What Good is a Trademark Registration on the Supplemental Register?

By Chuck Knull

There are two “registers” for federal trademarks, the Principal Register and the Supplemental Register.  The Principal Register is what most everyone shoots for when they apply for a trademark registration.  A registration on the Principal Register has more substance–It carries an immediate presumption that the trademark is distinctive as used on the goods or services covered by the registration.   Presumptions are good things when you go to enforce your trademark.

Some trademarks, however, are too descriptive to be allowed registration on the Principal Register.  In other words, the marks describe elements of the goods or services covered, without being the only way to describe such goods or services.  For example, “Cooperstown Wine and Cheese Shop” could be a descriptive trademark for a wine and cheese store in Cooperstown, New York (if New York law permitted wine and cheese to be sold in the same store, which, alas, it does not).  Descriptive trademarks can still be registered and this is where the Supplemental Register.

A descriptive trademark is not going to make the Principal Register without evidence that it has acquired distinctiveness over time. And it is a long time–five years.  But a descriptive trademark can be applied for on the Supplemental Register, be used with the ® and, after being used for five years, can be subject to a new application on the Principal Register accompanied by a showing of use and recognition by the public in connection with the trademark.

In the meantime, nobody else can register the same mark.

While any trademark lawyer will tell his or her clients to adopt trademarks that are already distinctive, by using fanciful and suggestive terms in them, a business that is bent on using a mark that clearly conveys its goods or services to potential customers still can obtain trademark protection.  It will take years and the costs of filing two applications to reach the best level of protection, but don’t underestimate the value of using the ® and blocking others in the meantime.

When in doubt about whether something is descriptive or merely suggestive (a distinction only a trademark attorney could love), it makes sense to go ahead with the trademark filing, see if you can convince the Examiner it should go on the Principal Register, and, if not, take the Supplemental Register.  Why?  If for no other reason than you would hate to see someone show up with a similar mark later, block your future registration, and maybe even get it on the Primary Register because they were more bold in their filing strategy.

Protecting Beer Brands: A Trademark Strategy for Brewers

By Chuck Knull

I have spent a great deal of time as a lawyer helping brewers keep their brands from encroachers.  There are numerous ways that the brand names and trade dress of one beer can cross over into the territory of another beer brand.  As a result, a bartender in a dimly lit bar may pick the wrong bottle out of the cooler for a patron, or a soused patron might slur out an order one brand when intending another. Things like this have plagued the larger brewers for ages. Hence, specially colored and shaped bottles, and distinctive cans are often used by them.

Add to this the confusion of restaurants and pubs, which may have names close to the names of beers,  serving their own mini-brews and the problem gets bigger.  Now, with a multitude of local breweries growing and expanding in the U.S., the possibility is growing of one brewery’s “Red Ale” looking and sounding a lot like the “Red Ale” from another brewery that used to have a territory far enough away to make no difference. As we have reviewed the nation we have noted that a lot of growing local breweries need to step up the level of protection for their brands.  Otherwise, they may face expensive and uncertain litigation in the future.

I have written about the problem of relying on the TTB Certificate of Label Approval. A COLA IS NOT BRAND PROTECTION. My discussion is intended to offer a roadmap to actual brand protection using the Federal Lanham Trademark Act and related legislation to obtain concrete protection. The primary methods of obtaining protection for your brands must, of course, depend on individual budgets, but a growing brewer must not stint on brand protection or it will very possibly run into boundaries that it will not be able to cross over.

The aim of any brewer of beer should be to make sure that when a customer orders its beer, it gets its beer. The aim of branding is to be sure that all potential customers know about one’s brands. The way one does both of these things is by adopting a brand strategy.  Below is an aggressive strategy such as the ones that I have helped large, multi-national brewers carry out. Select from this list in a generous way and implement each selection.

