What’s the Difference Between Laudatory vs. Suggestive Trademarks?

I got a question today from a viewer about laudatory trademarks, and how to tell the difference between a laudatory trademark and a suggestive trademark.

As I’ve said, anything can serve as a trademark, including colors, symbols, logos, words, phrases, sounds, and smells. That said, there are some words and phrases that you want to avoid when choosing a trademark, and laudatory marks are one of them.

Laudatory marks are those marks that merely express some sort of praiseworthy quality of the goods. These types of words give the impression of the goods or services having a certain level of quality or excellence. Laudatory marks are a type of descriptive mark, and like other descriptive terms are refused registration because they aren’t distinctive in relation to the goods and services for which the mark has been applied for.

Descriptive marks are those marks that express some characteristic, purpose, or quality of the goods. Whether or not a certain word is “descriptive” must be looked at in the context of the goods or services for which the mark will be used. For example, the word “tall” would be descriptive as to flagpoles, but not as to peanut butter. “Tall” describes the quality of a flag pole, but not the quality of peanut butter.

A laudatory trademark is a trademark that describes a positive quality of the goods or services; in that sense, it is “descriptive.” Laudatory terms are words like ‘best,’ ‘largest,’ ‘foremost,’ ‘quality,’ ‘ideal.” These words do not distinguish the goods, but rather describe some positive quality of the goods.

The reason why these types of marks (with some exceptions that won’t apply to most of you reading this) are not permitted is because if we give one company the right to say that their goods are the “best,” the “biggest” or “wonderful,” then others lose the right to fairly describe their goods and services. Doesn’t everyone believe that their goods are the best, and shouldn’t they have the right to say so? By granting a trademark — which gives the owner the exclusive right to use that trademark with those goods — we are denying others the right to use that phrase with their goods or services.

That said, I did once secure a trademark registration for a client of mine that was laudatory: “WORLD’S LARGEST SUPPLIER OF GUN PARTS.” I had to go a couple of rounds with the trademark examiner, and appeal her refusal to the Trademark Trial and Appeal Board, but they got their trademark registration. That’s the power of having a smart attorney on your side, who knows when to argue and when to stand down.

Suggestive marks are different. Suggestive marks are those that suggest, but do not describe, some quality of the goods. My favorite example is the mark JAGUAR for cars. A Jaguar is a luxury sports car, and the mark JAGUAR perfectly conveys the nature of a luxury sports car. Jaguars are fast and sleek; a Jaguar brand sports car is likewise fast and sleek. Jaguars are sexy and powerful; a Jaguar brand sports car is likewise sexy and powerful. Jaguars purr when they are content; Jaguar brand sports cars purr when you start them up. So you can see how the word “jaguar” conjures up some ideas about certain qualities about a jaguar animal, and then transfers those positive, sexy qualities to a sports car of the same brand name. We’re not describing the car by using the descriptive terms sexy, fast, sleek, powerful. Rather, we are conjuring the image of something that IS sleek, sexy, fast, and powerful and then transferring the word for that thing to the goods or services with which we want to associate with those qualities.

I’m on Facebook! “Like” my facebook page,  to be notified every time I go LIVE. Do you have trademark questions? Message me on the Trademark Doctor Facebook page, and I’ll answer your questions on a future Live video.

Contact Dallas, Texas trademark attorney Angela Langlotz today to get started on a trademark application for your valuable brand.

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Can I Use My Name As A Trademark?

One of the most common questions that I get is, “can I use my name as a trademark?” Well, as I often say, anything can serve as a trademark so long as it is distinctive and distinguishes your goods from others’ goods. So yes, a name can serve as a trademark.

There are currently many examples of names being used as trademarks, so why this question keeps coming up is a mystery to me. Consider the following trademarks, which are all names:

RALPH LAUREN for clothing, shoes, perfume, household textiles, gift items, and furniture.

ESTEE LAUDER for cosmetics, perfume, and skin care products.

TOM FORD for sunglasses, clothing, shoes, handbags, cosmetics, and accessories.

