On the heels of the Weight Watchers’ rebrand to the acronym WW, Dunkin’ Donuts announced that it is dropping the term DONUTS from its mark. Starting in January, the doughnut shop will roll out a new logo, store signage, and advertising, but will keep its orange and pink color scheme. But the change is not sitting well with all Dunkin patrons who have a connection to the misspelled DONUT, which is created when the brand launched in 1950.
Ordinarily, deleting non-distinct matter from a composite trademark does not affect the overall commercial impression of the mark. In fact, the Trademark Manual of Examining Procedures states that non-distinct matter should be excluded from a trademark drawing when an application is filed. But something is being lost in the DUNKIN’ DONUTS case because over the years consumers have come to recognize the misspelled word as indicating Dunkin’ Donuts as the source of goods or services displaying that term. And consumers are capable of identifying the same source through more than one trademark. So it seems like Dunkin’ Donuts is losing something by dropping the misspelled DONUTS from its mark.
Dunkin’ Donuts said the reason for dropping DONUTS is to highlight a wider array of menu items and appear to a younger generation. Vox reported what it perceives as a trend for established brands to rebrand to something more “vague.” In the case of an established brand dropping a non-distinctive term like in the case of JO-ANN FABRICS rebranding to just JOANN, the mark is not getting more vague. It retains the distinctive portion that consumers rely on to identify the source of the goods or services.
A trademark is not supposed to say everything about a company’s business. That is what advertising copy is for. The trademark is supposed to represent the reputation of the company, and serve as an indicator of the quality of the goods or services. In other words, when consumers see DUNKIN’ they don’t need to immediately know that the company sells doughnuts, coffee, sandwiches, salads, etc. When they see the term DUNKIN on, for example, a rice cake, they will presume the rice cake is delicious because of their positive experience with the DUNKIN brand.
Weight Watchers announced its rebranding to WW and the launch of a new tagline Wellness that Works, which set off the debate about whether this was a wise move. Weight Watchers was founded in 1963 and currently operates in about 30 countries around the world. The company’s mission was to help participants lose weight by forming helpful habits, eating smarter, getting more exercise, and providing support.
In March of this year, Weight Watchers announced that it intended to enter the competitive meal kit market with the likes of Blue Apron. It was reported that this step was part of CEO Mindy Grossman’s vision of rebranding the company as healthy lifestyle brand. The move to WW that stands for Wellness that Works instead of Weight Watchers is another move in the rebranding plan. But if the decision was made to move entirely away from the brand that has been used for over 50 years, moving to an acronym may not have been the best choice.
Whether you are moving to a similar acronym or an entirely new word or phrase, you will have to spend some significant money to educate the market about your new name. Distinctiveness is an important characteristic of any new name. In the naming context, distinctiveness lets you stand out from the crowd. And in the legal context, distinctiveness provides broader protectable rights.
Accordingly Acronym Finder, there are 81 different WW acronyms. There are also 202 registered trademarks for WW in the United States Patent and Trademark Office database. Not all of these registrations are in the healthy lifestyle space, but it demonstrates that consumers are exposed to a lot of WW acronyms. As a new acronym just starting out, that mean a lot of effort educate the market what your WW stands for.
Acronyms also do not solve conflicts with prior registered marks, which could be increased because of the sheer number of acronyms that are registered. Time will tell whether it was a smart move to walk away from 50 years of prior use of Weight Watchers in favor a new WW acronym or if it could have been possible to create new brand messaging using the well-known Weight Watchers mark.
Luna Cycle filed a trademark application to register the mark LUNACYCLE in standard character form for electric bicycles and replacement parts for electric bikes. The United States Patent and Trademark Office refused registration of Luna Cycle’s mark on the ground that it was likely to cause confusion with the prior registered mark LUNA & Design for women’s bicycle apparel and accessories.
When it comes to assessing the relatedness of the goods, the issue is not whether purchasers would confuse the goods, but rather whether there is a likelihood of confusion as to the source of these goods. Electric bicycles are human-powered bicycles with integrated electric motors to provide a cyclist with additional power and speed. They are marketed towards recreational cyclists.
The Trademark Office offered evidence from brick-and-morter and online retail bicycle stores offering for sale electric bicycles and women’s bicycle apparel. These retailers are not big box retailers but speciality bicycles stores, which the Board found persuasive evidence to conclude that the goods at issue were complimentary.
