Tag: distinctiveness

trademark disctiveness

Longstanding and Emerging Legal Issues in Trademark Law

Trademark law protects brand identifiers like names, logos, words, slogans, and other things, ensuring consumers aren’t deceived about the source of a product or service. It also protects businesses from unfair competition. Core concepts include use in commerce, distinctiveness and the likelihood of confusion, which dictate whether a mark can be registered and enforced.

Jack Daniels and Bad Spaniels

Whether you’re a startup founder, an artist, or just astudent of the law, understanding trademark law is essential. Here is a breakdown of the fundamentals, followed by some of the biggest trending issues in the trademark world today.

The Fundamentals of Trademark Law

A trademark is any word, name, drawing, graphic, or device used to identify the source of goods or services and distinguish them from others. The four essential requirements for a valid trademark are:

Distinctiveness

A trademark must operate not only to identify the source of a product or service but also to distinguish it from others.

It is evaluated along a spectrum:

  • Fanciful marks: These are completely made-up, invented words, graphics, etc. that have nothing whatsoever to do with the nature or quality of the products or services with which they are associated. These are inherently distinctive, meaning it is not necessary to prove that consumers have come to associate the mark with the source. XEROX and EXXON are examples.
  • Arbitrary marks: These are real words, images of real things, etc., but they bear no relationship to the product or service with which they are associated. APPLE computers is an example. These, too, are inherently distinctive.
  • Suggestive marks: Suggestive marks are marks that hint at the nature or a quality of the product or service, but do not directly describe it. They require some imaginative thought on the part of the consumer to “connect the dots.” JAGUAR for cars and COPPERTONE for suntan lotion are examples. A suggestive mark is inherently distinctive.
  • Descriptive marks. These describe a quality, ingredient, or characteristic of the product or service. Unlike suggestive marks, they don’t merely hint at it; they come right out and directly describe the product or service, or a characteristic or ingredient of it. HOLIDAY INN and INTERNATIONAL BUSINESS MACHINES are examples. Descriptive marks cannot be claimed as trademarks unless they have acquired “secondary meaning.” The burden of proof is on the claimant to show that consumers have come to identify the brand with the claimant’s product or service, and not with other sources of it.
  • Generic marks: These are names for a category of product or service. MILK, as a mark for milk would be an example. No trademark rights can be claimed in generic marks.

Likelihood of Confusion

The primary legal standard for both registering a mark and suing for infringement is “likelihood of confusion”. This means determining if an ordinary consumer would mistakenly believe that your product or service and someone else’s come from the same source, or are affiliated.

Courts apply a multi-factor test (primarily the DuPont factors) to assess likelihood of confusion. The most critical ones are:

  • Similarity of the marks: Do they look, sound, or convey a similar commercial impression?
  • Relatedness of the goods/services

Courts consider other factors, too.

Two marks may be confusingly similar even if they are not identical. The key is whether consumers would be likely to confuse the source of one with the source of the other.

Use in Commerce

A mark must be used in commerce as a source identifier. Otherwise, a trademark does not come into being. To register a trademark federally with the USPTO, the use must be in interstate or foreign commerce. Purely intrastate commerce will not suffice for federal registration.

Registration

In the United States, trademarks come into existence through use in commerce as a trademark. When all the elements of a valid trademark exist (distinctiveness, etc.) a “common law” trademark exists. The scope of protection a common law trademark affords, however, is limited to the geographic area of trade. To get nationwide protection and the right to use the coveted ® symbol, you must register your mark with the U.S. Patent and Trademark Office (USPTO).

My experience has been that the major stumbling blocks for people who apply to register their trademark with the USPTO are (1) lack of distinctiveness, usually due to selecting a descriptive mark without acquired meaning; (2) likelihood of confusion with another person’s or company’s trademark; and (3) improperly completing the application for registration.