Trademark Registrations Are Territorial

Except for a very few, absolutely famous trademarks, a trademark registration will not provide trademark rights beyond the jurisdiction providing the registration.  There are great stories in trademark law about people visiting foreign countries, seeing a nice product with a nice mark connected to it, and taking the entire concept of the product and mark to another country and, more or less, cloning the product.  Later, the originator decides to move into the same country and finds that it has no rights to use its trademark there.  Trademark registrations are territorial.

I have had some interesting cases showing such twists and turns. I represented a Dutch milk (not beer) coop which had made a popular condensed milk product in Vietnam (used to make wonderful Vietnamese coffee). The mark had been expropriated by the Communist Vietnamese government.  But Vietnamese immigrants to the USA demanded the product and the former managers of the Vietnamese subsidiary who were among these immigrants developed the brand in the US under the authority of the Dutch Coop.

When Vietnam went capitalist, the milk company which had evolved out of the seizure from the Dutch tried to bring into the US a close version of the Dutch product already here.  It lost in court.

Another situation causing great agitation for AmBev, the owner of the Budweiser beer brand, involves prior use of Budweiser by European brewers blocking attempts by AmBev to obtain Common Market trademark registrations (and a reverse situation where the Czech owner of perhaps the oldest Budweiser trademark must change its brandname for its been when it sells into the United States).

Strategic Trademark Registration

  1. Obtain trademark registrations for each beer brand in BLOCK LETTERS in each country where the beer will be sold, because trademark rights are territorial.
  2. Obtain a trademark registration for one’s House Mark in BLOCK LETTERS in each country where the beer will be sold, because trademark rights are territorial.  I have previously written about House Marks.
  3. Obtain trademark registrations for each beer and can label (including all colors and graphics) in each country where the beer will be sold, because trademark rights are territorial.  An advanced trademark program is going to be concerned with look alike labels.  It is too easy for a bartender or consumer to pick up the wrong bottle, can or six pack if the labels are too similar.  A few mistakes and the brewer that has simulated the popular label will find its sales increasing.
  4. Obtain whatever protection is available for any special bottle or can colors and shapes. In the U.S., such protection is generally available through trademarks. In other countries, special design protection is available.
  5. Obtain trademark registrations for slogans used in advertising your beers.A good slogan can enhance even a one trademark brewery’s house brand mark. Some old standards are listed below:- The Beer that Made Milwaukee Famous (Schlitz)
    – The Champagne of Bottled Beer (Miller)
    – It’s All About the Beer (Heineken)Check out more great beer slogans here.
  6. Make appropriate trademark applications for goods distributed to bars and restaurants, such as signage, glassware, coasters, and for any items that are sold or licensed for sale, such as T-shirts with beer labels on them.

Many of the worst experiences that brewers face are caused by t-shirt companies printing what they consider to be parody t-shirts featuring pictures of beer cans or bottles along with statements like “I only drink

[name of beer] when I want to get blasted.”  Alcohol is a highly regulated business and the government frowns upon statements about beverages that imply potency, drunkeness, and the like.

A brewer should want nothing to do with such “parody” and the first step is to apply for trademark applications for the types of goods that might be bothersome.

Copyright Registrations Support Your Trademarks

  1. Depending upon how original and artistic one’s labels are, it may be possible to apply for and register copyright in the labels. Timely registrations can provide clout against competitors who copy too closely other’s labels.  Learn more about why applying for copyright registration is a good idea here.
  2. Company websites and advertising materials should be subject to periodic copyright applications and registration.

