Trademark Attorney Morris Turek

Morris E. Turek

(314) 749-4059

morris@yourtrademarkattorney.com

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Ridiculous Trademark Opposition of the Week – Norwood Promotional Products v. Thomas Publishing Company

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:

ICATALOG
ECATALOG
ELECTRONIC CATALOG
INTERNET CATALOG
DIGITAL CATALOG

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.

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24 Responses to Ridiculous Trademark Opposition of the Week – Norwood Promotional Products v. Thomas Publishing Company

  1. John says:

    Good Afternoon,

    I recently receive notice from Norwood to surrender Flying Coozie name, the website and all content claiming Coozie was too close to Koozie.

    cheers,

    John

  2. Morris Turek says:

    Dear John,

    I’m not surprised. Norwood is quite aggressive when it come to its KOOZIE “mark.” I just sent you an email. Please let me know if I can assist you with this matter in any way.

    Sincerely,
    Morris

  3. Jessie says:

    Norwood is going after everyone that uses “koozie” in it’s domain name. Problem is ….there’s only about 600 domains with the word koozie in them.

  4. Doug says:

    HHi Morris
    I am undergoing an attack from Norwood with concern to their trademark on the word koozie. I registered my domain in 2004 and did due diligence at that time. No one had koozie trademarked. As a matter of fact Norwood had been refused a few years previous. Since the acquisition of Norwood by BIC Graphics in 2009 there has been an aggressive attack on koozie domains. I would appreciate an email from you if you have time.

  5. Morris Turek says:

    Doug,

    Thank you for your message. I just sent you an email asking that you contact me privately about this matter.

    Sincerely,
    Morris

  6. Martin says:

    I too received a letter from Norwood, I just bought a domain name 2 months ago with the word koozie in it, haven’t spent a dime on anything yet, the domain is parked. The term is now generic, if you search Google for Koozie Norwood doesn’t appear until the 5th position, if you search Koozies Norwood isn’t on any of the first 5 pages but the word “Koozie(s)” appears 89 times on the first page of the results. Koozie is the most generally accepted name for these products, what else would someone search for, can/bottle sleeves? That would be like searching for hot bread maker when you’re looking for a toaster.

  7. Matt says:

    I also received a letter from Norwood.. I am in the same boat as Martin I have done nothing with this domain but they say I am still in the wrong.

  8. Morris Turek says:

    Dear Matt,

    Thank you for your post. I also received your email and I just responded to you.

    Sincerely,
    Morris

  9. Colin W. McClow says:

    Thanks for this insight Morris! My brother and I are looking to start our own company and website dealing with Koozies. Is it worth the hassle of using the name Koozie or do you have any guess on how long this trademark battle will take place?

    Thanks again!

    Colin

  10. Morris Turek says:

    Colin,

    I believe the litigation may have been settled. As of today, Norwood is still the owner of a federal registration for the KOOZIE trademark. So, you need to be careful about using the word KOOZIE in connection with your products/services. If you would like to discuss this matter in greater detail, feel free to give me a call.

    Thanks,
    Morris

  11. Chris says:

    Hi Morris,

    I’ve been involved with Norwood’s aggressive litigation scare tactics for the past year dealing with my business, which actually is a different product altogether, but one in which Norwood claims is ‘confusingly similar’. I’ve since ditched my domain name with ‘koozie’ in it, and have made every attempt to comply with not using ‘their’ mark. However, I’ve gotten another letter stating ‘coozie’ is too close, as in ‘slap coozie’ is too easily confused with ‘KOOZIE’. They have threatened litigation, as if they own the rights to the generic version of the word. Please contact me, I’d like to help get the mark deemed generic at the USPTO. Thanks!

  12. Morris Turek says:

    Chris,

    Thank you for commenting on my blog. I have sent you an email asking that you contact me if you wish to discuss this matter further.

