Seattle Trademark Lawyer

Unusual — even risqué — brands are memorable, which can pay dividends.

That’s the upshot of a recent New York Times article.

For example, David Hall was running a small construction company when he decided to phase out the scaffolding part of his business. As a joke, for one last job, he put up a banner that identified his company as the “Mammoth Erection” company. 

His phone hasn’t stopped ringing since.

That isn’t a surprise to trademark lawyers. A trademark tells consumers where the good or service comes from. The whole idea is if a customer likes what you’re selling, all they have to do is look for your trademark (such as your name, logo, or tag line) to buy from you again. And if your trademark is forgettable, that’s hard for the customer to do.

I’m not a suggesting being cute (or shocking) just for the sake of being cute (or shocking). But as long as you’re being smart about selecting a trademark, it makes sense to start investing in one that will help your company stand out from the crowd.

Wines are a classic example. Stores are filled with bottles of CHATEAU this and RIDGE that. Forgettable. But not MAD HOUSEWIFE, MONOGAMY, or FAT BASTARD. They may not be the best wines around, but the playfulness and originality their names convey suggest they’re not the worst out there, either. They certainly stand out from the boring names their competitors use.

This is a more branding than law, but producers can help trademarks serve their purpose by selecting marks that stand out.

Trademarks are source identifiers. They tell consumers where a good or service comes from. So when a mark consists of descriptive words, it really doesn’t function as a trademark. It tells consumers about the product — not who sells it.

For this reason, the U.S. Patent and Trademark Office will refuse to register a mark it deems to be “merely descriptive.” That is, a mark that describes a feature or benefit of the product, or the geographic area in which the product is made. “Self-laudatory” (“We’re the best!”) trademarks also fit into this category.

If the PTO objects because it perceives a mark as being descriptive, the trademark owner has a few options. First, it can try to convince the examining attorney that the mark isn’t descriptive, but instead is “suggestive.” The main difference between these categories is how quickly and specifically the mark conveys the information. If the mark leaves nothing to the consumer’s imagination (like SPEEDY AUTO GLASS), then it will be deemed descriptive. But if the consumer needs to use a little imagination to understand the information being communicated or the message is vague (like CHICKEN OF THE SEA), the mark will be classified as “suggestive.” If the mark is suggestive, the PTO will withdraw its objection and the mark can be registered on the Principal Register.

If the owner has used the mark for a long time (at least five years, but longer is better) or spent lots of money advertising the mark (like a million or more dollars), the owner can make a case that an otherwise descriptive mark functions as a source identifier because it has acquired secondary meaning. Secondary meaning means that consumers have come to associate the description with a particular source (like SEATTLE’S BEST COFFEE) and thus it functions as a trademark.

The owner’s last resort in responding to an objection is to amend its application to the Supplemental Register. The Supplemental Register is where descriptive marks without secondary meaning can be registered. The upside is that the owner can use the Circle-R symbol to indicate the mark is registered, and the PTO will cite the registration against future trademark owners applying for federal registration if the PTO deems the later-filer’s mark to cause a likelihood of confusion with the registered mark. The downside is the mark must be in use at the time the application is amended (i.e., there is no intent-to-use filing basis) and the Supplemental Register does not give the registrant the presumption of being the exclusive nationwide use of the mark in connection with the specified services — one of the main benefits of being on the Principal Register.

A trademark owner also can incorporate descriptive words into a new, distinctive trademark, such as a logo. Doing so (which requires a new application) can avoid a descriptiveness objection because the stylized design or other distinctive elements would make the mark more than “merely” descriptive. However, the owner should expect the PTO to require the owner to disclaim exclusive rights in the descriptive words that are included in the logo.

I’m now back from Germany, where I traveled to help with a program sponsored by the University of Washington School of Law.

It combined UW law students with law students from Europe. The Europeans learned about American intellectual property law, and the Americans learned how they do things in Europe.

I spoke on two topics: “look and feel” protection under U.S. trademark law, and right of publicity under U.S. law. These issues come up from time to time in my practice, so they may be of interest to trademark owners.

The takeaway for “look and feel” protection: distinctive elements of product packaging, store interiors, or product design can be protectable under trademark law as “trade dress” if together they tell consumers where the product comes from. In other words, if they function the source-identifying role that trademarks play.

However, there are two big caveats. First, the elements can’t be functional. If they serve a useful purpose, they can’t be protectable under trademark law (though they could be protectable under patent law). Second, if they are part of the product themselves, the owner must prove that they have acquired secondary meaning, meaning that over time consumers have come to associate the trade dress (such as the product color, shape, or style) with a particular producer. Until that happens, product features can be freely copied.

The most important thing to know about right of publicity protection is that some states — including Washington — have statutes that protect against the commercial use of a person’s name, likeness, and voice without the person’s permission. The First Amendment is the biggest exception to such protection. The press can do most anything it likes without fear of liability. So can artists — as long as the artist embellishes the literal image of a person enough to transform it into a work of art (regardless of whether the art is good or bad, flattering or critical). Almost everyone else needs the person’s permission before making use of their “personality” in marketing a product.

My slides are available here (look and feel) and here (right of publicity).