First names can also serve as trademarks:

KYLIE for cosmetics.

CHER for entertainment services (interestingly, it doesn’t appear that Madonna has registered a trademark for her first name).

Some assumed or stage names have also been registered:

PITBULL for musical sound recordings, music videos, sunglasses and mobile phone cases.

COOLIO for for musical sound recordings, music videos, clothing, and entertainment services.

EMINEM for sound recordings, entertainment services, and clothing.

So, yes, absolutely names can serve as trademarks. There are some things you need to pay attention to when you file the application for a name, however, so be sure to consult with an attorney before filing.

I’m on Facebook! “Like” my facebook page,  to be notified every time I go LIVE. Do you have trademark questions? Message me on the Trademark Doctor Facebook page, and I’ll answer your questions on a future Live video.

Contact Dallas, Texas trademark attorney Angela Langlotz today to get started on a trademark application for your valuable brand.

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Beer vs. Bicycles: FAT TIRE Descriptiveness Case Study

One of the biggest mistakes that I see in my practice is trademark applicants attempting to register descriptive names as trademarks. While it’s true that anything — including colors, scents, logos, words, and product designs — can serve as a trademark, we still have to ensure that the mark is not descriptive in the context of the goods or services. To illustrate this, let’s consider the mark FAT TIRE for beer and for bicycles.

FAT TIRE as a trademark is distinctive as to beer, but descriptive as to bicycles. This means that FAT TIRE can be used as a trademark for beer, but not for bicycles. When we evaluate a trademark and decide if it is “distinctive” or “descriptive,” we ask: “Does the trademark describe the goods, the purpose of the goods, the end to which the goods are used, or the end user of the goods?” If so, it’s very, very likely that the mark is “descriptive” as to the goods. We can’t make this determination in a vacuum; it’s always in the context of the goods and the mark.

As to beer, FAT TIRE does not describe any quality of the beer, the purpose of the beer, or an end to which the goods are used. If we’re using it to describe the end users of the beer, SPARE TIRE perhaps might be more appropriate, but not FAT TIRE. So as to beer, FAT TIRE is being used to arbitrarily distinguish the FAT TIRE beer from other beers. This distinctiveness makes it a good trademark.

As to bicycles, FAT TIRE describes a type of bicycle, commonly used for riding on snow-covered trails. Because the mark FAT TIRE describes a bicycle, it cannot serve as a trademark. A trademark grants the owner the exclusive right to use the mark on certain goods, so if one company owned the trademark to FAT TIRE for bicycles, it would prevent other manufacturers of fat tire bikes from fairly describing their goods. It would not allow them to say, “We manufacture fat tire bicycles.” So to avoid this, a trademark application for FAT TIRE for bicycles would be refused registration on the grounds that it is “merely descriptive” of the goods.

Anytime you’re considering a new trademark, it’s important to make sure that the mark isn’t descriptive. The best marks are “suggestive” of qualities of the goods and paint a picture for the consumer of the benefits or qualities of your goods or services.

I’m on Facebook! “Like” my facebook page,  to be notified every time I go LIVE. Do you have trademark questions? Message me on the Trademark Doctor Facebook page, and I’ll answer your questions on a future Live video.

Contact Dallas, Texas trademark attorney Angela Langlotz today to get started on a trademark application for your valuable brand.

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Trademarks: What is “Dilution by Tarnishment?”

There are a  number of naughty behaviors that infringers can take with regard to famous marks. Famous marks are a popular target for infringers, because the marks are well-known, and therefore attractive to those who would like to trade on the goodwill associated with these marks, or otherwise be “cute” and imitate these marks.

The owners of famous brands like TIFFANY, APPLE, GOOGLE and NIKE spend an enormous amount of money promoting, advertising, and policing their brands, and courts have given broad protections to famous brands due to their consumer recognition and the vast amount of resources that the brand owners have poured into these brands. Because famous brands get such broad protection, it’s always a bad idea to use anything similar to a famous brand, no matter how “cute” or “catchy” you think it might be.