Topical Issues in Trademark Law

Fraudulent filings

The USPTO has implemented rigorous enforcement frameworks to crack down on fraudulent filings. Historically, many trademark owners were in the habit of registering their marks in more than one category of goods or services, either to “keep options open” for possible company expansion into a new product line, or to prevent competitors from doing so. The USPTO is making more vigorous efforts to crack down on registrants who fraudulently claim use in connection with goods or services with which they are not actually using the mark.

Due to a massive influx of suspicious, fraudulent, or automated filing mills, the office has cracked down by requiring stricter identity verification and heavily scrutinizing specimens of use. If a brand is caught digitally altering logos or faking mock-ups of their goods in commerce, their registration is being swiftly canceled. Examiners are inspecting specimens of use more closely now, trying to ferret out digitally created mock-ups of trademarks being used in commerce. A false or fraudulent specimen of use is grounds for cancellation of registration.

The Trademark Modernization Act has given the USPTO new and enhanced powers to cancel unused and fraudulent registrations.

AI-Generated Counterfeits

Generative-AI is being used to create knock-offs of digital products. This is creating challenges for owners of trademarks in digital products and services.

Intermediary Platform Liability

Can an online marketplace platform or intermediary website or online service provider be held contributorily liable for facilitating or otherwise contributing to counterfeit and trademark-infringing goods being sold on their platforms?

Phrases Without Trademark Functionality

People are increasingly trying to claim trademark ownership over common words and phrases, such as, “Hello. How are you?” The USPTO and courts are rebuffing a lot of these efforts. It is still possible for a phrase to become a trademark, but proof of acquired secondary meaning as a source identifier is needed. Otherwise, an applicant is likely to experience a “failure to function as a trademark” denial.

Read more about non-AI-related legal issues.

Need help with a trademark registration? Contact attorney Thomas James.

Enduring (Non-AI) Legal Issues

With so much attention being given to the legal issues that AI-powered technologies are generating, it can be easy to overlook or underestimate the importance of long-standing legal issues having nothing to do with artificial intelligence. While it would be neither possible nor particularly useful to catalog all of them in a single blog post, it might be helpful to highlight a few key legal issues that are developing alongside developments in AI law.

With so much attention being given to the legal issues that AI-powered technologies are generating, it can be easy to overlook or underestimate the importance of long-standing legal issues having nothing to do with artificial intelligence. While it would be neither possible nor particularly useful to catalog all of them in a single blog post, it might be helpful to highlight a few key legal issues that are developing alongside developments in AI law.

Copyright Law

The core principles of intellectual property remain anchored in traditional law. In that connection, it is important to understand the philosophy of copyright. Copyright is not the only kind of intellectual property there is, but it is by far the most common. Everyone who has ever written a story or a poem, scribbled a doodle, or composed an email message is very likely a copyright owner. Merit is not a requirement. In theory, even that terrible drawing of a turkey you made in first grade by tracing your fingers and hand on paper and drawing a head and two legs on it may be protected by copyright. Whether it makes sense to pay the filing fee to register something like that is a different story.

A key issue in copyright law that continues to develop is fair use. Courts have been grappling with how to interpret and apply the four vaguely worded factors they must to make findings about whether a particular otherwise-infringing use is “fair” or not. The idea of “transformative use” is at the center of this evolving doctrine. Andy Warhol Foundation for the Visual Arts v. Goldsmith, decided in 2023, is a leading case in this area now. Other limitations on copyright infringement liability, such as the safe harbors set out in the Digital Millennium Copyright Act (DMCA), are also important. There are also evolving protections for sound recordings and licensing. Other topics in copyright law include such things as the registration requirement, damages for infringement, diversity, copyright estoppel, the limitations period, the extent of protection for shorter works, compulsory e-book licensing, and circumvention of copyright protection measures. 

The Internet Archive lawsuit addressed the phenomenon of digitized e-books and the impact on authors of making them freely available to readers via an online digital library. 

