The Glad Products Company (“Glad Products”) has been using the trademark GLAD since 1962 in connection with the advertising and sale of plastic bags.  If you walk down one of the 25 aisles at your local Walmart (don’t ask me which one), you’ll see that Glad Products offers all kinds of plastic bags for household use, including trash bags, food storage bags, and freezer bags.  Unless you’ve boycotted television over the past twelve years, you are undoubtedly familiar with the DON’T GET MAD GET GLAD slogan featured on many of Glad Products’ commercials.  You know, the ones where someone picks up a generic trash bag and the bottom splits, causing a gigantic mess all over the clean kitchen floor.  I don’t know about you, but I’ve been using generic trash bags for the better part of my adult life and I can’t say that I’ve ever experienced such a breakage.  So, I would encourage everyone out there to save a few bucks a year and purchase the cheapest garbage bags you can possibly find.  Trust me, your social standing with the neighbors and the garbage man will not suffer.

Of course, Glad Products has taken all of the necessary steps to federally protect its GLAD trademark.  Its earliest federal trademark registration for GLAD dates back almost five decades and is for “plastic bags.”  Over the years, Glad Products has expanded its use of GLAD for a wide variety of plastic household products, such as rigid food containers, plastic wrap, drinking straws, and plastic ovenware.  As the GLAD line of products grew, Glad Products obtained additional trademark registrations to cover these items.  My research indicates that Glad Products owns at least a dozen active trademark registrations that incorporate the word GLAD, many of which have been in existence for quite awhile.  Because millions of Americans are familiar with the GLAD trademark and the products with which the trademark is used, I don’t think it’s going too far out on a limb to say that the mark is “famous” and entitled to a broad spectrum of protection.

But, it appears that such fame has seriously affected the judgment of the folks in charge at Glad Products.  Trans Western Polymers, Inc. (“Trans Western”) is a competitor of Glad Products.  According to its website, Trans Western was founded in 1983 and is primarily a manufacturer and distributor of plastic bags and plastic cutlery.  On March 9, 2011, Trans Western filed a federal trademark application for the mark IRONCLAD for “plastic food storage bags for household use” and “plastic trash bags.”  The trademark examining attorney reviewed the application and allowed it to proceed through the registration process without even mentioning any of the registered trademarks owned by Glad Products.  However, on January 9, 2012, Glad Products filed an opposition against Trans Western’s trademark application, thereby stalling the registration of the IRONCLAD trademark.

In the notice of opposition, Glad Products alleges five different bases for challenging Trans Western’s trademark application for IRONCLAD, all of which seem pretty laughable to me.  First, Glad Products alleges that IRONCLAD is “confusingly similar to Opposer’s GLAD Marks in sight, sound, connotation and commercial impression” and will deceive consumers into believing that IRONCLAD plastic bags are manufactured by Glad Products.  Hmmmm, how stupid does Glad Products think the American public is?  Although there may be a slight resemblance in sound between the marks, they otherwise could not be more different.  I think the good people at Glad Products should crack open a dictionary because the “connotation and commercial impression” of GLAD and IRONCLAD are completely distinct from one another.  Their meanings are completely unrelated.  They are not opposites nor synonyms.  In fact, I’m not sure I’ve ever seen the two words in the same sentence before I wrote this article.  Absolutely ridiculous.

The second ground for opposition is Glad Products’ claim that IRONCLAD will “dilute the strength and value” of its famous GLAD trademarks.  I’m not exactly sure how that could occur since there’s clearly nothing inherent about the IRONCLAD mark that would tend to affect the ability of the GLAD trademarks to function as unique source identifiers for plastic bags.  And IRONCLAD certainly doesn’t tarnish the GLAD marks or the GLAD line of products.  So, again, I’m at a loss as to what Glad Products is talking about.

Third, Glad Products alleges that IRONCLAD is misdescriptive and not entitled to registration because consumers are “likely to believe that [Trans Western's] goods contain iron or are coated with iron.”  Ummmm, what??  Who in this entire world would believe that a trash bag or food storage bag would be coated with iron?  Seriously, this just illustrates how little respect Glad Products has for the intellectual capabilities of the very people to whom they sell their products.  If you’re not insulted, you should be.

Next, Glad Products claims that the specimen submitted with Trans Western’s application did not show use of the IRONCLAD trademark.  The specimen consists of a photograph of a box of freezer bags that displays the trademark as IRON-CLAD (rather than IRONCLAD).  So, although Glad Products might technically have a point, Trans Western could simply amend its application to display the mark as IRON-CLAD and all would be fixed.  No problem.

Finally, Glad Products claims that Trans Western’s IRONCLAD mark is not entitled to registration because Trans Western has misused the ® symbol.  Again, technically Glad Products is correct.  The specimen shows IRONCLAD with a ® being used in connection with freezer bags even though Trans Western does not own a federal registration for IRONCLAD for freezer bags.  But, again, this is not going to prevent the registration of Trans Western’s mark.  It’s just nonsense.

But here’s the kicker.  Trans Western already owns an active federal trademark registration for IRONCLAD for “plastic trash bags.”  This registration dates back to 1983 and has coexisted with the original GLAD registration for almost 30 years.  Assuming Trans Western has been continuously using the IRONCLAD trademark during that time without any substantial period of non-use, this fact exponentially raises the ridiculousness of this trademark opposition.  How can Glad Products with a straight face claim likelihood of confusion, dilution, and misdescriptiveness after all these years?  If there truly has been 30 years of coexistence, it is ludicrous.  If not, the opposition still lacks merit in the humble opinion of this trademark attorney.

