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.