Tag: trademark law

Smelly Trademarks

If you have a distinctive smell, you might be able to claim trademark rights in it.

If it smells like a trademark and it functions like a trademark, it might be a trademark.

Rose-Scented Tires

Sumitomo Rubber Industries has successfully applied for the registration of an olfactory trademark in India. It is the smell of a rose, as applied to tires. India’s Trademark Registry has now accepted it for advertisement.

This is not the first time Sumitomo has secured trademark protection for its smelly tires. In fact, the company’s rosy tire was the first smell mark registered in the United Kingdom, back in 1996.

It’s a Smell World

Since the U.K.’s venture into scent trademarks, smell trademarks have been approved in several other jurisdictions around the world.

In 1999, the European Union accepted an application to register the smell of freshly cut grass as a trademark for tennis balls. It quickly closed the door to scent marks, however, in 2002. In Sieckmann v. German Patent and Trademark Office, trademark protection was sought for a “balsamically fruity” scent with “a slight hint of cinnamon.” The ECJ ruled that a chemical formula did not represent the odor, the written description was not sufficiently clear, precise and objective, and that a physical deposit of a sample of the scent did not constitute the “graphic representation” the applicable trademark law required. This closed the door to smell marks in the EU for many years.

Scent mark registrations have been issued in the United States, though there are only a little over dozen of them. Examples include Play-Doh, Power Plus fruity-scented vehicle lube, and minty fresh bowling balls.

The non-functionality requirement is the biggest obstacle for scent trademarks in the United States. The scent must be non-functional and serve only as a source identifier. Smells intrinsic to the purpose of a product will not qualify. So no trademark protection for the smell of a perfume or air freshener. And sorry, Burger King, probably no trademark for the smell of charred meat, either.

“Graphical Representation”

India’s statute requires trademark applicants to provide a graphical representation of the mark. This is what has stood in the way of smell claims in India all this time. Sumitomo, however, figured out a way to do it. It created a representation of the odor in “olfactory space.”

It worked.

Will Flavor Be the Next Frontier?

It is unlikely that flavors will join smells as registrable brand identifiers. Although theoretically possible, no flavor has ever been registered as a trademark in the United States. The USPTO has expressed doubt that a flavor could ever function as a trademark because it is functional. (TMEP 1202.13). Also, although a dog might do it, consumers normally do not taste a product to determine its origin before deciding whether to buy it. Merchants probably would frown on the practice, as would other customers in the store. Hopefully, stores do not allow dogs to sample products intended for human consumption, either.

Need help registering a non-traditional trademark? Contact attorney Tom James.

Suggestive Trademarks

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

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.



Balancing the First Amendment on Whiskey and Dog Toys

The US Supreme Court has heard oral arguments and will soon decide the fate of the “Bad Spaniels” dog toy.

The United States Supreme Court has weighed First Amendment rights in the balance against many things: privacy, national security, the desire to protect children from hearing a bad word on the radio, to name a few. Now the Court will need to balance them against trademark interests. The Court heard oral arguments in Jack Daniel’s Props. v. VIP Prods., No. 22-148, on March 22, 2023.

I’ve written about this case before. To summarize, it is a dispute between whiskey manufacturer Jack Daniel’s and dog-toy maker VIP Products. The dog toy in question is shaped like a bottle of Jack Daniel’s whiskey and has a label that looks like the famous whiskey label. Instead of “Jack Daniel’s,” though, the dog toy is called “Bad Spaniels.” Instead of “Old No. 7 Brand Tennessee sour mash whiskey,” the dog toy label reads, “Old No. 2 on your Tennessee carpet.”

VIP sued for a declaratory judgment to the effect that this does not amount to trademark infringement or dilution. Jack Daniel’s filed a counterclaim alleging that it does. The trial court ruled in favor of the whiskey maker, finding a likelihood of consumer confusion existed. The Ninth Circuit Court of Appeals, however, reversed. The appeals court held that the dog toys came within the “noncommercial use” exception to dilution liability. Regarding the infringement claim, the court held, basically, that the First Amendment trumps private trademark interests. A petition for U.S. Supreme Court review followed.