I’d love to hear your opinion.  Feel free to get mad, but I still recommend you don’t get Glad.

This past week, I conducted a trademark search for a client that reminded me just how wacky and frustrating the Trademark Office can be.  For a variety of reasons, I am not going to reveal the exact trademark I searched.  Instead, I will say that I performed a trademark search on the mark THE CARBON MONOXIDE PEOPLE, which is used in connection with a business that sends trained professionals to your home to test for carbon monoxide leaks.  I can tell you that the client’s actual trademark is extraordinarily similar to the THE CARBON MONOXIDE PEOPLE and that it is used in association with closely related services.

A little background in trademark law is necessary for you to to truly appreciate this story.  Merely descriptive trademarks are those that describe a quality, feature, function, or characteristic of the products or services with which they are used.  Descriptive marks initially receive very little federal protection and are only eligible for federal registration on what is called the Supplemental Register.  Over many years of use, some descriptive trademarks can acquire distinctiveness or “secondary meaning” in the minds of consumers.  When the owner of a descriptive trademark is able to prove that the mark has acquired distinctiveness such that it is no longer merely descriptive, the owner can attempt to register its mark on the Principal Register under a section of the Trademark Act called Section 2(f).  The Principal Register is where non-descriptive or “inherently distinctive” trademarks are registered.  If possible, you want your trademark to be on the Principal Register because it affords you the greatest scope of benefits and protections available under the law.  You can think of the Supplemental Register as being ground chuck and the Principal Register as being fillet mignon.

From a likelihood of confusion perspective, the trademark search went smoothly.  I didn’t find any pending trademark applications or existing trademark registrations that I thought would be an obstacle to my client using or attempting to register its trademark.  But, due to the nature of the trademark, I had a hunch that the Trademark Office would consider it to be merely descriptive and would refuse registration on the Principal Register on that basis.  So, I delved a little further into the Trademark Office’s records to see how it has treated similar marks in the past.  What I found was inexplicable.

Below are two lists of trademarks.  All of the trademarks are used in connection with retailing and/or distributing the products noted in the trademarks themselves.  If you can figure out why they were treated differently by the Trademark Office, I will bow to your superiority.

Trademarks Considered Descriptive (registered on the Supplemental Register or on the Principal Register under Section 2(f))

THE CARPET AND RUG PEOPLE

THE PHOTOGRAPHY PEOPLE

THE HOMES PEOPLE

THE SPECIALTY PRODUCE PEOPLE

THE LOCK PEOPLE

THE TOOL KIT PEOPLE

Trademark Considered NOT Descriptive (registered on the Principal Register as “inherently distinctive”)

THE CONNECTOR PEOPLE

THE BEEF PEOPLE

THE HARDWARE PEOPLE

THE PACKAGING PEOPLE

THE GINGER PEOPLE

OK, so this is what we’ve learned.  If you are in the business of retailing or distributing carpets, photographic equipment, mobile homes, fruits and vegetables, security products, or tool kits, then your trademark gets placed on the Supplemental Register unless you can prove that it has acquired secondary meaning.  On the other hand, if you are in the business of retailing or distributing electrical components, beef, general hardware and power tools, flexible packaging supplies, or ginger-based food products, then your trademark is considered inherently distinctive and entitled to registration on the Principal Register.  This is completely nonsensical in my humble opinion.

But, if you think that’s crazy, I saved the best one for last.  There is an existing trademark registration for THE SHRIMP PEOPLE for “seafood distributorship services” that is registered on the Principal Register under Section 2(f).  There is also a registration owned by a different company for THE TUNA PEOPLE for “wholesale distributorship services in the field of fresh seafood” that is registered on the Principal Register without any showing of acquired distinctiveness.  I’m not kidding.  Identical services.  Essentially identical trademarks.  Completely different treatment by the Trademark Office.  It’s all a little bit “fishy” if you ask me.  Perhaps the tuna lobbyists got involved?

But it doesn’t stop there.  Here are two lists of trademarks used in connection with educational services.  Again, if you can explain the disparate treatment, I would be forever grateful.

Trademarks Considered Descriptive

THE PARALEGAL PEOPLE (educational services in the field of paralegal education)

THE FOOD SAFETY PEOPLE (educational services on topics of interest to the food processing industries)

THE WELLNESS PEOPLE (educational services in the field of health education)

Trademarks Considered NOT Descriptive

THE RETAIL PEOPLE (educational services on topics of interest in the retail construction industry)

THE RETIREMENT EDUCATION PEOPLE (educational services in the field of retirement planning)

THE WATER QUALITY PEOPLE (educational services in the field of water quality and water conservation)

This kind of inconsistency by the Trademark Office illustrates the highly subjective nature of trademark law.  Of course, this makes it incredibly difficult for trademark attorneys like myself to advise their clients on issues of trademark adoption and clearance, which can ultimately lead to unsatisfied and disappointed clients.  As you can imagine, it’s pretty embarrassing to be forced into having the following conversation with someone who specifically hires you because of your experience and knowledge in the trademark field:

Client:  Morris, I’m going to be opening up a store that sells televisions.  I want to call it “The Television People.”  Please conduct a trademark search on THE TELEVISION PEOPLE and let me know if I can register my trademark.