One cause of action that the owner of a famous brand has against an infringer is that of “dilution by tarnishment.” Dilution by tarnishment involves the use on inferior goods of a mark that is confusingly similar to a famous mark, thus lowering the esteem of the famous mark through its association with shoddy goods. This also applies where the goods of the infringing mark are somehow unsavory or not in keeping with the image of the famous mark that is being infringed.

For example, let’s suppose that a strip club adopts a robin’s egg blue and white theme with the name “Tiffany’s.” Tiffany and Company, owners of various trademarks for robin’s egg blue packaging would swiftly move to end such use. Because the TIFFANY mark is famous, and the robin’s egg blue packaging is strongly associated with Tiffany and Company, the use of those iconic colors on a strip club would be considered dilution by tarnishment; Tiffany and Company does not want its high-end brand associated in any way with industries or activities that are unsavory or offensive to a large percentage of the population. The TIFFANY brand has a strong association with luxury, romance, good taste and class, and the use of similar colors on a strip club would associate the TIFFANY brand with an activity that even the most broad-minded adults would consider unwholesome and not in keeping with the TIFFANY image.

For this reason, the owners of famous marks swiftly and aggressively pursue any attempt to trade on the goodwill they have spent decades and millions of dollars to create. I strongly recommend that entrepreneurs who are adopting new brands take care to stay well away from any brand or logo that looks, sounds, or gives the commercial impression of being associated with any famous brand.

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I’m on Facebook! “Like” my facebook page, http://link.trademarkdoctor.net/FB to be notified every time I go LIVE. Do you have trademark questions? Message me on the Trademark Doctor Facebook page, and I’ll answer your questions on a future Live video.

Contact Dallas, Texas trademark attorney Angela Langlotz today to get started on a trademark application for your valuable brand.

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The Other Reason To Search Your Trademark Before Filing!

Yes, besides avoiding a refusal from the Examiner, there is another reason to search your trademark for conflicts before filing your trademark application. ! 

Carefully search your mark for conflicts, yes, so that the Examiner does not refuse your trademark application, but also to avoid tipping off your competition, who may have already registered a similar mark .

You may have found the trademark conflict, and so now you know you need to transition to another trademark. If you make the mistake of not doing a good search, in addition to getting a rejection from the trademark examiner, you’ve also tipped off the mark owner of your infringing use.

Now instead of transitioning on your timetable, you’ll have to transition on his. The examiner refusal isn’t even the biggest problem; tipping off your competitor is. You may have to dispose of inventory, marketing collateral, change to a new URL…What a nightmare! And all because you tipped off the trademark owner by blundering into the trademark registry with your hopeless trademark application.

A good trademark search by a competent professional can prevent these sorts of disasters! Contact me to get actual legal advice, which you’ll never get from those cheap filing services.

I’m on Facebook! “Like” my facebook page,  to be notified every time I go LIVE. Do you have trademark questions? Message me on the Trademark Doctor Facebook page, and I’ll answer your questions on a future Live video.

Contact Dallas, Texas trademark attorney Angela Langlotz today to get started on a trademark application for your valuable brand.

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If Someone Else Has Registered My Exact Brand, Can I Still Use It As A Trademark?

My last video about LOL as a trademark prompted some questions about the availability of LOL as a trademark. Recall that Proctor & Gamble in applied to register the trademark LOL for a variety of cleaning products, including dish soap, hard surface cleaners, and air fresheners.

One of my viewers stated, “My local newspaper Lancaster Online has been using LOL for probably two decades – I’m sure they tried to register it too – P&G is not going to be able to get away with it. It’s now common language around the world.”

This statement assumes two pretty common myths: First, that if  mark is registered, then it’s necessarily unavailable for others to use. Second, that a word that is in common usage is not capable of serving as a trademark. I’ll address both of these, and in that order.