The new administrative court for resolving smaller copyright claims, the Copyright Claims Board, is one of the more significant developments in copyright law in a long time. Find out what to know about the new CCB. 

Read about the top copyright cases of 2021.

Read about the top copyright cases of 2022.

Read about the top copyright cases of 2024.

Meanwhile, more and more works continue to enter the public domain. 

Trademark Law

There has been a surge in interest in trademark law ever since the COVID-19 phenomenon. Many small brick-and-mortar businesses had to shut down as people were instructed to quarantine at home. While quarantining at home, a lot of people had the same idea: Starting a home-based, online business. Those new online businesses needed to have names. The USPTO was soon flooded with an unusually large number of trademark registration applications. Competition in the trademark space became fierce. Descriptiveness and likelihood-of-confusion challenges increased. New laws and procedures, such as the Trademark Modernization Act, were enacted to clear more room for new businesses by cancelling unused trademarks and cancelling registrations for classes of goods and services no longer being used by the trademark owners. Interest in nontraditional marks like color marks, trade dress, and sound and olfactory trademarks (smell marks) has also grown.

The clash between First Amendment values and trademark interests continues to surface from time to time. Courts have addressed trademark speech rights on several occasions now. 

And of course, distinctiveness, likelihood of confusion, and registration disputes are ongoing. 

Other Legal Topics

Constitutional law acquired renewed relevance in 2025, with issues running the gamut from freedom of speech to the separation of powers.

Dramatic changes in family structures and sex roles have been accompanied by major changes in family law, particularly in regard to the custody of children. More jurisdictions are warming up to the ideas of joint custody and shared parenting.

E-commerce law, too, is rapidly evolving, as more and more businesses supplement their physical presence with an online one. A growing number of businesses operate exclusively online. This has raised a wide range of legal issues entailing significant permutations of existing laws, and in some cases, brand new laws and legal frameworks.

As I mentioned at the outset, it would be neither possible nor useful for me to catalog every new legal development in a blog like this. The best I can do is highlight a few of them from time to time.

In this category is a post I wrote about a continuing legal education program I presented with Donald Hubin (National Parents Organization) and Professor Daniel Fernandez-Kranz:

Joint Custody and Equal Shared Parenting Laws

Pertinent to e-commerce law is an article I wrote about the sales and use tax “nexus” requirement for taxes on online sales: 

“Sales and Use Tax Nexus: The Way Forward for Legislation” by Tom James

 

Foundational Context: Major IP Developments of 2023

This section is a repost of an article I wrote in 2023 describing major developments in various areas of intellectual property law that took place that year. While I have broadened the scope of the discussion, it can still be useful to look back at what went on during that pivotal year, as it provides important context for the developments in IP law that are taking place now.

Copyright: Fair Use

Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith et al.

I’ve written about this case before here and here. The Supreme Court issued a ruling in the case in May. The decision is significant because it finally reined in the “transformative use” doctrine that the Court first announced in Campbell v. Acuff-Rose Music back in 1994. In that case, 2 Live Crew had copied key parts of the Roy Orbison song, “Oh, Pretty Women” to make a parody of the song in its own rap style. The Court held that the 2 Live Crew version, although reproducing portions of both the original song and the original recording of it without permission, transformed it into something else. Therefore, even though it infringed the copyright, the 2 Live Crew version was for a transformative purpose and therefore protected as fair use.

In the thirty years since Campbell, lower courts have been applying the “transformative use” principle announced in Campbell in diverse and divergent ways. Some interpretations severely eviscerated the copyright owner’s exclusive right to make derivative works. Their interpretations often conflicted. What one circuit called transformative “fair use” another circuit called actionable infringement. Hence the need for Supreme Court intervention.