Morris:  Sure, I’d be glad to.  I’ll have the results for you in a few days.

Client:  Great!  Thanks Morris.  You’re the best trademark attorney ever!

Three days later…

Morris:  I have the trademark search results on THE TELEVISION PEOPLE for you.

Client:  Wonderful!  So, can I register THE TELEVISION PEOPLE?

Morris:  Um, I don’t know.  Maybe yes.  Maybe no.  That will be $250.

Client:  I take back what I said about you being the best trademark attorney ever.

Oh well.  Come to think of it, my “Best Trademark Attorney Ever” t-shirt didn’t quite fit me anyway.

First of all, I want to wish everyone a very Happy New Year!  I hope 2012 brings all of you much joy, success, and prosperity.  My New Year’s resolution is to continue building my trademark law practice and to spend more time seeing and learning about the world.  I’m actually going on my very first cruise in July (9 nights!) thanks to the extraordinary generosity of my Aunt Faye and Uncle Steve.  I also want to lose about 15-20 pounds, but I say that every year and it just never seems to happen.  I guess I should just be happy that I’m not gaining 15-20 pounds every year.  Perhaps the July cruise will motivate me to stop gorging myself at the local Chinese buffet.  If the Hibachi Grill Supreme Buffet in St. Peters, Missouri goes out of business, you’ll know why.  If it has record profits, well, there’s always next year…

For this week’s article, I’m keeping it pretty light and fluffy.  Out of curiosity, I decided to conduct a quick federal trademark search of “2012″ just to see if there are any pending trademark applications or existing federal trademark registrations for marks that are funny or noteworthy for some reason.

Since 2012 is a presidential election year, it’s not surprising that my search revealed many trademarks with a political spin.  Some of my personal favorites include:

HERMAN CAIN PRESIDENT 2012 (a waste of money unless Cain is going to be running for president of a different country)

DUMP HIM 2012 (perfect for both Republicans and feminists)

SHOVEL READY FOR ELECTION DAY 2012 (I bet Obama would even chuckle at that one)

NOBAMA 2012-2013 (probably just a typo, right?)

ABO 2012 ANYBODYBUTOBAMA.COM (be careful what you wish for)

MO’BAMA FOR PRESIDENT 2012 (finally, some love for the President)

2012 is also an Olympic year and my trademark search uncovered several trademark registrations owned by the Comite International Olympique for:

LONDON 2012 (host of this year’s Summer Olympics)

MADRID 2012

PARIS 2012

MOSCOW 2012

Along with New York, these cities were the finalists to stage the 2012 Olympic Games that were announced in May 2004.  What I find somewhat interesting about these registrations is that their underlying application filing dates are way back in October 2003 (almost nine years before the actual Olympics).  Of course, since Madrid, Paris, and Moscow failed to clinch the dubious honor of hosting the 2012 Games, I would expect that the Comite International Olympique will allow the registrations to expire.

Finally, a pending trademark application for I SURVIVED DECEMBER 21, 2012 caught my eye.  My research indicates that this date refers to the very last day in the ancient Mayan Long Count calendar.  According to some sources, December 21 will be the end of civilization as we know it.  Doomsday.  Armageddon.  Everything becomes Tidy Cat kitty litter.  Now, I don’t want to sound ignorant, but wouldn’t it have made more sense for the owners of this application to have waited until December 22 of this year to file it?  You know, so as to ensure that their $275 government filing fee doesn’t go to waste.  On the other hand, I guess if the Earth is still spinning in approximately 50 weeks, they will be all ready to monetize our collective good fortune.  Nonetheless, I’d probably wait until the sun rises that morning before having celebratory t-shirts made.  You know, to avoid jinxing the continuing existence of mankind.

I almost put this trademark dispute in the “ridiculous trademark opposition” category, but I didn’t want to add insult to injury after the Atlanta Braves’ embarrassing late-season collapse that resulted in the team missing the postseason after leading the St. Louis Cardinals by 10.5 games in the wild card race.  See, I actually do have a heart.

Apparently, on June 22 of next year, Disney/Pixar is poised to release a new animated feature titled “Brave.”  According to Disney’s website, the movie is about a young, female archer who “must discover the meaning of true bravery in order to undo a beastly curse before it’s too late.”  From that description, it certainly doesn’t sound to me like “Brave” is going to be nearly as entertaining or original as “Wall-E” or the “Toy Story” series.  In fact, it sounds downright dull, formulaic, and probably only worth seeing if it becomes available at the local Redbox for $1.  Of course, it’s not like I think any movie is worth paying $10 to see at the theater.  Especially after last summer when I wasted 139 minutes of my life watching “The Tree of Life.”  Worst movie I’ve ever seen.  God awful.

Anyway, in March 2010, Disney filed 14 intent-to-use trademark applications seeking federal registration of the word BRAVE.  These applications cover a wide range of products and services, including film production, clothing, food, toys, games, home accessories, furniture, luggage, and almost everything else you could possibly think of.  At the same time, Disney also submitted 14 other trademark applications seeking registration of the phrase DISNEY PIXAR BRAVE for nearly identical goods and services.  Almost all of Disney’s 28 trademark applications were approved by the Trademark Office, but a few of the BRAVE applications have been suspended pending the disposition of prior-filed applications owned by individuals and businesses unrelated to Disney.