With respect to the similarity of the marks, Luna Cycle argued that its mark is a telescoped word LUNACYCLE composed of LUNACY and CYCLE. The Trademark Manual of Examining Procedure defines a telescoped word as one that comprises two or more words that share letters (e.g., SUPERINSE or HAMERICAN). And while the Board found that the LUNACYCLE mark is likely to be perceived as a telescoped form it nonetheless found that consumers would treat it like compound word comprising LUNA and CYCLE. The Board hypothesized a scenario where Luna Cycle emphasized the letter “L” in Luna and letter “C” in Cycle because standard character drawing was claimed, and then backed it up with Luna Cycle’s own specimen of use that showed very emphasis the Board assumed could happen. Because the dominant portion of the marks was LUNA, the Board found the marks created overall similar commercial impressions.
Maybe, Luna Cycle would be able to salvage a win by demonstrating the prior registered LUNA & Design mark was weak; thus, entitled to a narrow scope of protection because of the numerous third-party registrations for LUNA. Luna Cycle submitted 100 third-party registrations for marks displaying the LUNA term in International Class 25 for some form of apparel. Several of these third-party registration were for women’s clothing. But because none of these registrations were for women’s bicycle apparel, the Board discounted all of the 100 third-party registrations, which seems like a harsh result.
When a trademark owner licenses its rights to another then subsequently files for bankruptcy, the bankruptcy trustee has the option to reject the trademark license. To reject, rather than assume, the trademark license means to terminate the license agreement. In this situation, the trademark licensee has no option to continue using the trademark. The trademark license is simply terminated. Generally, trademark licenses are rejected by a bankruptcy trustee when the agreement stands in the way of a restructuring.
This treatment of trademarks in the Bankruptcy Code is different from the other forms of intellectual property. When copyrights, patents, and trade secrets are involved, while the bankruptcy trustee can reject the license agreement, the licensee can elect to continue to use the intellectual property provide the royalty payments and other obligations under the license are followed.
For some Courts, this different treatment of intellectual property rights was wrong, so they treated trademarks like the other forms of intellectual property under the Bankruptcy Code. For other Courts, the language in the Bankruptcy Code was clear and Congress by its words decided to treat trademarks differently from the other forms of intellectual property. Mission Product Holdings, Inc. recently filed a Petition for a Writ of Certiorari in the Supreme Court of the United States to resolve the split among the Courts.
The International Trademark Association filed an Amicus Curiae (i.e., Friend of the Court) brief in favor of the U.S. Supreme Court taking the case. According to INTA, allowing trademark licenses to survive bankruptcy will result in a stronger trademark system that will increase the royalties trademark licensees are willing to pay.
There is no question that it is the trademark licensor’s obligation to ensure a certain level of quality in the licensed goods or services is maintained. In some cases, a trademark licensor can satisfy this obligation by relying on its relationship with the licensee. But the types of relationships that allows for this quality control delegation are few in number. If a trademark licensor fails to engage in actual quality control, the result can be an abandonment of all trademark rights.
The difficult question is whether a debtor trademark licensor should be obligated to incur the expense of engaging in quality control if the trademark licensee wants to continue using the trademark. If the Supreme Court takes the case and decides that trademarks should be treated like other intellectual property, then it may make sense to negotiate in any trademark licenses that the licensee must pay the costs for the debtor trademark licensor to exercise it quality control obligations in addition to any royalties owed.
Brand protection is part of a company’s success in maintaining, extending, and expanding its brand reputation in a rapidly changing media environment, including the reliance on social media and online dissemination of advertising campaigns. The growing use of social and digital media increases the speed and extent that information or misinformation and opinions can be shared. Negative posts or comments about a company, its brands, products or services on social or digital media can irreparably damage a company’s brand reputation or brand image, which makes having a sound brand protection strategy critical to a company’s success.
But try to enforce your rights on platforms such as FaceBook, Twitter, Etsy, eBay, Amazon, etc. and the first question you will encounter is “What is your trademark registration number?” If you don’t have a registration number, there is no way to complete the form and your complaint will never be submitted. At that point, the only other way to get some remedial action from these platforms is to present a Court Order.
There are a lot of benefits to obtaining a federal trademark or service mark registration, but online enforcement is key and the starting point to obtaining a federal registration is conducting a trademark search. At a minimum, a trademark search must include the United States Patent and Trademark Office database because a federal registration entitles the owner to nationwide priority even if it is not offer its goods and services nationwide. Assuming the United States Patent and Trademark Office search clears, any additional searching depends on the trademark owners intentions for the goods for services.
But it is a good idea for the search to include a review of the popular social media platforms. Not only is it good to see if there are other goods or services being offered under a similar mark, but it also allows the owner to see what reaction – positive or negative – is being attributed to the proposed mark.