In 1984, Vanity Fair licensed one of photographer Lynn Goldsmith’s photographs of Prince to illustrate a magazine article about him. Per the agreement, Andy Warhol made a silkscreen using the photograph for the magazine and Vanity Fair credited the original photograph to Goldsmith. Unknown to her, however, Warhol proceeded to make 15 additional works based on Goldsmith’s photograph withour her permission.. In 2016, the Andy Warhol Foundation for the Arts licensed one of them to Condé Nast as an illustration for one of their magazines. The Foundation received a cool $10,000 for it, with neither payment nor credit given to Goldsmith. The Foundation then filed a lawsuit seeking a declaration that its use of the photograph was a protected fair use under 17 U.S.C. § 107. The district court granted declaratory judgment in favor of the Foundation. The Second Circuit Court of Appeals reversed, ruling that the four-factor “fair use” analysis favored Goldsmith. The Supreme Court sided with the Court of Appeals.

Noting that it was not ruling on whether Warhol’s making of works using the photograph was fair use, the Court limited its analysis to the narrow question whether the Foundation’s licensing of the Warhol work to Condé Nast was fair use. On that point, the Court determined that the use of the photograph to illustrate a story about Prince was identical to the use Goldsmith had made of the photograph (i.e., to illustrate a magazine article about Prince.) Unlike 2 Live Crew’s use of “Oh, Pretty Woman,” the purpose of the use in this case was not to mock or parody the original work.

The case is significant for vindicating the Copyright Act’s promise to copyright owners of an exclusive right to make derivative works. While Warhol put his own artistic spin on the photograph – and that might have been sufficient to sustain a fair use defense if he had been the one being sued – the Warhol Foundation’s and Condé Nast’s purpose was no different from Goldsmith’s, i.e., as an illustration for an article about Prince. Differences in the purpose or character of a use, the Court held, “must be evaluated in the context of the specific use at issue.” Had the Warhol Foundation been sued for displaying Warhol’s modifications of the photograph for purposes of social commentary in its own gallery, the result might have been different.

Although the holding is a seemingly narrow one, the Court did take the opportunity to disapprove the lower court practice of ending a fair use inquiry at the moment an infringer asserted that an unauthorized copy or derivative work was created for a purpose different from the original author’s.

Copyright Statute of Limitations and Damages

Warner Chappell Music, Inc. v. Nealy

The U.S. Supreme Court has granted certiorari to review this Eleventh Circuit decision. At issue is whether a copyright plaintiff may recover damages for infringement that occurred outside of the limitations period, that is, infringement occurring more than three years before a lawsuit was filed.

The circuits are split on this question. According to the Second Circuit, damages are recoverable only for acts of infringement that occurred during the 3-year period preceding the filing of the complaint. The Ninth and Eleventh Circuits, on the other hand, have held that as long as the lawsuit is timely filed, damages may be awarded for infringement that occurred more than three years prior to the filing, at least when the discovery rule has been invoked to allow a later filing. In Nealy, the Eleventh Circuit held that damages may be recovered for infringement occurring more than three years before the claim is filed if the plaintiff did not discover the infringement until some time after it first began.

A decision will be coming in 2024.

Artificial Intelligence

Copyrightability

Thaler v. Perlmutter, et. al.

This was an APA proceeding initiated in the federal district court of the District of Columbia for review of the United States Copyright Office’s refusal to register a copyright in an AI-generated work. In August, the district court upheld the Copyright Office’s decision that an AI-generated work is not protected by copyright, asserting that “human creativity is the sine qua non at the core of copyrightability….” For purposes of the Copyright Act, only human beings can be “authors.” Machines, non-human animals, spirits and natural forces do not get copyright protection for their creations.

An appeal of the decision is pending in the D.C. Circuit Court of Appeals.

Infringement

Many cases that were filed or are still pending in 2023 allege that using copyrighted works to train AI, or creating derivative works using AI, infringes the copyrights in the works so used. Most of these cases make additional claims as well, such as claims of unfair competition, trademark infringement, or violations of publicity and DMCA rights.

I have been blogging about these cases throughout the year. Significant rulings on the issues raised in them are expected to be made in 2024.