Well, the Atlanta National League Baseball Club (known to you and me as the Atlanta Braves) didn’t seem to have a problem with any of Disney’s trademark applications for DISNEY PIXAR BRAVE, but on July 8, 2011, the Braves filed an opposition against nine of Disney’s BRAVE applications (at a cost of $2,700 in government filing fees alone).  The notice of opposition alleges that the Atlanta Braves own 34 federal trademark registrations for marks that incorporate the word BRAVES that are registered for products and services that overlap with some of those identified in Disney’s applications.  Because BRAVES and BRAVE are essentially identical in appearance and sound, the Atlanta Braves assert that Disney’s trademarks are likely to cause confusion in that consumers will mistakenly believe that either (1) Disney’s BRAVE-branded goods and services emanate from the Atlanta Braves or (2) that the Atlanta Braves sponsor or endorse Disney’s products/services.  In reviewing the Trademark Trial and Appeal Board’s records, it appears that the parties have agreed to suspend the opposition proceeding while they engage in settlement negotiations.

Although I am usually against these kinds of highly questionable trademark oppositions, I am throwing my full support behind the Braves and encourage them to file as many oppositions as possible.  After all, every dollar the Braves spend on this nonsense translates into one less dollar they have to build a team that won’t buckle in the last month of the season.  As a fan of the Cardinals, I feel it’s my duty as a trademark attorney to do what I can to help the Redbirds bring home another Word Series championship in 2012.  You’re welcome Cardinals Nation.

This week’s trademark article is about one of my favorite sodas currently on the market.  It has that unmistakable Coca-Cola taste with none of the high fructose corn syrup that makes you fat.  Honestly, I have no idea why someone would choose to buy Diet Coke when Coca-Cola Zero is readily available and has so much more flavor and sweetness.  To me, Diet Coke is basically just fizzy water with just a hint of cola flavor.  If I go to a restaurant or fast food joint that offers Coke products but not Coca-Cola Zero, I always have to mix Diet Coke and Coca-Cola together so that I don’t consume a thousand calories of soda with the 4-5 free refills I’m sure to order.  Hey, I can’t help it.  I like soda.  I could have worse addictions, you know.

On March 4, 2005, The Coca-Cola Company filed a trademark application seeking to federally register the trademark COCA-COLA ZERO for “beverages, namely soft drinks; syrups and concentrates for the making of the same.”  The trademark examining attorney assigned to review the application requested that Coca-Cola submit a disclaimer of all exclusive rights in the word “ZERO” based on her belief that it is merely descriptive when used in connection with soda that contains zero calories.  Instead of just entering the disclaimer like most companies would have, Coca-Cola argued that “ZERO” has “no fixed and discernible meaning that would be readily apparent to a potential buyer” and that a “multistage reasoning process is necessary to ascertain which ingredient (or ingredients) is not present” in Coca-Cola’s soft drink.  Question: Do you find Coca-Cola’s statements as insulting to the intellectual abilities of its customers as I do?  “Multistage reasoning process?”  You’ve got to be kidding.

After the examining attorney picked herself off the floor from laughing so hard at Coca-Cola’s feeble arguments, she again requested that Coca-Cola enter a disclaimer of “ZERO” into the application record.  This time, Coca-Cola essentially conceded that “ZERO” is descriptive but that it had acquired distinctiveness or “secondary meaning” in the minds of consumers such that they now associate “ZERO” exclusively with Coca-Cola and perceive it as a trademark that identifies and distinguishes Coca-Cola’s products from those offered by other beverage manufacturers.  Although the examining attorney initially rejected Coca-Cola’s claim of acquired distinctiveness, she ended up actually approving the trademark application for publication after Coca-Cola submitted evidence showing the impressive sales of the COCA-COLA ZERO product, significant advertising expenditures, and extensive unsolicited media coverage.

Well, apparently some of Coca-Cola’s competitors were paying close attention to the federal trademark records in August 2007 because Royal Crown Company (maker of Diet Rite soda) and Companhia de Bebidas das Americas – AMBEV (a Brazilian soft drink manufacturer) filed trademark oppositions against Coca-Cola’s application for COCA-COLA ZERO on the basis that the mark is not entitled to registration without a disclaimer of the word “ZERO.”  Both of the opposers note in their oppositions that “zero” is a highly descriptive term in the beverage industry and express concerns that Coca-Cola will attempt to interfere with the legitimate use of the word “zero” by Coca-Cola’s competitors to describe attributes of their beverages.  In fact, Coca-Cola has already filed oppositions against a number of trademark applications for marks that incorporate “zero,” including PURE ZERO and DIET RITE PURE ZERO (owned by Royal Crown), LESS THAN ZERO, ZERO IS GOOD, SKINNY WATER ZERO, DOUBLE ZERO, and NATURALLY ZERO.  As of today, the oppositions filed by Royal Crown Company and Companhia de Bebidas das Americas – AMBEV are still pending but we should have a decision by the Trademark Trial and Appeal Board within the next few months.

