Beauty Marks

What they said - and then some.

2008-07-01T17:22:06Z

Mike Atkins points to this Inside Counsel article on the TTAB's crackdown on overly broad -- and thus fraudulent -- statements of use in registrations and renewal applications. Hallelujah, I say. If a trademark registration in the US is to be worth the paper it's written on, it should cover only those goods and services on which the trademark owner can show actual use. But while everyone is worrying about audits and ensuring they're not caught on the next renewal, how do we prevent the problem in the future?

Well, how about filing the original application only for those goods or services the mark is being used with? Sounds crazy, no? Alternatively, file your ITU applications broadly -- but when the time comes to file a statement of use, how about knocking out those items on which the mark isn't being used? It could work! Similarly, when it comes time for the 8 & 15 or renewal filings, don't just ask the client if the mark is in use, give them a checklist to tick off each item or service, and advise them of the risk involved for saying something's in use when it's not. This is not magic here.

But still, how did we get to this point? My guess is that somewhere along the way US trademark practitioners started filing unreasonably broad identifications in their US clients' applications, maybe because of section 44 envy (oh, those class headings!), and because they could tell their clients that gave them "broader coverage." But that long laundry list isn't better (and from my past experience, who really needed to include athletic supporters among the promotional items bearing a media company's mark anyway?) if you actually need to enforce one of those registrations against a competitor -- who turns around with a counterclaim for cancellation and fraud.

What I think has changed over the past few years that others haven't yet raised is that the Internet has made it extremely simple to verify the bona fides of a particular registration. If my client's application is being held up by an older registration with a laundry list of goods, I'm almost guaranteed the ability to track down an item listed in the registration that's no longer being sold, contact that registrant or its lawyer, and advise them of their registration's vulnerability, and get a consent for my client's application. But that's fine, in my book. Nothing wrong with keeping us honest, especially where there are declarations under oath involved, right?

I always say that a trademark registration is not your corporate mission statement; neither is its purpose to reflect the full product line to which your company aspires. It is a snapshot of a particular state of the world at a certain time. If there is a purge and certain party members fall out of favor, do yourself a favor and purge those members from the list of goods.

(I think I need some metaphor therapy, stat!)

Next stop in the ranting express: Registrations for promotional items. Betcha can't wait!

Destination: The Colony of Rhode Island and Providence Plantations and the Commonwealth of Massachusetts

2008-07-01T08:44:08Z

Well, I missed my 25th reunion but at least managed to get to Providence and Newport, RI, and Westport, MA, in the reunion year. The girls and I enjoyed our friends' 18th-century home, digging for horseshoe crabs and shells at the beach, and I tried to figure out how to get my body to handle humidity again.

Of course, there was a bit of touring. Chief among the highlights on the trip was the excursion to Dartmouth, Mass., and the marvels of the Christmas Tree Shops store. Any retail establishment with a slogan (registered!)like DON'T YOU JUST LOVE A BARGAIN? is a siren call to me, of course, but this one was junk shopping paradise. Had I not been traveling carry-on only (after the Heathrow debacle of the spring, natch), it could've been a pricey trip. As it was, I managed to spend $33, pass a delightful hour there, and come home with dish towels, potholders, paper lanterns, cocktail napkins, potentially counterfeit foam clogs for the other trademark lawyer in the family to examine, and a charming cow-shaped bag for stashing supermarket shopping bags, all cleverly secreted in my luggage.

But what I didn't buy was so thrillingly emblematic of the store and its commitment to quality that I must share it:

At only $1.99 it was so darn tempting, but I had to refrain. The girls needed sweatshirts from Brown (yes, they now aspire to follow in Mom's footsteps there, but I keep reminding them that knowing their multiplication tables will really go far to ensuring even initial consideration) and I just had a horror of checking baggage through O'Hare. So the photographic memory will have to suffice.