Trademark: Parody Goods

Jack Daniels’s Properties Inc. v. VIP Products LLC

For more information about this case, read my blog post about it here.

This is the “parody goods” case. VIP Products used the “Bad Spaniels” name to market its dog toys, which were patterned on the distinctive shape of a Jack Daniel’s whiskey bottle. VIP filed a lawsuit seeking a declaratory judgment that its product did not infringe the Jack Daniel’s brand. Jack Daniel’s counterclaimed for trademark infringement and dilution. Regarding infringement, VIP claimed First Amendment protection. Regarding dilution, VIP claimed the use was a parody of a famous mark and therefore qualified for protection as trademark fair use. The district court granted summary judgment to VIP.

The Supreme Court reversed. The Court held that when an alleged infringer uses the trademark of another (or something confusingly similar to it) as a designation of source for the infringer’s own goods, it is a commercial, not an expressive, use. Accordingly, the First Amendment is not a consideration in such cases.

Rogers v. Grimaldi had held that when the title of a creative work (in that case, a film) makes reference to a trademark for an artistic or expressive purposes (in that case, Fred Astaire and Ginger Rogers), the First Amendment shields the creator from trademark liability. In the Jack Daniel’s case, the Court distinguished Rogers, holding that it does not insulate the use of trademarks as trademarks (i.e. as indicators of the source or origin of a product or service) from ordinary trademark scrutiny. Even through the dog toys may have had an expressive purpose, VIP admitted it used Bad Spaniels as a source identifier. Therefore, the First Amendment does not apply.

The Court held that the same rule applies to dilution claims. The First Amendment does not shield parody goods from a dilution claim when the alleged diluter uses a mark (or something confusingly similar to it) as a designation of source for its own products or services.

Trademark: International Law

Abitron Austria v. Hetronic International

Here, the Supreme Court held that the Lanham Act does not have extraterritorial reach. Specifically, the Court held that Sections 1114(1)(a) and 1125 (a)(1) extend only to those claims where the infringing use in commerce occurs in the United States. They do not extend to infringement occurring solely outside of the United States, even if consumer confusion occurs in the United States.

The decision is a reminder to trademark owners that if they want to protect their trademark rights in other countries, they should take steps to protect their rights in those countries, such as by registering their trademarks there.

Patents: Enablement

Amgen v. Sanofi

In this case, the Supreme Court considered the validity of certain patents on antibodies used to lower cholesterol under the Patent Act’s enablement requirement (35 U.S.C. 112(a)).  At issue was whether Amgen could patent an entire genus of antibodies without disclosing sufficient information to enable a person skilled in the art to create the potentially millions of antibodies in it. The Court basically said no.

If a patent claims an entire class of processes, machines, manufactures, or compositions of matter, the patent’s specification must enable a person skilled in the art to make and use the entire class. In other words, the specification must enable the full scope of the invention as defined by its claims. Amgen v. Sanofi, 598 U.S. ____ (2023)

Patents: Executive Power

In December, the Biden administration asserted that it can cite “excessive prices” to justify the exercise of Bayh-Dole march-in rights. The Biden Administration also has continued to support a World Trade Organization TRIPS patent waiver for COVID-19 medicines. These developments are obviously of some concern to pharmaceutical companies and members of the patent bar.

Conclusion

My vote for the most significant IP case of 2023 was Andy Warhol Foundation v. Goldsmith. Lower courts had all but allowed the transformative use defense to swallow up the exclusive right of a copyright owner to create derivative works. The Supreme Court provided much-needed correction. I predicted that in 2024, the most significant decisions would also be in the copyright realm, but that they would have to do with AI. The prediction turned out to be accurate.

Suggestive Trademarks

The line between descriptiveness and suggestiveness is not always clear.

Is that a source identifier in your pocket or are you just being descriptive?