In my humble opinion, I think the trademark examining attorney should have stuck to her guns and forced Coca-Cola to appeal her refusal to register COCA-COLA ZERO without a disclaimer of “ZERO.”  It looks to me like she got overwhelmed by the almost 100 pages of arguments and evidence Coca-Cola submitted in support of its position and failed to consider the real-world impact on Coca-Cola’s competitors of allowing Coca-Cola to claim exclusive rights in such an incredibly descriptive word.  I don’t know about you, but I feel that “zero” is essentially the same as saying “diet,” “lite,” “light,” or “free” when you’re talking about a product not containing calories or certain ingredients.  There’s no way a company would be entitled to exclusive rights in those terms, so why should “zero” be treated any differently?

Having said that, PepsiCo owns a federal trademark registration for the mark PEPSI ONE.  The PEPSI ONE soft drink only has one calorie per eight ounce serving.  But, the registration does not include a disclaimer of the word “ONE.”  On the other hand, Dr. Pepper/Seven Up, Inc. is the owner of a federal trademark registration for DR PEPPER TEN.  The DR PEPPER TEN soda has ten calories per can.  And, the registration does include a disclaimer of “TEN.”

Please excuse this trademark attorney while he beats his head against a wall in frustration.

This week’s article involves a two year fight between the Hershey Chocolate & Confectionery Corporation (“Hershey”) and the United States Patent and Trademark Office regarding the chocolate bar pictured above.  On August 20, 2009, Hershey filed a trademark application seeking to register the following trademark for “candy and chocolate,” which is described by Hershey as “a configuration of a candy bar that consists of twelve (12) equally-sized recessed rectangular panels arranged in a four panel by three panel format with each panel having its own raised border within a large rectangle:”

The Trademark Examining Attorney assigned to review Hershey’s application refused registration of the trademark for two reasons.  First, he asserted that the three-dimensional configuration was functional and not eligible for federal registration under any circumstances.  Basically, he argued that the configuration of the candy bar was primarily to facilitate breaking it into bite-sized pieces.  Because the configuration provided a specific utilitarian advantage to the consumer and was not merely acting as a trademark (like the word HERSHEY’S), the Trademark Examining Attorney deemed the overall design to be functional.

In the alternative, the Trademark Examining Attorney argued that, even if the candy bar configuration was not functional, it was still not entitled to federal registration because it was simply non-distinctive product design that had not yet acquired distinctiveness or “secondary meaning” among consumers.  In other words, the Trademark Examining Attorney argued that most consumers would not recognize the design of the Hershey bar as being a trademark exclusively used by Hershey to identify and distinguish its candy bars from those offered by Hershey’s competitors.  Rather, consumers would perceive it as just another ho-hum product design that they couldn’t care less about.

In response, Hershey first addressed the functionality rejection.  Hershey pointed out that candies and chocolates are manufactured in a wide variety of sizes and shapes, but that none of them embody the same features or combination of features as Hershey’s configuration.  For instance, some chocolate bars are divided into 16 square-shaped segments, some are divided into 28 rectangular segments, and others have no segments at all.  This tends to indicate that Hershey’s use of its particular configuration is not necessarily superior to other configurations and that granting Hershey exclusive rights to its configuration would not put competitors at a significant non-reputation based disadvantage.

Hershey then took aim at the Trademark Examining Attorney’s second refusal, which was based on his opinion that the candy bar design was non-distinctive.  Hershey claimed that it has been using the design for over 40 years and that it had spent close to 200 million dollars on nationwide advertising over the past 24 years.  In addition, sales of candy bars with the particular configuration had exceeded four billion dollars over the past 12 years.  Hershey also referred to a third-party website that described the candy bar design as a “classic confectionery icon,” but because Hershey forgot to actually attach a printout of the website page as part of its response, it was not admitted into evidence.

The Trademark Examining Attorney was underwhelmed by Hershey’s arguments.  He maintained his functionality refusal and rejected Hershey’s evidence of acquired distinctiveness as being insufficient.  Hershey countered with even more evidence and affidavits from Hershey employees and others in the candy industry (225 pages worth) attesting to the fact that the candy bar configuration had no utilitarian advantage and that a limitless variety of other designs and configurations were equally feasible and cost-effective.  In support of its position that the configuration had acquired distinctiveness, Hershey submitted a market research survey indicating that around 42% of likely purchasers of chocolate bars identified the Hershey bar design as uniquely belonging to Hershey (which is quite high).  Still, the Trademark Examining Attorney remained unconvinced and made both of his refusals final.  He also submitted into evidence an expired utility patent (not owned by Hershey) that was for a candy manufacturing process that involved scoring chocolate so that it could be broken into desired shapes and sizes for purposes of eating, sharing, measuring, and cooking.  The Trademark Examining Attorney argued that the existence of this utility patent is persuasive evidence of functionality because the statements in the patent refer to the utilitarian function and advantages of scoring chocolate.  He further stated that “the subdividing of a rectangular piece of candy into smaller rectangular pieces of candy with break-off lines is so common and non-distinctive in the candy industry” that Hershey would have to show a lot more than it did to prove that the configuration of its Hershey bar had acquired distinctiveness in the minds of consumers.  Hershey appealed the decision to the Trademark Trial and Appeal Board and is currently awaiting a decision.