Mansur Gavriel is a luxury handbag brand that sells in store like Neiman Marcus for $395 to $1,295. In 2013, a trademark application was filed for MANSUR GAVRIEL in connection with “handbags; tote bags; purses; wallets.” Except for some minor issues, the MANSUR GAVRIEL application sailed through the examination phase of the registration process and was published for opposition.
Royal Chain, Inc. filed a Notice of Opposition against the registration of the MANSUR GAVRIEL mark on the ground that it was likely to cause confusion with its prior registered mark PHILLIP GAVRIEL for “diamonds; jewelry; precious and semi-precious stones; precious metals and their alloys; precious metals, namely, gold, silver, platinum; real and imitation jewelry; synthetic diamonds; synthetic precious stones.” Phillip Gavriel pieces sell for about $100 to under $10,000, but not in high-end department stores like Neiman Marcus.
During the pendency of the dispute, Royal Chain neglected to maintain the PHILLIP GAVRIEL registration by filing the required Section 8 Declaration of Continuous Use. The PHILLIP GAVRIEL registration was canceled and the Trademark Trial and Appeal Board gave consideration only to PHILLIP GAVRIEL’s common law rights. Royal Chain failed to produce competent evidence of its date of first use; therefore, its opposition was dismissed because it did not satisfy its burden to prove priority. But for completeness, the Board addressed the likelihood of confusion factors.
The Board found that jewelry and handbags are “accessories to a woman’s fashion ensemble;” thus, the goods are complimentary. The evidence of record also demonstrated that the same brand is used to sell both jewelry and handbags. This evidence reinforced the Board’s finding that jewelry and handbags are related goods.
Although the retail channels for the MANSUR GAVRIEL handbags and PHILLIP GAVRIEL jewelry are different, those differences were not reflected in the identification of goods descriptions. Therefore, the Board was forced to find that the channels of trade and classes of consumers overlap.
Nevertheless, the Board found that because it is common for fashion brands to use surnames, prospective purchasers would be able to distinguish MANSUR GAVRIEL from PHILLIP GAVRIEL.
Last year, the Minnesota Vikings started a national debate after celebrating a touchdown against the Chicago Bears by playing a quick game of Duck Duck Gray Duck, or is it Duck Duck Goose? ESPN reported that Minnesota is the only state in the union that calls the game duck duck gray duck. Well one group of Minnesotans decided to capitalize on this distinction and produced a gluten-free vodka called GRAY DUCK vodka.
When we hear Chad Greenway – former Minnesota Viking linebacker – promoting GRAY DUCK vodka on The Power Trip morning show our initial reaction was that this brand is going to be short lived. Grey Goose vodka would certainly object to this mark. The goods are identical, so less similarity between the marks is necessary for a likelihood of confusion to exist. The different spelling of GRAY versus GREY is a small difference that is unlikely to overcome the identical nature of the goods and so is the substitution of DUCK for GOOSE.
The one saving grace for the GRAY DUCK mark would be in the dilution that GREY GOOSE has allowed to creep into the market. The GREY GOOSE brand peacefully co-exists with GRAY WHALE vodka, GREY WHALE vodka, and GRAYCLIFF vodka. GRAY DUCK thought it belongs on this list as well and so it filed a trademark application for its mark.
Surprisingly, the GRAY DUCK application sailed through the examination phase and did not receive a single Office Action from the Trademark Office. On June 26, 2018, the GRAY DUCK application was published for opposition. Bacardi & Company Limited did not oppose the registration of the GRAY DUCK application and on August 21, 2018 the Trademark Office issued the Notice of Allowance, which starts a six month period to submit evidence of use of the GRAY DUCK mark to the Trademark Office. Once this evidence is submitted, the registration certificate will issue.
This does not mean that GRAY DUCK vodka is out of the woods. The brand is vulnerable to a cancellation proceeding for five years after the registration certificate issues.
Cannabis is undoubtedly a polarizing subject. Some people like Anheuser Busch heir Adolphus Busch V are jumping in head first starting cannabis companies. Other companies want nothing to do with plant and will fight to ensure prospective purchasers do not mistakenly associate it with any type of cannabis company. M. Shanken Communications Inc., the publisher of Wine Spectator magazine, is on the later side of the cannabis spectrum, and sued Modern Wellness Inc. for using the mark WEED SPECTATOR for a website that provides information about cannabis and cannabis-based products.