But it wasn't just shopping and wet towels. The stroll down memory lane at Brown was thrilling (was it really that small?), and the visit to the Touro Synagogue in Newport moving, particularly George Washington's assurances to the small congregation back in 1790 that the then-infant nation would give "to bigotry no sanction, to persecution no assistance." Wise to remember that today.

Next stop: A return to Seattle!

Marketing 1, trademark lawyers 0

2008-05-23T13:08:37Z

Introducing JetBlue's new slogan: Happy Jetting! With website sections titled "Are you a flyer or a jetter?" "The Rise of Jetting," and statements like "JetBlue brings humanity back to the skies with a new form of aviation called 'jetting,'" "Explore the many ways of jetting," and a triumphant phallic-appearing announcement that "Today Jetting Rocks," JetBlue is clearly trying to generate enthusiasm in a hungry, thirsty, crowded, tired, smelly and overcharged flying public.

From a trademark perspective? Not so much. In fact, they've pretty much violated every rule in the Jessica Stone Levy book of trademark selection. JetBlue has: (a) taken a colloquial term used in the English language by consumers of the services; (b) defined their view of "jetting" exhaustively in marketing materials; and (c) used other formatives of the word (e.g., jetter). If, for example, a competitor were to use a slogan like "I jet around," or "Jetting off to Cabo was never easier," and JetBlue sued, I'd say those three actions above would be Exhibit A in that competitor's defense.

This campaign reeks of the trademark-antithetical "branding initiative," launched by marketers with little concern for the practical aspects of securing trademark registration and more importantly, of acquiring and enforcing trademark rights. Paradoxically, after reviewing Jet Blue's full website, I think the campaign is actually quite clever and entertaining, and if Jet Blue can be the rising tide to lift planes (?) in this horrible market, more power to them. Just don't think that you can then turn around and be a trademark bully with the trademark rights equivalent of a pair of batacas.

INTA Non-Attendee Daily Bulletin (Sour Grapes Day 2)

2008-05-19T14:22:48Z

A visit to the "Inspiring Impressionism" exhibit at the Denver Art Museum. Outstanding exhibit and museum. We'll definitely go back. Plus, the girls really like the T-shirts that say "DAM . . . That's good art." Not quite as awesome as the "Say Hey to Monet" slogan that I think came from a North Carolina museum (one that apparently possessed no Monet in its collection), but darn close.

Lunch, of course. Well, when in doubt, go to a pub. And Pints Pub didn't disappoint. Loved their Airedale Pale Ale -- with this cute mascot, who wouldn't?:

A trip to Whole Foods capped off this lovely day. (Pssst . . . you're out of Comte. Time to stock up, okay?)

INTA Non-Attendee Daily Bulletin (Sour Grapes Day 1)

2008-05-19T13:32:53Z

Macy's.

California Pizza Kitchen. And no, we didn't win the grand prize in their contest - just 10% off our bill.

Costco. Because a good mother needs to start amassing the entire series of The Simpsons on DVD (sorry, couldn't link to the official site because it's Fox, you know).

A cherry I didn't want to pop

2008-05-15T14:54:57Z

My daughters are 12 and 10 and we've just finished the dreaded birthday season. For the eldest, slumber parties have been de rigueur for the past few years, and I confess that I enjoy them because they're quite manageable, especially in our old house with its finished basement. For the younger one, movie parties at home have been successful, along with decorate-your-own cupcake activities or just good old tree climbing.

Until last Saturday, I had never set foot in a Chuck E. Cheese's. But an invitation to celebrate the fifth birthday of one of our cousins here in our new town was impossible to refuse, and the girls, being good sports, said they absolutely wanted to go.

We said of course, but with fear in our hearts. And so we entered.

On the plus side: Surprisingly clean bathrooms. On the minus side: Scarily intrusive PA system broadcasting promotional information about the place in creepy cartoon-character voice. I could see that being a serious impediment to the progress of potty-training. Hell, it nearly set me back a few years!