19th century suggestive post illustration for "Suggestive Trademarks" by Cokato, Minnesota attorney Thomas B. James

 

A trademark gives its owner an exclusive right to use it in connection with a particular kind or category of products or services. At the same time, though, trademark law seeks to promote competition. To that end, it generally does not allow people or companies to claim the exclusive right to use generic words or words that are used to describe a feature or quality of a product. If someone could claim an exclusive right to use gasoline or unleaded as a trademark for petroleum products, then nobody else could enter the market.

To qualify for trademark protection, a mark cannot be merely descriptive of the product or service. It must be distinctive, in the sense that consumers see it not merely as a description of the product or service but as an identifier of the source of the product or service, that is to say, an identifier of the producer or sponsor of the product or service.

Sometimes a mark that is merely descriptive at first acquires distinctiveness over time. Through advertising and long usage, consumers come to see it as a source-identifier. International Business Machines (IBM) is an example. It is descriptive of the product or service, but over time consumers have come to associate it with a particular source of business machines. In general, though, words and phrases that are merely descriptive do not qualify for trademark protection.

Inherently Distinctive Trademarks

Some kinds of marks are regarded as inherently distinctive, meaning there is no need to make a showing of acquired distinctiveness before trademark rights may be claimed in them. A mark is inherently distinctive if it is fanciful, arbitrary, or suggestive.

A fanciful mark is something that is completely made up. Xerox is an example.

An arbitrary mark is one which, although a real word, bears no logical relationship to the product or service. Apple, as a trademark for computers, is an example.

A suggestive mark is one that hints at but does not directly describe a quality or feature of a product or service.

Why It Matters

A lot rides on whether a mark is suggestive or merely descriptive. If it is merely descriptive, then its first use in commerce will not be as a trademark. Competitors may freely use the same mark until it acquires distinctiveness. If you try to register it with the USPTO, you might get it on the Supplemental Register, but it won’t make it onto the Principal Register. It will not enjoy the presumptions of validity and ownership that trademarks registered on the Principal Register do. Maybe you will be able to get it there someday, but only if you present persuasive evidence of acquired distinctiveness.

Suggestive trademarks, on the other hand, may qualify for trademark protection upon their first use in commerce. And if registered, they get all the advantages of being included in the Principal Register.

Where Is the Line?

The difference between descriptiveness and suggestiveness is not very intuitive. The classic formulation is that a descriptive term directly describes something, while a suggestive term merely hints at it. If a term directly states what a product or service is or does, or literally describes a feature or quality, then it might be generic or descriptive, but it is not suggestive. If a term does not directly describe the product or service, or a quality or feature of it, that is to say, if some additional thought process is needed to get to the intended description, then it is suggestive.

Jaguar is an example of a suggestive trademark. The product does not literally feature or contain a wild animal. An additional thought process is needed to get to the intended descriptor, which in this case would be fast. Fast would be a merely descriptive mark for a car. Jaguar requires an additional thought process, namely, the idea that jaguars are fast, to reach the intended meaning.

Coppertone is another example. Suntan oil would be a descriptive mark. Coppertone, on the other hand, does not directly describe the product. Instead, it suggests what might happen if someone uses it, i.e., the person may acquire something akin to a copper skin color.

Incidentally, changing the spelling of a descriptive term generally will not bring it into the realm of inherent distinctiveness even if the word, as so spelled, technically is an invented one. Fastt Car, for instance, would almost certainly be treated by the USPTO or a court as a merely descriptive trademark. The relevant question is whether consumers would read or hear it as an adjective, not whether a member of the Spelling and Grammar Police Squad would.

Criticism

Courts and legal scholars have noted that the line between descriptiveness and suggestiveness is not always clear. Professor Jake Linford, for example, has argued that the distinction is “illusory at best,” and that a suggestive mark is “more like a descriptive mark than the law currently recognizes.” (Jake Linford, The False Dichotomy Between Suggestive and Descriptive Trademarks, 76 OHIO ST. L.J. 1367 (2015), available here. )

Nevertheless, the distinction is currently recognized in the law, at least in the United States.