So, what do you think?  Do you agree with Hershey or the Trademark Examining Attorney?  Although reasonable minds can differ, I think the design of the Hershey candy bar is functional.  Of course, I don’t know for sure what was going on in the minds of Hershey product developers 40 years ago, but seeing that the Hershey bar configuration is pretty bland and pedestrian, I have to believe it was designed for another purpose other than to “wow” the American public.  That purpose would probably be to make it easier to divide the chocolate for eating and cooking.  But if it’s not functional, then I agree with Hershey that the configuration has probably acquired sufficient distinctiveness for federal registration since I don’t recall seeing a candy bar that looks quite like the Hershey bar.  Of course, I’m usually too busy inhaling my chocolate to really care about how it was scored, divided, or whatever.

Oh, when I asked my non-lawyer girlfriend Karen whether she thought the scored design of the Hershey bar was functional, she immediately said yes.  “How would I know how much chocolate to put onto the graham cracker when I’m making s’mores?  Each s’more has to have an equal amount of chocolate.”  Precisely.

Chick-fil-A is the second largest chicken restaurant chain in the United States.  Its most successful print and television marketing campaign involves a bunch of cows engaging in desperate and hilarious antics in an effort to convert beef lovers into chicken fans.  For the past 16 years, Chick-fil-A has been using the tagline EAT MOR CHIKIN as a prominent part of these advertisements and, in fact, the EAT MOR CHIKIN campaign has won numerous industry awards for creativity and effectiveness.  If you are not repelled by the thought of consuming a crispy fried chicken sandwich and have not pledged allegiance to the King of Meats (beef), check out Chick-fil-A’s website to learn more about the history of the EAT MOR CHIKIN cows and to watch some of the more recent commercials.

Of course, you’re probably not shocked to learn that Chick-fil-A has taken the proper steps to protect its well-known EAT MOR CHIKIN trademark.  A quick search of the Trademark Office’s records indicates that Chick-fil-A is the owner of at least six active federal trademark registrations for EAT MOR CHIKIN.  The oldest of these registrations dates back to 1996 and is for “restaurant services.”  Another trademark registration for EAT MOR CHIKIN followed a year later for “clothing, namely, t-shirts and sweatshirts.”  Now, if you’ve been following my blog or reading up on trademark law in your spare time, you already know that these incontestable trademark registrations give Chick-fil-A the exclusive nationwide right to use its trademarks in connection with its products and services, as well as the right to exclude others from using a confusingly similar trademark for identical or related products and services.

So, according to an Associated Press article published on November 28, a Vermont folk artist by the name of Bo Muller-Moore has been printing the phrase EAT MORE KALE on shirts and stickers since 2000.  His website indicates that his products are all about promoting healthy eating and supporting small local food producers.  Apparently, about five years ago, Chick-fil-A sent Muller-Moore a cease and desist notice demanding that he stop printing and selling products with the EAT MORE KALE name on them.  The article states that Muller-Moore’s attorney traded a few letters with Chick-fil-A and that was it.  Never heard from Chick-fil-A again.  Well, up until now.  About a month after Muller-Moore filed a trademark application seeking to register EAT MORE KALE, he received a letter from Chick-fil-A ordering him to stop using the phrase and to transfer his domain name (eatmorekale.com) to Chick-fil-A.

Really Chick-fil-A?  This is how you want to portray yourself?  Going after some guy who’s not even in the restaurant business and who’s operating a small screen-printing business out of his garage in the middle of Vermont?  Not cool, especially considering that there’s a real question as to whether Muller-Moore is even using EAT MORE KALE as a trademark.  That’s right.  Just splashing EAT MORE KALE on the front of a t-shirt does not make it a trademark.  That type of use is called “ornamental” use because people aren’t necessarily purchasing the shirt because is comes from Muller-Moore or because they care that Muller-Moore produced the shirt.  Rather, people are buying the shirt because they simply like the EAT MORE KALE phrase and what it connotes.  In other words, consumers don’t perceive EAT MORE KALE as a clothing brand like they do NIKE or GAP.  In reviewing Muller-Moore’s trademark application and the specimens of use Muller-Moore submitted, I am confident that the Trademark Office will preliminarily reject his application on the basis that EAT MORE KALE does not function as a trademark.

If I was in charge of making the legal decisions at Chick-fil-A (which I would only do if promised free food as part of my compensation package), I would have (1) looked back in my records to see if Chick-fil-A had ever sent Muller-Moore a cease and desist notice, (2) directed my attorneys to monitor the progress and status of the EAT MORE KALE application, and (3) not sent any correspondence to Muller-Moore unless the application was approved by the Trademark Office and published for opposition.  In the event the Chick-fil-A trademark application is published for opposition, Chick-fil-A could file a 90 day extension of time to oppose the application and then use that time to communicate its concerns to Muller-Moore in a professional manner and to work toward reaching an amicable resolution.  Instead, Chick-fil-A decided to be unnecessarily aggressive and to make outrageous demands of Muller-Moore that Chick-fil-A should have known could end up as part of an Associated Press news story that’s now been distributed through hundreds of news outlets.  Idiotic?  You make the call.

By the way, this is the same company that prides itself on requiring that all of its restaurants be closed on Sundays so that employees and franchise operators can spend time with their loved ones and to worship if they want to.  So, I guess it’s OK to be a trademark bully six days of the week so long as you take Sunday off.  As a fan of Chick-fil-A, I find its actions against Muller-Moore disappointing and in contradiction of the values it portrays to the public.  But, don’t get me wrong, I still strongly believe that we should all EAT MOR CHIKIN…….at KFC.