Next, the eponymous star of the place:

As mascots go, he's just ugly. Not cute, not endearing. Just ask Pixar about making a rat adorable -- it can be done. But this guy is just creepy. Proof: a good 25% of the kids present ran away when the guy in the rat suit came out.

Apparently, I also made the wise choice by declining a piece of pizza.

But most importantly, the problem that only concerned yours truly: Is it Chuck E. Cheese or Chuck E. Cheese's? Well, your faithful researcher can confirm that it's both: the mark was first used and registered as Chuck E. Cheese, but no doubt through colloquial usage, it has morphed into the possessive form. I did some more searching and found that restaurant names that incorporate a personal name, fictitious or otherwise, almost always use the possessive form -- J. Alexander%sq243%s (not the runway coach on America%sq243%s Next Top Model), Marie Callender%sq243%s, T.G.I Friday%sq243%s-- but not, to my surprise, my new neighborhood grocery store, King Soopers. I am sure there is some linguistic twitch that prompts this possessivization (hey, neat coinage!), but will have to defer to the experts on the topic.

I also noticed uses of "Must C TV" in posters promoting the ubiquitous video screen images of Mr. Cheese. I can't imagine that the folks over at Rockefeller Plaza would approve. But hey, I'm just commenting.

Anyway, we got out alive and have made a vow never to return. Still, on the bright side, it did provide blog fodder.

Stay tuned for more trademark reportage from Denver and the suburbs!

Destination: Denver. No, really.

2008-05-05T14:11:57Z

Apologies for the delay in announcing this news, but we've relocated to the so far sunny, windy, snowy, hot and cold climes of Denver's southeastern suburbs. (Today's forecast: Thundershowers. Not kidding.)

Not much time to post at the moment (there is a sea of boxes in the house), but I do need to mention the name of a business whose signage my daughters keep spotting and insist on shouting out while we're driving in order to startle me: Tuff Shed.

Stay tuned for more updates!

It's always the quiet ones

2008-04-18T15:00:31Z

My cousin Jamie pointed out the rather bawdy slogan of the nice little store in Pennsylvania where they bought a glass top for their coffee table: Best piece of glass in town. All I can say is Bravo to John, Ron and Don -- who says glass companies need to be boring?

Best Band Name Opportunity EVER

2008-04-12T11:30:02Z

From yesterday's Seattle Times: Downer Cow Buffet.

That is all.

The sign said it all

2008-04-08T14:50:10Z

British Airways' truly misguided slogan for their Terminal 5 opening is depicted here, in a pretty sorry state of repair for Day 1:

Yes, it's day 13 of the Heathrow Terminal 5 baggage debacle, and we have yet to receive our luggage nor hear any word from British as to its location. Know where to go? I'll tell them where.

Vista Slogan of the Week

2008-04-07T15:14:52Z

Spend more time with your family . . . during the reboots!

I guess I could say I'll stop when I stop having reasons to create new slogans for Vista.

Today I literally said to my eldest, "I'll come up to make your oatmeal -- I have plenty of time: I'm rebooting."

Destination: Paris

2008-04-06T10:42:04Z

Pimple Pants? Teen Troubles Trousers? Blemish Booty? No, it's Acne Jeans, a brand prominently featured at Le Bon Marche here in Paris.

According to the Acne Jeans website, Acne is a creative fashion collective located in Stockholm that has created its own clothing line. I'm happy for them if it works, but somehow I think it wouldn't go over so big in the US and A. Sitting down and relaxing in my Acne Jeans with a nice glass of Bubo? Non, merci.

And while we're on vacation, let me just add that I think I've got a new slogan for British Airways: "Making US Airways look competent." We're still waiting for our luggage -- from our arrival on Thursday. Many thanks to the wonderfully helpful staff at the Du Pareil au Meme boutiques on the rue St. Placide, without whom our children would not be nearly as well clothed and shod as they are now.