    Thanks,
    Morris

  13. Preston says:

    Dear Morris I also have just received a letter from Norwood claiming the name of our product is “confusingly similar” to theirs. We purposely spelled coozie with a “c” and not “k” because they were claiming all rights to the word “Koozie” and yes they do have “Koozie” registered. Our product is not like your standard beverge “Koozie” which is what most people think of when they see the word “koozie” they usually relate it to canned and bottled drinks thats why we spelled ours different “Coozies” because it is dfferent and is not even a product they sale. We designed and manufactured this product with patent pending(1)They also want us to abandon our federal trademark application we have had the name registered with the State of SC.(2) Remove all references to “Koozie” from any and all websites/marketing materials where the mark is pictured next to no genuine Koozie brand products(3) delete all content from website and assign same to Norwood. Please contact me with any advise you may have. Thanks

  14. Morris Turek says:

    Dear Preston,

    Thank you for your post. I am going to send you an email so we can discuss this matter privately.

    Sincerely,
    Morris

  15. Neal says:

    Morris, I also received a letter from Bic World asking me to ceise and desist in the use of the word “KOOZIE”. They went a step further with me and had my Facebook page shut down automatically. I registered my company name in Texas several years ago and had no problems. What little research I have done suggests that the word “KOOZIE” should be public domain giving their abandonment of the word for several years. The name of my company is Cold Leather Koozies and would rather like to keep the name; however I certainly do not want to get into a lengthy legal battle either. Please let me know what the latest is regarding the use of the word “KOOZIE”. Many Thanks, Neal

  16. Morris Turek says:

    Dear Neal,

    Thank you for your post. I have sent you an email so we can discuss this matter privately.

    Thank you,
    Morris

  17. bret says:

    Morris,

    Im afraid I am of the same boat as these people, Norwood is trying to take our name away, I would like to speak with you about the matter. please help us out.

    thanks,

    Bret

  18. Morris Turek says:

    Bret,

    Thank you for your post. Please feel free to give me a call to discuss privately. My number is (314) 749-4059.

    Sincerely,
    Morris

  19. Jason says:

    I got the same email from the Norwood attorney awhile ago. I actually pulled up the lawsuit. It is online to download for a couple of dollars. Look on page 10 of the Court Document.

    “Kustom contends “KOOZIE” was registered as a trademark in error by the
    USPTO and that because it lacks distinction and is a generic reference to insulated beverage holders, the mark’s validity should be revisited. However, Kustom gave up its right to challenge the validity or legitimacy of the mark when it accepted $40,000 and a conditional license to use the mark in order to settle the litigation both parties pursued back in 2006.”

    The Judge doesn’t say it is incorrect. He only says that Kustom cannot challenge it because they got paid. May be the cheap way out.

    Seems to me, someone should contact Kustom and see if there was a trademark error at USPTO and what it was and follow up.

    Not worth it to me, as I have very little invested in this product.

  20. air says:

    thanks for this informative article, Morris.

    it seems that norwood has taken and interest in attacking the small businesses and crafty stay at home moms who use the word koozie in their listings to sell on Etsy as well.

    if you have any advice for work from home moms like myself, that would help us legally use the word koozie in our listings with out risking our stores being shut down, I would love to hear them, as I’m sure hundres of others would as well.

  21. Moses says:

    Morris, is this still going on? Have you had any luck coming up with a licensing agreement for the word Koozie?

  22. Morris Turek says:

    It appears that Norwood withdrew its Notice of Opposition and the ICATALOGS mark issued to registration after Thomas Publishing made an amendment to the identification of services listed in its application.

  23. Hello,
    I just had a infringement complaint made against a leather item I had for sale on Etsy using the word Coozie. Etsy pulled my listing. Im confused on how they can make a claim on coozie when they trademark it with a K. Are they going to make claims on every word that sounds like this trademark. What if i used Kuzi? Are they going to claim that is theirs as well.

  24. Morris Turek says:

    Unfortunately, that’s always a possibility. The owner of the KOOZIE trademark is pretty aggressive about enforcing its trademark (even though most people believe that KOOZIE is a generic term for beverage sleeve holders).

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