This week’s article is about the recent antics of Norwood Promotional Products, LLC. Norwood is a major supplier of imprinted promotional products. It is probably best known for its line of KOOZIE insulated can and bottle sleeves, but it also offers hundreds of other items on which you can print company names and logos or really anything else you desire. Did you know that KOOZIE was even a trademark? Most people just use the term generically to refer to insulated beverage sleeves, but it actually is a registered trademark owned by Norwood. Although it may not be for long since there is some ongoing litigation about whether KOOZIE has become just a generic word. But that’s a story for another day.
Norwood is the owner of a 2010 federal trademark registration for NORWOOD ICATALOG for “electronic catalog services featuring promotional products and custom imprinting services.” Although this registration is on the Principal Register (which is where businesses want their trademarks to be), the word “ICATALOG” has been voluntarily disclaimed by Norwood. A disclaimer means that Norwood does not claim any exclusive rights to use the term “ICATALOG” because it is merely descriptive of the services listed in Norwood’s registration. I also note that Norwood owns another trademark registration for ICATALOG by itself for “custom imprinting on advertising and promotional products.” This registration is on the Supplemental Register, which is another concession by Norwood that “ICATALOG” is descriptive and entitled to only the narrowest scope of protection, if any. In this registration, Norwood claims to have been using ICATALOG only since November 2008, which is a very short period of time in the trademark universe, especially when we’re talking about highly descriptive trademarks like ICATALOG. In general, a descriptive trademark needs to be in continuous use for a minimum of five years before the Trademark Office will even consider granting the trademark owner exclusive rights in the trademark. Sometimes, a particular term is so descriptive that it is almost impossible to prove that consumers recognize it as a trademark belonging to a single owner rather than simply a word that tells them something about the product or service.
On July 15, 2011, a business by the name of Thomas Publishing Company filed a trademark application seeking to register the following trademark for services related to the publishing, provision, and hosting of electronic catalogs:
As you would expect, the Trademark Office required Thomas Publishing to disclaim the exclusive right to use ICATALOGS since it is unquestionably descriptive of the services listed in the application. In fact, if you check out Thomas Publishing’s website, you will see that it’s sort of a central repository where manufacturers can upload their electronic catalogs so that buyers can more quickly and easily research different types of industrial products. The Trademark Office did not cite either of Norwood’s registrations as a basis for refusing registration of Thomas Publishing’s trademark, most likely because Norwood has twice admitted that it doesn’t own exclusive rights in the incredibly descriptive word “ICATALOG.” As such, Thomas Publishing’s application was approved by the Trademark Office and was published for opposition on December 27, 2011.
Well, I bet you can guess what happened next. Despite the fact that Norwood has twice conceded any exclusive rights in the word ICATALOG, it decided to go ahead and file an opposition against Thomas Publishing’s trademark application on the basis of priority and likelihood of confusion with its two registered marks. The most interesting thing about the notice of opposition itself is that Norwood fails to mention that one of its registrations is only on the Supplemental Register and the other one includes a disclaimer of ICATALOG. Of course, it’s understandable that Norwood doesn’t want to emphasize these facts, but I also think its candor with the Trademark Trial and Appeal Board is somewhat lacking. Needless to say, ignoring the hard truth signals to me that Norwood knows that its case is flimsy at best, and completely outrageous at worst.
I might have to change careers if Norwood manages to pull out a victory in this opposition. It seriously would be that appalling to me. The policy behind not allowing descriptive words or phrases to be monopolized as trademarks by a single business is so that competitors are not unfairly hindered and constrained from using them to legitimately advertise and sell their products and services. I mean, why does Norwood have any more right to use ICATALOG than Thomas Publishing when both companies use it in association with services related to catalogs available over the Internet? Let’s face it, how many ways are there to refer to an electronic catalog and still have ordinary consumers know what the heck you’re talking about? Not very many. Here is the miniscule list I came up with:
So, if the Trademark Office awards a victory to Norwood, it would essentially be giving Norwood the ability to exclude others from using ICATALOG for products/services related to electronic catalogs. And if that happens, there would be absolutely nothing stopping someone else from owning ECATALOG. Or ELECTRONIC CATALOG. Or INTERNET CATALOG. Pretty soon, there would be no reasonable alternatives left to use. I am fairly confident that the Trademark Office will see things the way I do and slap Norwood around a little for filing such utter and complete nonsense, but you can never know for sure. It’s just a shame that Norwood prefers to make unnecessary and expensive trouble rather than just act in an honest and decent manner in the first place.