSA SUDS" for a dish washing liquid,
holding that the term to be descriptive of a
characteristic of the product (re Reynolds, 229 USPQ
776). In another decision (re Sony 176 USPQ 61), "EASYLOAD"
as applied to tape recorders was also held to be
descriptive of a characteristic of the product by the
Trademark Trial and Appeal Board (TTAB). "SURE-GRIP" was
also held to be descriptive of the purpose of the
product-an abrasive floor paint-by the TTAB in its
decision to deny the product initial registration (re
Colonial Refining and Chemical Co.; 196 USPQ 46).
It's good to be mindful of the fact, too, that marks
that might have been successfully registered can
sometimes be deemed to be descriptive later on should a
trademark holder attempt to enforce the mark through
litigation. TENDER VITTLES for cat food, for example,
was held to be descriptive of the product (see Ralston
Purina Co. vs. Thomas J. Lipton, Inc. 341 F. Supp. 129).
Two other well known trademarks that were held to be
descriptive during litigation are "BUFFERIN" (Wise vs.
Bristol Myers Co., 107 F. Supp 800) and "CHAP STICK"
(Morton Mfg. Corp. vs. Delland Corp 166 F. 2d 191) for
buffered aspirin and for a stick-form skin protector
respectively.
So, as we've seen, there can be numerous bases for
rejection of an application to register a
trademark/service mark. Time spent with a patent and
trademark specialist, consequently, will be time well
spent when the opportunity arises to choose a brand or
advise a client.
Writer Information
Written by
Mark C. Jacobs
Mark C. Jacobs is a registered patent lawyer
in private practice for 20 years, after an
extensive career with the U.S. Patent Office
and as a corporate patent counsel.
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