As to the first issue, just because a mark is registered for certain goods doesn’t mean that it’s necessarily unavailable to use as a trademark on other goods. This is why, for example, we have UNITED AIRLINES, UNITED VAN LINES, and UNITED PARCEL SERVICE. Yes, these all use the word UNITED, but on different goods. The goods are so different from one another that there is not a likelihood that a consumer would be confused when confronted by the marks. We look at the experience of the consumer in the context of the marketplace; a consumer would not expect commercial airline services, household moving services, and package delivery services to come from the same company, and the same company doesn’t tend to provide all three of these services. So those brands may co-exist in the marketplace without confusing the consumer.

Similarly, the mark LOL is registered for pet food, computer software, cigarette paper, and wine. Those marks can co-exist for those goods without consumer confusion because those types of goods do not tend to “emanate from the same source.” The consumer wouldn’t expect the same company to produce those goods, and so would not be confused if confronted with the LOL brand on those different goods.

As to the second issue, anything can serve as a trademark, even commonly used words. There are many examples of this sort of usage: JAGUAR, APPLE, BELL, ANDROID, and GALAXY are all commonly used words, and all are registered trademarks. As long as the marks are not being used with, respectively, jaguar breeding, apple carts, bell sales, robots, and outer space, companies are free to use those marks. So long as the trademark in question in the context of the goods and services being offered, is not “generic” or “descriptive,” it will be allowed registration.

I’m on Facebook! “Like” my facebook page, http://link.trademarkdoctor.net/FB to be notified every time I go LIVE. Do you have trademark questions? Message me on the Trademark Doctor Facebook page, and I’ll answer your questions on a future Live video.

Contact Dallas, Texas trademark lawyer Angela Langlotz today to get started on a trademark application for your valuable brand.

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OMG, Can I Use LOL As A Trademark?

WTF, LOL as a trademark??? Yes, you heard it here first: Personal and household care products behemoth Proctor & Gamble has applied for the exclusive right to use LOL on laundry detergents and fabric softeners, and on liquid soap, dishwashing detergent, hard surface cleaners, and air fresheners. I can guess what their next advertising campaign is going to feature.

OMG, isn’t that outrageous! Well, not really; I’ve said it before (and it bears repeating) that anything that distinguishes your goods and services from another company’s goods and services can serve as a trademark. So LOL makes a perfectly good trademark.

And P & G is not the first to apply for such a mark. As of the date of this writing, 43 marks exist for LOL. While many of them have been abandoned, many are currently live. These marks cover goods as diverse as fortune cookies, gold jewelry, promoting public awareness about the fiscal status of the state of Illinois (which might actually be worthy of a hearty LOL), websites, computer software for gambling machines, leather bags, pet food and dog treats, cosmetics, cigarette paper, and wine.

But doesn’t that prevent anyone from uttering the word “LOL” anywhere in the entire universe? No! OMG, STFU already. As I’ve said before (and I’ll say it again) the fact that someone in the known Universe has a trademark registration for LOL. The only thing that a Live trademark registration prevents you from doing is applying that trademark to goods that are “confusingly similar” to that of the live trademark and selling them in commerce.

If you want to run around saying LOL, you can still do it.

If you want to put stickers on everything you own — including your bottle of dish soap — that say “LOL,” you can still do it (just don’t sell them)  

If you and your friends want to run through the streets, bottles of dish soap in hand, yelling “LOL” at the top of your lungs, you can do it. (The police might not LOL, though…)

So if you still want to utter LOL, OMG, or any other 3-letter acronym, you can still do that! In the meantime, OMG, please call me if you have a valuable trademark that you want to protect.

I’m on Facebook! “Like” my facebook page, http://link.trademarkdoctor.net/FB to be notified every time I go LIVE. Do you have trademark questions? Message me on the Trademark Doctor Facebook page, and I’ll answer your questions on a future Live video.

Contact Dallas, Texas trademark attorney Angela Langlotz today to get started on a trademark application for your valuable brand.

OMG, Can I Use LOL As A Trademark? posted first on https://trademarkdoctor.wordpress.com