European Union

The European Union appears to take a narrower view of suggestiveness. For example, it denied protection for “How Can I Make You Smile Today?” as a trademark for orthodontic and dental supplies. As certain fast food chains and performing artists can attest, slogans and phrases can easily be claimed as trademarks in the United States. This slogan would clearly fall on the “suggestive” side of the suggestive/descriptive line under the classic formulations of the distinction in the United States.

Read about other alluring trademark legal issues.

 

 

 

“The” A Registered Trademark Now

It happened. “The” is a registered trademark now. The USPTO issued a registration certificate for the word “The” to Ohio State University (Sorry; the Ohio State University) on June 21, 2022. How did this happen, and what does it mean?

It happened. “The” is a registered trademark now. The USPTO issued a registration certificate for the word “The” to Ohio State University (Sorry; the Ohio State University) on June 21, 2022. How did this happen, and what does it mean?

The The Saga

The legal quest to own “the” began on May 6, 2019, when Marc Jacobs Trademarks, LLC (MJT) filed an application with the United States Patent and Trademark Office (USPTO) to register the word as a trademark for use on clothing, bags and similar merchandise. MJT claimed a first use date of December 3, 2018.

On August 8, 2019, the Ohio State University filed its own application to register the word as a trademark for use on clothing. The university claimed first use in commerce at least as early as August, 2005.

Due to the earlier filed MJT application, the examining attorney issued an office action to the Ohio State University. It referenced the earlier filed MJT application as a potential bar to registration of the Ohio State University claim. The application was suspended pending the outcome of MJT’s “the” application.

MJT’s application was published for opposition on October 27, 2020. The Ohio State University filed an opposition. The Ohio State University alleged that;

[MJT’s THE mark] “so resembles Ohio State’s THE mark as to be likely, when used on or in connection with the applied-for goods, to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection or association of MJT with Ohio State, or as to the origin, sponsorship or approval of the applied-for goods or commercial activities by Ohio State, all in violation of § 2(d) of the Trademark Act….”

Opposition of The Ohio State University in re: TM Application No. 88416806

It appears that the parties have reached a cooperative use agreement of some kind. The opposition has been withdrawn and the opposition proceeding has been terminated.

Ornamentation vs. The Registered Trademark

Both companies have faced objections from examining attorneys that their uses of the word “the” on clothing were ornamental. A decorative use of a word, symbol, design, etc. that does not function as an identifier of the source of a particular product or service is not sufficient to satisfy the “use in commerce” requirement for trademark registration.

After the USPTO rejected the MJT application in March, 2020, MJT filed a successful request for reconsideration. That led to the publication for opposition to which the Ohio State University responded. The USPTO issued a Notice of Allowance on October, 2021. The MJT application is still pending in the USPTO.

The Ohio State University initially encountered the same kind of resistance from the USPTO. The university remedied the problem, however, by showing that it wasn’t just using the word ornamentally; it was also putting it where trademarks usually go, such as inside the shirt at the back of the neck and on its website.

That satisfied the examiner. The mark was published for opposition, and on June 21, 2022 a registration certificate issued.

Scope of The Registered Trademark

Does this mean nobody can use the word “the” in a trademark anymore? No.

To begin with, the Ohio State University has only registered it in Class 25. Class 25 consists of sports and collegiate athletics clothing.

The registered trademark certificate
The trademark registration certificate

The ultimate question, in all cases, is whether another company’s use of the word would be likely to confuse consumers as to the origin of a product or service. The Tax Curative Institute should have very little to fear from the Ohio State University’s registration of “the” as a trademark for collegiate and athletic clothing.

What about displaying the word on clothing, though? Does the Ohio State University’s ownership of the “the” trademark for clothing mean that no one can display the word “the” on a T-shirt now?