Wine Spectator alleged in the lawsuit that Weed Spectator not only adopted a confusingly similar trademark, but that it also copied its 100-point rating system. In fact, Wine Spectator alleged that this was a “classic case of passing off.” In addition, Wine Spectator filed a letter of protest against Modern Wellness’ pending applications for WEED SPECTATOR in connection with “providing on-line digital publications in the nature of education in the field of cannabis via the Internet.”
A letter of protest is a way to object to a pending application before the application is published for opposition. The party submitting the letter of protest is not allowed to make any arguments about the registrability of the pending mark. You are only allowed to submit evidence the party believes supports a refusal to register the pending mark. If accepted, that evidence will be used as a basis to refuse registration of the applied for mark. Letters of protest are not always accepted though.
This case raises an interesting point for trademark searchers. We have talked a lot about the importance of the relatedness of goods factor and that prior case law is the best indicator for assessing whether certain goods or services are related. But what do you do when there is not a lot of case law to turn to? Cannabis is still a banned substance federally, but has recently been legalized in some states. There has not been an opportunity for a court to decide the issue of whether wine and weed are related goods.
In these situations, trademark searchers need to look to other context to see what other type of products have been found to be related. The context of the Weed Spectator website is to inform individuals about something they could use in a social setting much like alcoholic beverages are used in a social setting. Therefore, it would be reasonable to compare how the Trademark Office has treated alcoholic beverages and cigars, for example, to assess how the relatedness of goods factor will shake out. However, overtime, a body of case law will develop around cannabis and cannabis-based products.
Oberlo blogged about the Color Psychology, which is the important role color plays in how consumers perceive a brand. According the post, color affects our day-to-day decisions including what items to buy. The Drum also wrote about blue being the dominant color used by global industries. Because of its importance in the purchasing decision, more companies should consider protecting colors as trademarks. However, not as many as you think attempt to do this because obtaining a trademark registration for a color – as a non-traditional trademark – can require some effort.
Recently, the Trademark Trial and Appeal Board addressed, for the first time, whether multiple colors applied to product packaging can be an inherently distinctive trademark or if the colors must acquire distinctiveness. Forney Industries, Inc. – manufacturer of welding and abrasives tools, equipment, and accessories – applied to register the colors black, yellow, and red applied to packaging for a variety of welding and abrasives goods. The Trademark Office refused registration of Forney’s mark on the ground that the multiple colors is not an inherently distinctive trademark.
Color applied to product packaging is treated the same as color applied to a product and because color applied to a product can never be an inherently distinctive trademark, color applied to product packaging can never be an inherently distinctive trademark. This does not mean that color can never function as a trademark for a product or its packaging, but that color must acquire distinctiveness. It is not immediately protectable as a trademark. And there is no meaningful distinction between a single color or multiple colors when applying this principle.
This case involved color in the abstract. If Forney had applied the multiple colors applied to well-defined shape, pattern, other distinctive design, then the color applies to that extra matter could be inherently distinctive. But since Forney did not argue in the alternative that its multiple color mark had acquired distinctiveness, the Board affirmed the refusal to register Forney’s multiple color mark.
Although there seems to be less publicity recently about trademark bullies, that does not mean they have gone away. Trademark bullying is alive and well, and the Associated Press recently published an article pointing the finder at universities as the newest members to this disfavored group. A few examples the article highlighted are:
- Duke University opposed the registration of DUKE’S FOLLY for “wine” and “custom production of wine for others; providing information about wine-making”;
- North Carolina State University objected to the use of WOLFPACK – the nickname for its sports teams – by a convenience store in Raleigh, NC called Wolfpack Mini Mart, and a California brewery’s use of Wolfpack to promote its wolf themed beers; and
- Texas A&M University objected to Erik Nolte’s plans to produce a beer called the 12TH CAN.
The United States Patent and Trademark Office once defined a “trademark bully” as “a trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.” Despite this definition, most people believe a trademark bully is any large company that is picking on a smaller company, but this is not always the case. And while most “trademark bullies” do not have a specific intent to harass the other party, they do have an intention to intimidate their opponent.
The problem with bullies is that they cause their opponent to unnecessarily spend money and sometimes money they don’t have. Here are some characteristics to be on the lookout for to avoid a party that is likely a trademark bully:
- Does the person or party own numerous trademark registrations for the same mark?
- Do those marks exist in a crowded field?
- Does the correspondent information at the USPTO for the trademark owner’s marks identify a solo practitioner, small firm, or large firm with a reputation for aggressive litigation tactics? A common problem in the trademark bully area are lawyers that do not have a deep understanding of the likelihood of confusion factors.
- Has the trademark owner been involved in several proceedings before the Trademark Trial and Appeal Board?