But enough of my yakking. I believe it's time for an aperitif. A bientot.

For THIS they made an announcement?

2008-03-24T20:57:22Z

Stop the presses! Marty sez that The History Channel has dropped "The" and "Channel" to become "History." Apart from some not insignificant problems immediately apparent to trademark attorneys, I can't help wondering how many marketing geniuses were retained, and how many dollars spent, in order to amputate those words from an already weak, albeit recognizable, brand.

Speechless

2008-03-12T20:38:23Z

And it doesn't happen that often, I assure you. Mr. Levy called me this afternoon to report a shocking slogan sighting -- a truck bearing the slogan "Seattle Tool: What's In Your Box?"

That is all.

Destination: Denver

2008-03-07T17:47:40Z

Not at all trademark related, but we were poking around for souvenirs at the airport in Denver (which my husband swears is in Kansas, since it feels like it's so damn far from anything). The littlest Levy wanted a personalized sheriff's badge for her best friend -- why not? Well, I'll tell you why: No girls' names on the badges. Boo hiss. Get with the new millennium, guys.

Now, in trademark-related news, more tribute to the value of trademarks: Sweden's largest state-run pharmacy, Apoteket, will begin selling sex toys in its stores to meet customer demand. Apoteket's spokeswoman said, "We want to have a broad perspective on health, and people would prefer to buy these items in Apoteket than online or in some other shop. We are seen as good trademarks that can guarantee quality." I would certainly expect the highest level of quality from such a brand, because I grew up during the heyday of controversy over Swedish sex films like I Am Curious (Yellow) and I therefore reflexively connect Sweden with sexual health and openness.

Skal! (h/t Pandagon)

Destination: The shadow of Mt. Rainier

2008-02-19T09:07:29Z

Crystal Mountain was our destination this weekend, to watch the littlest Levy compete in the Cherry Tree Charge ski race. The sun finally came out enough to provide a much-needed infusion of Vitamin D, and we all cheered on our family's Picabo:



                                (c) 2008 Marc Levy

And because my mind always turns to trademarks and their why and how, I found myself wondering how the heck RIDE Snowboards ever got RIDE registered for snowboards and associated gear. Isn't a ride what you take on a snowboard (dude)? Well, it looks like this may be one of those cases where the PTO wasn't all that savvy when the RIDE trademark application was filed back in 1992 (wow! The year I first took to the slopes, albeit on skis!) and the mark may have just seemed suggestive to them at the time. It looks like Ride (now owned by K2) has been pretty restrained about challenging other marks incorporating the term "ride" in the same or related fields, which is probably how the mark became incontestable. I am not at all sure the mark would be registrable today as I think the PTO could more easily find out its descriptive nature than it could back in 1992. I also wonder if a newcomer to the sport today might view the word RIDE emblazoned on a snowboard as a slogan or exhortation, rather than a source of origin. The perils of descriptive marks, as I always say.

Proposed slogans for Microsoft Vista and Office 2007

2008-02-14T17:09:59Z

Why rush?

Preemptive multitasking is so 20th century.

You didn't have anything else to do today, did you?

The circle that mesmerizes.

How long did you want to sit on your ass today?

When you really, really, really, really, really, really do want to log off.

The complications of digital with the speed of analog.

Now in both Compatibility and Incompatibility modes!

Oh . . . you wanted to save that?

And the theme songs, of course:

Driven to Tears

Stuck in a Moment You Can't Get Out Of

We Have All the Time in the World

Yes, it's been a bad few days with my operating system, and maybe it just needs a little nap. We'll just power down for a little while and hope we feel better when (if?) we wake up.

(And no, I'm not giving up the day job to create slogans. Being a critic is hard work enough!)

A twist on the Bubo problem

2008-02-07T19:06:08Z

And not one that requires antibiotics or leeches, mind you. No, this latest recalls the perhaps apocryphal story of Chevrolet trying to market its Nova in Spanish-speaking countries only to find that "no va" means "it doesn't work."