Not necessarily. Purely ornamental uses of the word should not expose a T-shirt seller to a risk of infringement liability. For example, a company selling T-shirts emblazoned with the band name “The Slants” should not have to worry about being sued by the Ohio State University.

Of course, unless they have a license from The Slants, they might encounter some pushback for using the band’s name. That’s because the band owns a trademark in their name (“Slants”). Merely using the word “the,” however, should not be a problem. Consumers are not likely to think that every shirt they come across originates from The Slants merely because it has the word “the” on it.

Read about other enduring trademark issues.

Get in touch with The Cokato Copyright Attorney.

No Trademark Registration .sucks

The U.S. Trademark Office denied an application to register “.sucks” as a trademark. The Court of Appeals affirmed. Cokato attorney Tom James explains.

by Cokato attorney Tom James

Most people are familiar with a few gTLDs (generic top level domains). The gTLDs .com, .net, .biz, .info, .edu and .gov come to mind. The list of available gTLDs has grown considerably over the past few years, however. Now there are literally hundreds of them. (View the full list here.) Some examples: .food, .auction, .dog, .beer.

And .sucks.

The United States Trademark Office denied an application to register that gTLD as a trademark. The Federal Circuit Court of Appeals just affirmed that decision. The case is  In re Vox Populi Registry, Ltd.,  No. 2021-1496 (Fed. Cir., February 2, 2022).

The applications

Vox is the domain registry operator for the .SUCKS gTLD. The company filed two trademark applications with the USPTO. One was for the standard character mark .SUCKS in Class 42 (computer and scientific services) for “[d]omain registry operator services related to the gTLD in the mark” and in Class 45 (personal and legal services) for “[d]omain name registration services featuring the gTLD in the mark” as well as “registration of domain names for identification of users on a global computer network featuring the gTLD in the mark.” The other application was for the stylized form of the mark, as shown in the illustration accompanying this article.

The examining attorney refused both applications, on the ground that they failed to operate as trademarks, i.e., as source identifiers. The TTAB agreed, finding that consumers will perceive “.sucks” as merely one of several gTLDs that are used in domain names, not as a source identifier.

Concerning the claim in the stylized form, the Board concluded that although the pixelated font resembling how letters were displayed on early LED screens is not common today, it is not sufficiently distinctive to qualify for trademark protection in this case.

Vox appealed the part of the decision relating to the stylized font to the Federal Circuit Court of Appeals. The court affirmed.

The standard character mark

Under the Lanham Act, a service mark may be registered only if it functions to “identify and distinguish the services of one person . . . from the services of others and to indicate the source of the services.” 15 U.S.C. § 1127. Matter that merely conveys general information about a product or service generally does not function as a source identifier.

In this case, the court held that substantial evidence supported the Board’s finding that consumers will view this standard character mark as only a non-source identifying part of a domain name rather than as a trademark. The court pointed to specimens from Vox’s website that treated domain names ending in “.sucks” as products. rather than as identifier of Vox’s services. Consumers are likely to see gTLDs as part of domain names, not as identifiers of domain name registry operators.

The stylized design

Design or stylization can sometimes make an otherwise unregistrable mark registrable, provided the stylization creates an impression on consumers that is distinct from the words or letters themselves. Here, the Board determined that because of the ubiquity of the font in the early days of computing, consumers would view the pixelated lettering as ordinary rather than as a source identifier.

It appears that Vox did not claim that the stylized presentation of .SUCKS had acquired distinctiveness. If it had done so – and if it could present persuasive evidence of acquired distinctiveness – then the stylized mark might have been registrable.

Conclusion

Does this decision mean that a gTLD can never serve as a trademark? No. To give just one example, AMAZON is both a gTLD and a trademark. The import of the case is only that a gTLD is not likely to be registrable as a service mark for a domain name registry service, where consumers are more likely to see it as simply being a part of a domain name, not as an identifier of a particular domain registry service.

Contact Tom James

Contact attorney Tom James for help with trademark registration.