Police Trademarks to Stop Problems Early

  1. Review and dispute domain names containing house mark or brand marks or similar
  2. Have your trademark lawyers proactively watch your marks or employ a trademark watch service for USPTO applications for alcoholic and non-alcoholic beverages, restaurants and bars, and foods such as cheese and snacks; oppose similar names.
  3. Monitor Twitter, Facebook, etc. for derogatory comments about brands and take action by complaining to these services and/or referring to your lawyers.
  4. Check for new COLA filings for alcoholic beverages to assure that no similar names to your brands are applied for in COLA filings.  Small breweries, distilleries and wineries may never do anything beyond a COLA filing. Timely cease and desist letters can stop the use of similar names.  We have discussed why reliance upon a COLA alone is not a brand protection program.
  5. An owner of a registered trademark can file with U.S. Customs to prevent counterfeit or unauthorized imports of trademarked goods. Entry of such goods, when they are alcoholic beverages, is less of a problem than with some other goods.
  6. Review competitor advertising for misrepresentations of your brands or false or misleading claims as to their own brands. Take action if necessary.

Should I Register a Bunch of Trademarks for My Products or Adopt a House Mark?

By Chuck Knull

A “House Mark” is a trademark that is used to identify the source of a line of products rather than a single product. A company can have trademarks on each of its products and also have a trademark that appears on all its products. The latter is the House Mark.

Trademarks began as signs on stores and identifying marks on products. One went to the Red Lion Tavern because one knew about and relied on its quality of bangers and mash and the strength of the tavern’s ales. If another Red Lion Tavern appeared in the village, the first tavern could sue to have the second tavern change its name. As consumer products came about, purchasers of cough syrup, for example, would look for product names they recognized and trusted. The names and labels on these products became trademarks. If someone else came along and tried to sell cough syrup with a name and label that too closely resembled those of an established brand, the second comer could be sued for trademark infringement and unfair competition. When a maker made only one type of cough syrup, then its brand name was both the house mark and the product’s trademark.

Today trademark law is a consumer protection law. A trademark is registered to a person or company that uses the mark to identify its products so that consumers associate the mark with assurances that the quality, whether good or bad, is what is expected from that product. The first user of a mark is the one who has the rights in it so long as they continue to use it in commerce. Under the current law, the Lanham Trademark Act, a first user who has registered its mark can enforce their rights in the mark in federal court and obtain sanctions against the second comer ranging from injunctive relief to the infringer’s profits. If the infringement is found to be is willful, or done with knowledge of the earlier mark, the first comer may be awarded its legal costs and treble damages.

Adopting a Mark. A House Mark offers immense advantages if it is based on a trademark which has been in long use, such as a mark based on a successful product or successful store name. Trademark protection grows in strength over use time through use of the trademark on a service or product, so choosing an already strong name and enlarging the scope of products or services available in association with the mark allows a business to start off strong.

Thus, the best and strongest House Mark is one which is already a famous trademark or service mark, and if a company is fortunate to have such a mark available or be able to license such a mark for use on a new line of products or services, it can be solid gold. An example of this is the Vicks mark which is strong or famous on VICKS VAPORUB and is now being extended to use on vaporizers, thermometers, tissues and other “cold related” products. Currently, the TIDE Brand of laundry soap is being extended into laundermats.

If a business does not have a strong and long used store name, then it should look for a trademark that is a “coined” or an invented word. For example, a retailer with the House Mark QUALITY DRUGS (a “weak” mark until it has been used for years) might concoct a new mark such as QUADRU, which has no meaning in itself and takes a bit of thought to connect to either quality or drugs. If invented terms are not to a retailer’s liking then adopting a House Mark which is “suggestive” of the products on which it will be used is the next best approach. For example, a retailer could use the mark QUALITY HEALTH for dietary supplement products, citing a suggested benefit of the products. The worst type of mark to adopt, especially as a House Mark, would be a “descriptive” mark. If a store or manufacturer used the House Mark QUALITY DRUGS PRODUCTS the mark would merely be describing what the products. Such marks are not enforceable without huge amounts of evidence that consumers only associate the House Mark with the products. And that evidence can be difficult or impossible to gather.

Definitions

Trade Dress. Trade dress describes the packaging of products. Trade dress can operate as a House Mark. Examples of such is the Coke Bottle and the MacDonalds Golden Arch.

