L'existentialisme
Confession: I am an ardent Francophile, and reasonably competent Francophone. That competence in French makes me extremely intolerant of companies that adopt French nomenclature or styling to add cachet, both because in my humble opinion that only shows pretension, and because fundamentally, shoving “le” or “la” before a generic term doesn’t do much for a trademark. LE CASE or LA YOGURT anyone? Those marks are technically registrable, though, under the PTO’s feeble incongruity exception (see http://tess2.uspto.gov/tmdb/tmep/1200.htm#_T120903h ) where “yogurt,” for example, still had to be disclaimed apart from the mark as shown.
So what did I think when I read this recent New York Times article (http://www.nytimes.com/2007/07/24/business/24premium.html?ei=5070&en=3332f6340af4fcbb&ex=1186113600&adxnnl=1&adxnnlx=1186008864-bCEGCLtPHRjYAdXnlMcgTA ) about business class airlines, and the carrier called L’AVION? Merde, quite frankly. Do they not get it? IT MEANS “THE AIRPLANE.” Not registrable even under the incongruity exception because it’s a full word/phrase in a foreign language and thus not at all incongruous; rather, it’s a foreign equivalent, and thus “no more registrable than the English itself,” according to PTO rules: http://tess2.uspto.gov/tmdb/tmep/1200.htm#_T120903g.
When marketing teams select marks like that they should know they’re committing their attorneys to no end of frustration and expense with trying to secure trademark registration – often forcing those trademark attorneys to sacrifice their common sense in the name of client service. How many trademark attorneys who should and do know better have had to hold their noses to argue that their mark is not descriptive?
My question for similarly situated practitioners: When your gut says no, I don’t recommend even trying to file the application because you’re going to waste money, never get it registered, have a worse time trying to do so outside of the US, waste money, not be able to enforce the mark, not even be able to win a UDRP challenge, waste money, and then look bad for not being able to accomplish anything and for having spent a lot of money – how do you tell the client? How do you train marketing people to understand trademarks? (I have helped clients try, and rarely succeeded. Maybe it's me.) How do you educate the client so you don’t sound like a broken record[1] every time you tell them they’ve come up with yet another lousy mark? How do you stay true to yourself and play the game?[2] I seem to like these rhetorical questions, don’t I?[3]
[And apologies for the formatting — be gentle, I'm new here. Thanks for the good vibes.]
————————————————————————————————————————
[1] I’m showing my age, I know. Though I had a CD skip the other day . . .
[2] Profound apologies to Albert Camus (http://www.alalettre.com/camus-etranger2.htm#Albert). Really, talk about pretension!
[3] With a tip of the chapeau to my sister Pam, who is, literally and figuratively, a Master of Rhetoric.
Nice to read you're francophile. Hello, I am americanophile
Here are my 2cts, from the other side of the pond:
I was also surprised at seeing this new transatlantic airline company chosing such a name. Elysair (the airline company) TM applications include a device element (typography & colors). See for instance S/N 77/081782. This application is currently under examination and in the first Office action, the Examiner states that:
"Applicant must disclaim the descriptive wording “L’AVION” apart from the mark as shown. Applicant must disclaim “L’AVION” because it merely describes applicant’s “airline transportation” services, because airplanes or aircrafts facilitate airline transportation. The foreign equivalent of a merely descriptive English word is also considered merely descriptive."
How thin it might seems to be, the monopoly that Elysair will enjoy over the mark once registered, consists in its visual stylization.
BTW, we don't say "la yogurt", but "le yogurt" (nom masculin). Does a grammar mistake (into a foreign language) turn a descriptive expression into a distinctive trademark ?
Reply to this
I completely agree with your take on the L'AVION mark. That said, from a common law perspective, it is possible that the mark could acquire some level of distinctiveness in the US, though not likely enough to prevent another user's mark that included the term, e.g., UNIAVION (which I just invented and is pas mal du tout, although somewhat unpronounceable).
As a grammar fanatic, I strongly oppose the notion that a grammar mistake could nonetheless create a distinctive mark. Still, though none come to mind at the moment, I'm sure there are plenty. One of the French marks that always amused me was DeMak'Ups, a brand of cotton makeup remover. I like how they came up with something that sounded English, but was ultimately coined.
Thanks for reading and commenting! A la prochaine!
Reply to this