Let me set the scene -- a virtual stroll through Sephora was in order today since I had recently received a tantalizing email from them. I was looking for a new mascara, as my Diorshow was running out, but I'm not all that brand-loyal. Looking through the list of new products, I was struck by the name of this brand -- Imju.

How do you pronounce that, I asked myself? Like "I'm Jew"? (You know, "not did you eat, but Jew eat?") The company's owner says the term is pronounced ee-myoo, but you just can't assume it will be pronounced like that in the real world. It's reasonable to assume that customers may mispronounce it as "I'm Jew." Sephora says that Imju is one of Japan's leading cosmetic brands, and so I can see how they may not have anticipated the line's being exported to the US when they selected the name, and didn't want to change for the US market despite its possible reception here. I would certainly have counseled them as to that potential concern, and I might have advised changing the mark for the US market.

Sometimes, though, a neurotic trademark practitioner (i.e., yours truly) can overthink things. Product reviews for the Imju Fiberwig mascara product are almost uniformly raves. And I didn't read about any concern over pronunciation. So while the name is a bit disconcerting and won't be winning the coveted Alt-0174 any day soon, since it doesn't evoke any infectious diseases, I'll give it a pass.

I do not think it means what you think it means.

2008-02-07T18:57:53Z

So I happened upon a bottle of Bubo Pinot Grigio today, and recoiled in horror. Hmm, I thought to myself, doesn’t "bubo" mean suppurating (not Super 8-ing) wound or something like that? I checked the bottle, where the anodyne copy explained that "bubo" is Latin for "owl."

I didn’t buy it, literally or figuratively. So after numerous fruitless circuits around Whole Foods,¹ I took my bag of groceries home (meatloaf tonight, if you’re curious) and ran to my trusty New Oxford American Dictionary.² And indeed, I was pretty damn close: It’s "a swollen, inflamed lymph node in the armpit or groin."

So I’m just wondering about the thought process that led to the selection of Bubo as the name for wine. Was a Latin dictionary the only one handy that day? Did no one check to see if the word had any meaning in English? I just ran it through Google and the very first hit was to the Wikipedia entry, which link you don’t even need to click on to see immediately that it means "a swelling of the lymph nodes, found in an infection such as bubonic plague, gonorrhea, tuberculosis or syphilis." L'chaim indeed! Makes the cat pee aroma identified as a characteristic of certain sauvignon blancs sound positively enticing!

Listen, your product name can have a suggestive and evocative meaning in a dead language, and on that basis make a great trademark, but that's all worth nothing if the mark means something completely disgusting in English.

Bottom line for me is that if you’re offering me a cool glass of Bubo,³ I think I’m going to pass.

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¹ Here I’m being literal. We live in the goddamn apple capital of the world, yet apples cost, at a minimum in this area, $1.99/lb. And then they supersize the damn things so each apple is three quarters of a pound. And the organic ones? A cool $2.99/lb. I’ll go to Costco, thanks.

²Skillfully edited, of course, by Erin McKean.

³I long ago prosecuted a trademark application for the mark MONKEY RIVER for soft drinks, and had nightmares about what the phrase "a nice cold Monkey River" might mean.

The practicalities of the commercial world, with which the trademark laws deal¹

2008-01-17T10:36:56Z

Exhibit A: Musical group Cracker.

Exhibit B: Musical performer Uncle Kracker.

Apparently they can and do coexist.

Discuss.²

¹Witco Chem. Co. v. Whitfield Chem. Co., 418 F.2d 1403, 1405, 164 U.S.P.Q. 43, 44-45 (C.C.P.A. 1969), aff’g 153 U.S.P.Q. 412 (T.T.A.B. 1967)

²Why the heck, you ask? I saw a song by Cracker on XM Radio and my mind just started whirring . . .