Why Should I Apply for a Copyright Sooner Rather Than Later?

By Chuck Knull

Making your company’s products or services appear special and different from the competition involves branding. Branding involves the use of trademarks to identify the source of products. Protecting your brand also requires careful attention to the protection available under copyright laws, as copyright protection can enhance trademark protection.

The Federal Copyright Act protects the “original expression” of an idea or ideas when such expression is “fixed”, that is, when it is printed, painted, recorded or filmed. The ideas themselves are not protected by copyright.

Anybody making or marketing consumer products must seriously consider registering copyrighted material such as the text and illustrations of a web site, posters, print advertising, website videos, infomercial recordings, the labels on the goods and its packaging, and any instructional or informational material packed with products or offered as handouts.
The owner of a copyright has the right to prevent (by injunction) others from copying, distributing and otherwise using the copyrighted material. If the copyright owner has made a timely filing of an application for registration of the material with the U.S. Copyright Office, the copyright owner can also recover “statutory damages” (in practice, a form of punitive damages) and its own attorney fees from the infringer. Thus, as a simple infringement might not carry much in the way of monetary damages with it, a person who makes timely registrations of its material can make it extraordinarily costly for anyone to copy such material.

Since people bent on borrowing a company’s good will by trading on another’s trademarks ordinarily don’t mind also borrowing packaging, web site text, or instructional inserts. Why do the work when it is so easy digitally to copy? Having registered copyrights, combined with a trademark infringement suit, can obliterate such an infringer. An application for copyright registration is a simple document to complete, can be done on line, and the government filing fees start is only $35.00. Few protective actions are as cost-effective and simple to do.

For example, Company C owned the trademark registration for MIGHTY GOAT for a very successful goat milk soap made with the milk from our famous Catskill goats that bodybuilders can use to wash the oil off their bodies after competition. It has also registered the wrapper design and the product information sheet of its product at the U.S. Copyright Office. Company Y comes out with a competing soap called MIGHTY SHEEP that it claims is “compare to MIGHTY GOAT.” Company Y also copies the text of Company C’s product information sheet inserted in the product box. A court finds that using “compare to MIGHTY GOAT is permitted even though Company Y’s soap has sheep milk in it. But it also finds that the product information sheet was a copyright infringement, and awards the owner of MIGHTY GOAT statutory damages of $100,000 plus its attorney fees (no small sum, since it had laid out $40,000 to its lawyers.) On the hand, if Company C had not timely registered its copyright. All the Court can award in this situation is actual damages of $100 for the reasonable licensing fees for the infringing information sheets. No attorney fees.

A couple of examples from my real life practice also show how this works.

A while ago, I had a client discover that photographs of its products were appearing on another website that was offering the products at substantially reduced prices. We could not be sure if the products were actually sold there, or whether the website used the products as a “bait and switch” and would ship substitutes if my client’s were ordered. The business did regularly register copyright in its website including such photos, so we were able to get the photos and the products taken off. The fact that we had the registrations acted a sledgehammer to make our point. Had we not had it, the pictures might still be up. The fact that the materials were registered for copyright before the commencement of the lawsuit made any fight by the infringers a bad tactic as it stood to pay all its own legal fees and also fund our legal fees during such fight.

On the other hand, I also helped a client who had been wrongfully sued for copyright infringement by a software program owner who claimed that the client was using its program without a license and thus infringing copyright. The program owner claimed that its was owed statutory damages and its attorneys for this infringement, but we were able to establish early in the case that the program owner had not applied to register the copyright until right before it brought the law suit. We convinced the judge to knock out the claims for these extra penalties in a summary judgment motion, which left the program owner with a small claim for lost license fees. When it could not prove any infringement at trial, our client was vindicated. However, had the program owner actually registered its copyright at the right time, my client might have been forced to settle for a large payment rather than fight the case and risk not convincing the court that it had not infringed.