Rogers v. Grimaldi

Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) is a leading case on collisions of trademark and First Amendment rights. In that case, Ginger Rogers, Fred Astaire’s famous dance partner, brought suit against the makers of a movie called “Ginger and Fred.” She claimed that the title created the false impression that the movie was about her or that she sponsored, endorsed or was affiliated with it in some way. The Second Circuit affirmed the trial court’s ruling against her, on the basis that the title of the movie was artistic expression, protected by the First Amendment as such.

When the medium is the message

Some commentators have suggested that the balance struck in favor of the First Amendment in Rogers v. Grimaldi should only apply in cases involving traditional conveyors of expressive content, i.e., books, movies, drawings, and the like. They would say that when the product involved has a primarily non-expressive purpose (such as an object for a dog to chew), traditional trademark analysis focused on likelihood of confusion should apply sans a First Amendment override.

Does this distinction hold water, though? True, commercial speech receives a lower level of protection than artistic or political speech does, but both dog toys and movies are packaged and marketed commercially. Books, movies, music, artwork, video games, software, and many other items containing expressive content are packaged and marketed commercially. Moreover, if a banana taped to a wall is a medium of artistic expression, on what basis can we logically differentiate a case where a dog toy is used as the medium of expression?

A decision is expected in June.

Digital Tokens and Trademarks

The Nike and “JRR Token” cases

by Cokato attorney Tom James

Minting and selling digital tokens can raise copyright issues, trademark issues, or both. I talked about copyright issues in a previous post. In this article, I outline the trademark aspects of digital tokens.

Blockchains and digital tokens

You can find a quick explanation of what blockchains and digital tokens (fungible and non-fungible) are in this article.

People use digital tokens for various reasons, including:

  • Cryptocurrency. Fungible tokens are used for this purpose.
  • Authentication. Some companies use NFTs as an authentication system for their customers, especially for high-end or luxury goods.
  • Advertising/Publicity. Companies sometimes distribute collectibles or other branded merchandise as a way of increasing brand awareness. NFTs offer one more way of doing that.
  • Revenue. Non-fungible tokens (NFTs) increasingly are sold at auctions. Sometimes a decent profit can be made this way.

Trademarks

A trademark is something that operates as an identifier of the source or origin of a product or service, distinguishing a particular product or service from those marketed by other people or companies.

Many kinds of things can serve as trademarks. Words, letters, symbols, logos, sounds, motions, colors, trade dress (product packaging or design), architecture, etc.  – and combinations of them – can potentially serve as trademarks, provided they operate as such.

Functional aspects of a product, packaging or other trade dress cannot be claimed as trademarks. This includes both utilitarian and aesthetic functionality. The presence of a drive-through window cannot be claimed as a fast food company’s trademark. Why not? Because it is not just ornamental; it serves a useful function. The orange flavor of a beverage or chewable tablet cannot be claimed as a trademark because it enhances the consumer’s enjoyment (or tolerance) of the product. That is to say, it serves an aesthetic function. You get the idea.

Trademark protection for digital tokens

Like an identifier of any other product or service, an identifier of the source or origin of an NFT or other digital token may be protected as a trademark, provided it operates as trademark, is distinctive, is nonfunctional, and is not likely to cause consumer confusion.

There are people and companies whose only business is dealing in digital products and services.  In addition, a growing number of owners of existing trademarks for non-digital products (such as shoes, books, clothing, and so on) are now marketing digital goods, as well.

For a list of major brands that have filed NFT trademark applications in the United States, check out this Trademark Tote Board.

Some examples of companies that have filed for trademark protection of identifiers of NFTs include Nike, Converse, Mattel, Lion’s Gate, Estee Lauder Cosmetics, Kiss Catalog Ltd. Famous personalities (or their representatives), such as Kobe Bryant and Jay-Z are also filing trademark applications. The New York Stock Exchange has filed an application to register “NYSE” as a trademark for a marketplace for the trading of NFTs.

The most common classes in which digital tokens and services related to them are registered are IC 9 (downloadable software and media); IC 35 (business services), IC 36 (financial, banking, and real estate services), and IC 42 (scientific and technical services). This is not an exhaustive list.