A couple of weeks ago, I received a telephone call from a potential client located here in the Midwest.  He told me that he recently received a letter from a trademark attorney representing Airwair International Limited.  Airwair is the British company that manufactures Dr. Martens footwear.  Now, if you’ve ever owned a pair of Dr. Martens boots, you might remember that almost all of them have a prominent black and yellow fabric tag that has the word AIRWAIR emblazoned on it (as shown in the photograph above).  The word AIRWAIR refers to the fact that Dr. Martens boots have air-cushioned soles (called “bouncing soles”) that make the boots more comfortable to wear.  According to the letter my potential client received, Airwair has been using the AIRWAIR trademark in connection with footwear and various clothing items for over 25 years in the United States and that it is the owner of several federal trademark registrations for AIRWAIR.  I actually had a very cool pair of denim Dr. Martens boots back when I was in middle school and remember cutting off the AIRWAIR tag because I thought it looked stupid.  As an adult, I am now aware that this was a sacrilegious act.  Oops.

So, why did Airwair International have its trademark attorney send my potential client a letter in the first place?  Well, my potential client had just started a small clothing company called “AirWear.”  Although he had not yet manufactured or sold any clothing, he had purchased a slew of domain names that incorporate the word AIRWEAR and had filed a fictitious name registration with the Secretary of State indicating that he was going to be doing business under the AIRWEAR name.  He also had a professionally designed logo which was displayed on a rudimentary website accessible at one of his domains.  Airwair’s letter communicated its belief that my potential client’s use of AIRWEAR was an infringement of its long-standing federal trademark rights in AIRWAIR.  As such, Airwair demanded that my potential client (1) cease and desist from using AIRWEAR in connection with clothing products, (2) discontinue use of all domain names that incorporate AIRWEAR, and (3) identify and transfer to Airwair all domain names that contain the AIRWEAR trademark.

Of course, my potential client was not too happy about receiving this letter.  After all, he had already spent a couple of thousand dollars on developing the AIRWEAR trademark and didn’t want to basically have to start all over again.  I suggested to him that we conduct a federal trademark search to verify Airwair’s claims of ownership in the AIRWAIR mark and to determine whether there were any other similar trademarks not owned by Airwair that were registered for clothing or footwear.  He agreed with this course of action and hired me to perform the trademark search and to render an opinion as to whether his use of AIRWEAR was likely to cause confusion with Airwair’s use of AIRWAIR.  My hunch was that there would be quite a few trademarks out there that incorporate both “air” and “wear” (or similar variations) considering that the words are not exactly unique.

Well, to my surprise, the search revealed that the only active trademarks in Class 25 (which is the clothing class) that contain “air” and “wear” (or “wair” or “ware”) were those owned by Airwair International.  In addition, the search indicated that Airwair had filed a number of oppositions over the years against trademark applications for marks that it considered too close for comfort, such as UNDER AIR WEAR and BIG AIR WEAR.  I relayed this unfortunate information to my client and advised him that he would spend substantially more money fighting Airwair than just simply phasing out use of AIRWEAR and transitioning to a new trademark.  Needless to say, my client was disappointed to hear this news, but I think he understands that litigation under these circumstances would just be a waste of precious resources that could be better used to build his business.

Honestly, I believe the cease and desist notice from Airwair International was almost a blessing in disguise for my client because he received it prior to investing tens of thousands of dollars into the AIRWEAR trademark.  Had Airwair found out about my client’s use of AIRWEAR five years down the road when his business was fully operational and generating decent income, it would have been much more difficult, expensive, and time-consuming for my client to make the change.  All of the consumer goodwill and public recognition of the AIRWEAR trademark would be lost and it’s possible that my client’s business would have never completely recovered.  This is why it’s essential to have a trademark attorney conduct a trademark search prior to adopting a new name for a product or service.  It minimizes the risk of being sued for trademark infringement and gives you peace-of-mind that you aren’t stepping on the trademark rights of others.

This week’s article is about an awesome reality show on the A&E television network and some rapper I’ve never heard of who hopefully falls off the face of the Earth sooner rather than later after stirring up this ridiculous trademark dispute.  For those of you who haven’t had the pleasure of watching “Storage Wars,” the show revolves around a bunch of competing auction hunters who bid on the contents of abandoned storage units after having only five minutes to conduct a visual inspection of the unit without being able to go inside and rummage through all of the stuff.  Now, I know that sounds about as interesting as watching someone cook a leg of lamb on the Food Network, but it is actually one of my favorite programs.  I mean, these guys are often risking thousands of dollars on trying to win storage lockers that might end up only containing costume jewelry and broken electronics rather than a safe stuffed with cash or rare antiques.  The best is when one of them thinks they hit the jackpot with a particular item but then later finds out it’s only worth a few bucks.  Call me mean-spirited, but sometimes failure is fun to watch.

Anyway, one of the main “characters” on Storage Wars is a guy named David “The Mogul” Hester.  And he really is a character.  Hester is the owner of Rags to Riches consignment store in Costa Mesa, California and has the largest operation of all the auction hunters featured on the show.  He is pretty much an arrogant bully who attempts to intimidate his competition and will often bid up the price of storage units just to make them pay top dollar.  But what really makes Hester stand out from the crowd is that when he makes a bid, he shouts out an annoying “YUUUP!” rather than just saying “yep” or giving a simple head nod or hand wave.  In addition, when Hester attends these auctions, he wears shirts and caps on which his signature “YUUUP!” appears.  All in all, he’s a tool, but there’s no denying that he’s an entertaining tool who knows the ins and outs of buying abandoned storage units.  Oh, and Hester also has three recently-filed trademark applications for the word YUUUP! for clothing, stickers, posters, and a variety of entertainment services.  Gotta love this guy!

