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.