In the United States, a trademark arises by operation of law when a valid mark is used in commerce as a trademark. By “valid mark,” I mean a mark that meets the requirements for one in the United States. It must be distinctive, nonfunctional, not likely to cause confusion about the source or origin of a product or service, and it must be used in commerce as a source identifier.

The JRR Token

The recent WIPO decision in Tolkien Estate Ltd. V. Domain Investments/Matthew Jensen illustrates the interplay of digital tokens and trademark law.

In this case, a Florida resident marketed and offered for sale digital tokens corresponding to a digital currency. He registered “jrrtoken.com” as a domain name for the conduct of this business. J.R.R. Tolkien’s estate filed a UDRP claim challenging this registration. The estate owns the trademark in “J.R. R. Tolkien,” which is registered as a trademark in both the U.K. and the U.S. The website of this domain name resolved to a website at “thetokenofpower.com.” That website included images of wizards, including one which the panel found looked like Gandalf from The Hobbit, and the phrase, “The One Token That Rules Them All.”

The panel found that “jrrtoken,” although not identical, is confusingly similar to “J R R Tolkien,” noting that “[w]hen viewed quickly, the disputed domain name and the . . . trademark look similar.”

The panel concluded that the name was selected for the purpose of creating a false and misleading association with J. R. R. Tolkien and profiting from the author’s reputation and goodwill.

Using a trademark in parody is a protected fair use. The panel here, however, did not regard the use to be parody. It found nothing humorous or funny in the domain name. It was “just a domain name chosen due to its similarities with the Complainant’s trademarks to take commercial advantage of its evocation.” The website was “clearly a commercial venture, which is clever but not humorous.”

Finding that the registration was in bad faith, the panel ordered the domain name transferred to the Tolkien estate.

Nike v. StockX

This month, Nike, Inc. filed a complaint in federal court against StockX, LLC for trademark infringement, dilution and other causes of action allegedly arising out of StockX’s alleged unauthorized use of Nike trademarks to mint NFTs. StockX allegedly claims its NFTs represent physical  Nike products that it stores in its vault.

This case demonstrates the importance of the distinction between an NFT and the product it represents. The first sale doctrine normally protects a reseller from trademark infringement liability. For example, if you legally purchase a pair of Nike brand shoes, then you are entitled to resell them at a garage sale without incurring trademark infringement liability. If StockX legally purchased Nike products and is reselling them without altering the labels on them, then the first sale doctrine might shelter the company from trademark infringement liability. Tokens, however, are not shoes.

It is sometimes possible for two different companies to use the same (or substantially similar) marks to market different kinds of goods or services. For example, one company may use DELTA to market airline services; another may use it to market faucets; and still another may use it to market electronics. The same mark, however, generally cannot be used to market the same, similar or related goods or services.

What is a “related” product or service? Basically, it is a product or service that a consumer could reasonably expect a company to expand into selling. For example, a consumer could reasonably expect a company that currently only sells computers to expand into the market for printers and other computer peripherals as well. Even if a company is currently only selling computers, you should expect to be sued for trademark infringement if you use their trademark to sell peripherals.

Expect courts to be called upon to decide whether consumers could reasonably expect a company to expand into the NFT market. That might be easier for the court in the Nike case to determine, if Nike establishes that it made its intention to move into the NFT market publicly known. It might not be as easy for a court to decide this question in other cases. Expect to see a lot more companies announcing their entry, or intention to enter, into the digital token market.

Dilution

It should be noted that it is not always safe to use an existing company’s trademark even for completely different, unrelated goods. If the trademark is famous, then using it in a way that blurs its distinctiveness or tarnishes its reputation is also unlawful. This is known as “dilution.”

Licensing

If you have a great idea for an NFT using characters or other trademarks that someone else owns, consider obtaining a license to use the trademarks. True, you might have to share profits with the trademark owner, but that could be a small price to pay compared to how much you stand to lose if you are hauled into court for violating trademark rights.

Need help with a trademark registration?

Ready to register a trademark? Contact the Law Office of Tom James.

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