So, now comes along a rapper by the name of Tremaine Neverson, a/k/a Trey Songz, who apparently likes to perform an animal-like squeal in some of his “music” that basically amounts to a combination of “YEEEE” and “UUUUP.”  Why anyone would want to listen such a squeal is beyond my comprehension, but I guess at least some people do since Mr. Songz won the 2009 BET Award for Best Male R&B Artist.  Well, Mr. Songz obviously has some free time and extra money to burn because he asked his attorney to send David Hester a cease and desist notice claiming that Hester was infringing his trademark by using YUUUP! and demanding that Hester stop commercially exploiting YUUUP! in any manner whatsoever.  So, basically, Trey Songz is asserting that Hester’s use of YUUUP! is likely to cause confusion among the general public or will cause people to mistakenly assume that there is some kind of association between Hester and Songz.  If you’re thinking what I’m thinking, then we surely agree that the only person who is confused is Trey Songz.

In a move that is totally in line with Hester’s “take no prisoners” attitude, Hester filed a declaratory judgment action against Songz in a New York federal court requesting the court to declare that Hester’s use of YUUUP! does not infringe any trademark rights allegedly owned by Songz.  Man, I hope Hester’s trademark attorney just wipes the floor with this moron.  Seriously, who is going to think that some thrift store owner currently experiencing his 15 minutes of fame is connected in any way to a run-of-the-mill recording artist who is probably less famous right now than Hester is?  Ummmm, nobody, that’s who.  If you’re with me, gimme a YUUUP! YUUUP!

It has been my experience over the years that people are generally confused about the differences between trademarks, copyrights, and patents.  The general public tends to use these terms interchangeably as if they’re synonyms.  Well, it is my hope that this brief article will clear up any confusion you might have about these three forms of intellectual property and will allow you to show off to your friends and family about how smart you are.  And I’m not even asking for any credit.

Trademarks are the most valuable assets a business will likely ever own.  A trademark is typically a word, logo, phrase, symbol, or character that is used in connection with the advertising and sale of products and services.  Trademarks can also be sounds (e.g. the NBC chimes), colors (e.g. the Kodak yellow), and even scents (e.g. sewing thread that smells like plumeria blossoms).  Some extremely well-known trademarks include APPLE, the Pillsbury Doughboy, the Nike “swoosh,” and THE ULTIMATE DRIVING MACHINE.  Business owners use trademarks to identify and distinguish their products and services from their competitors.  You’ll see trademarks in all kinds of marketing and advertising, displayed on product packaging, printed on tags and stickers affixed to products, and sometimes even stamped on products themselves.  Consumers like you and me use trademarks to compare different products and services and to make our buying decisions.  Trademarks are also important because they embody the qualities and characteristics of the goods and services with which they’re used, while also offering consumers an assurance of quality and consistency.

You can obtain what are called “common law” rights in a trademark by properly using the trademark in association with the advertising and sale of products and services.  Your common law trademark rights can last forever so long as you continue to use the trademark in commerce.  A federal trademark registration from the United States Patent and Trademark Office acknowledges and enhances common law trademark rights and provides you with many significant benefits and protections.  Trademark registrations need to maintained and renewed periodically in order to keep them from being canceled.

On the other hand, copyright protects “original works of authorship fixed in a tangible medium of expression.”  Such works include literature, movies, art, screenplays, websites, music, architectural works, and photographs.  Contrary to what a lot of folks believe, copyright does not protect ideas, themes, concepts, discoveries, or inventions.  There is also no copyright protection available for titles, short phrases, facts, or quotations.  During the term of copyright protection (which is generally the life of the author plus an additional 70 years), the protected work may not be used, displayed, reproduced, distributed, or performed without the permission of the copyright owner.  Copyright is actually mentioned in the U.S. Constitution and the federal government has put copyright laws in place to encourage us to be creative and to promote the advancement of the arts.

The good news is that an original work automatically has copyright protection upon its creation.  Unfortunately, you cannot enforce the copyright against a dirty little infringer until you obtain a copyright registration from the United States Copyright Office.  In other words, you need a valid copyright registration certificate before you can sue someone for copyright infringement.

Finally, patents protect novel and non-obvious inventions.  “Utility patents” basically protect the way an invention functions and works, while “design patents” protect the ornamental appearance of an invention rather than its utilitarian features.  Once a patent is issued, the invention cannot be commercially made, used, distributed, or sold without the patent owner’s permission.  Assuming you pay all the required maintenance fees, utility patents are granted for a term that typically ends 20 years from the date you first applied for the patent.  Design patents last 14 years from the date the patent is granted and no maintenance fees are required.  When the patent expires, the inventions falls into the public domain and anyone who wants to make or sell the invention is free to do so.

As you can see, trademarks, copyrights, and patents are all very different and serve distinct purposes.  If you have any questions about what type of protection you need for your valuable intellectual property, you should contact a trademark attorney, copyright attorney, or patent attorney for assistance.