Category Archives: *Trademark: Descriptive

Turkey trademarks – don’t run a-fowl of descriptiveness Reply

*T R A D E M A R K, *Trademark: Descriptive, *Trademark: Name, *Trademark: NEW BIZ, *Vanessa Kaster

We all know and love many popular TURKEY trademarks… like WILD TURKEY and TURKEY HILL… and notice that these TURKEY marks are used on products that have nothing to do with turkeys. For example:

  • WILD TURKEY is trademarked for whiskey, distilled spirits, and liqueur
  • TURKEY HILL is trademarked for ice cream cones and other frozen confections

By comparison, popular trademarks that are used to sell turkeys don’t use the word ‘turkey’ in their mark. For example: BUTTERBALL, HONEYSUCKLE WHITE… and my personal favorite CAJUN GROCER (that sells delicious turducken – http://www.cajungrocer.com).

THE SECRET? Words that describe the goods and services that they sell are descriptive and are weak trademarks. In fact, it can be difficult and sometimes impossible to register a descriptive mark with the USPTO for trademark protection. (There is a sliding scale for measuring descriptiveness. Some terms are more descriptive than others. This example of trademarking the word TURKEY (as a brand for turkey products) is a highly descriptive use of the word that overlaps with it’s dictionary definition). The reason behind blocking trademark registration for descriptive terms is logical. Since trademark registration grants exclusive use to the owner… and dictionary words are free for us all to use…. USPTO trademarks are not registered for descriptive terms because this would block words from being used in commerce (by competitors) to describe common goods and services.

Back to the trademarks listed above, the popular WILD TURKEY trademark has a fairly strong monopoly on using the word TURKEY to sell whisky and other alcohol products. Similarly, TURKEY HILL is a popular trademark with a fairly strong monopoly on using the word TURKEY to sell ice cream.

When creating brands for your business and registering trademarks… remember not to run a-fowl of trademark descriptiveness. Enjoy your Thanksgiving!

See also www.uspto.gov; @iplegalfreebies and www.kasterlegal.com.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

 

Avoid Trademark Rejection for Descriptiveness Reply

*T R A D E M A R K, *Trademark: Descriptive, *Trademark: Name, *Trademark: NEW BIZ, *Trademark: Search

Descriptiveness is a slightly unexpected and common pitfall when it comes to registering a trademark.  If your trademark is descriptive, meaning that your mark merely describes your goods and services in a common and generic way, then trademark registration will be difficult  unless modifications are made to enhance the uniqueness of your mark.

For example, if you have a Doughnut shop where you sell hot doughnuts and you submit an application to register the trademark ‘hot doughnuts’ …your application will likely be denied because, your mark merely describes your goods and services in a common way.  [i.e. – a Google search on ‘hot doughnuts’ returns over  1,740,000 results in 0.18 seconds and these results are linked to doughnut shops and bakeries all over the world that also use the phrase ‘hot doughnuts’ to describe what they sell.]  Since ‘hot doughnuts’ is commonly used to describe doughnuts, it is too literal of a description to be registered as a trademark for a shop selling hot doughnuts.

Fire up your creative juices and make your trademark unique and not merely descriptive.

See also: more info on recent disputes involving this issue: Coppola and his family trust have sued a small restaurant in Novato, CA –> http://wp.me/p10nNq-kz and designer Louboutin’s Red Sole Shoes–> http://wp.me/p10nNq-cy ; @iplegalfreebies and www.kasterlegal.com.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com