You’re Fired! and Other Dictionary Words: Can They Be Trademarked?

We’re all familiar with the Googles and Twitters and Xeroxs of the world. Those brands that adopted purely made up, or fanciful in trademark jargon, trade marks to define their brands. Everyone, more or less, understands that these types of brands are entitled to trademark protection. What about brands that use dictionary words? There was something of an uproar when it was learned that Donald Trump had trademarked the words, “YOU’RE FIRED” — just because he’s a billionaire now he thinks he owns “You’re Fired?,” but that reaction missed the point. Donald Trump does not own the phrase, “you’re fired,” he owns a trademark for YOU’RE FIRED in connection with certain specified goods and services, such as t-shirts and toys. Actually, the mark is owned by producer J. Mark Burnett’s production company. While YOU’RE FIRED might be descriptive of corporate downsizing consultant services, it’s in no way descriptive of clothing or toys. When people see the YOU’RE FIRED trademark on clothing, the mark identifies the origin or source of the corresponding goods. Taking another example, Delta is a dictionary word, but it’s also a widely adopted trademark, used by such companies as DELTA AIRLINES, DELTA FAUCETS and DELTA DENTAL. None of these companies owns the word “Delta,” per se, but each does own the exclusive rights to use it as a trade mark in connection with certain types of goods or services. PIER 1, APPLE, POTTERY BARN, CRATE & BARREL, RED LOBSTER. These are all examples of dictionary words and phrases adopted by businesses as their trade marks.

Whether a dictionary word can be protected as a trademark in a given situation depends on the nature of the goods or services offered in connection with the mark. More on that to follow!

Selecting A Trademark Attorney, The Sequel

Here are some important points to consider when selecting a trademark attorney:

1. Make sure that you are comfortable with the attorney. If you don’t have a good feeling about the attorney you’re speaking with, you shouldn’t hire them. One of our clients had a bad feeling about an attorney, but hired him anyway. That attorney estimated drafting fees of $1,500, then invoiced the client over $7,000 for an office action response that should have cost no more than $1,000.

2. Is the attorney knowledgeable? Does he or she specialize in the field? Everyone has to start somewhere, but you will want to know that your attorney is not learning how to file a trademark application on your dime. Specialization saves time, money, and headaches.

3. Find out if the attorney does flat fee billing. Flat fees afford clients with cost certainty. Your trademark lawyer should be willing to offer trademark registration services on a flat fee basis.

4. Will the attorney give you a free consultation?  Your attorney should be willing to spend some time explaining how the trademark application process works, and shouldn’t charge you for it. The free consultation is a little like speed dating, without the awkwardness of speed dating. You’ll learn a bit about the law, and you’ll also get to know if the attorney is a good fit.

5. Did the attorney explain your clearance options? Although people think of the trademark application process as a filing process, it is more about clearance. Clearance is where trademark attorneys earn their fees. A service that offers trademark filings without explaining clearance options is a trap for the unwary. A clear trademark is one that’s available for registration and use.

6. Does the attorney use a reputable trademark clearance company for a comprehensive clearance search? Not all searches are created equal. Some online trademark services offer so-called comprehensive searches that are little more than glorified Google searches. Companies such as Thomson Compumark and CSC Global are considered industry leaders at producing trademark search reports. These reports leverage relationships with numerous trademark and business databases and are truly comprehensive. You get what you pay for.

7. Who will be filing your trademark application? You have a right to know. Is it an attorney or a paralegal? Is the work being outsourced to India? If you filled out an automated form, will an attorney be reviewing that form before submitting an application to the PTO?

8. Are there additional charges for responding to office actions? Most trademark applications result in office actions — some minor, some substantive. If there is an office action, do you have to pay more?

Remember, if you’re not comfortable with the attorney, find another attorney. Also, cheaper does not mean better — it means cheaper. Costlier is not necessarily better either, but good attorneys exist in the middle who will advise you well and get you on your way to registering and using your trademark.

Selecting a Trademark Attorney

If you’ve followed my posts, or read any of my quotes in articles, it should be pretty clear by now that I am a very strong advocate of hiring actual trade mark attorneys to clear trademark applications before filing them. Trademark rights are complex and difficult to understand. What might or might not constitute trademark infringement is not something that many people can tell, especially when it comes to descriptive marks and knowing how different is different enough. That’s where the value of a trademark attorney comes in. A good trademark attorney can assist clients to identify potential risks before investing in a mark.

Trademark mills that offer cheap prices to file trademark applications deliver what their customers pay for. They exalt filing over advocacy, and reduce the trademarking process to a ministerial filing process. Some of these customers will obtain trademark registrations, but may face infringement disputes and litigation from third party rights holders. Others will see their filing fees wasted on applications that never should have been filed. Some will be blissfully lucky to have picked a trademark that was genuinely available, and should have no issues.

Adopting a trademark carries high stakes. The consequences for trademark infringement are severe and include disgorgement of profits and, if found to be willful, treble damages. The first step in choosing a trademark attorney is actually to select an attorney who specializes in trademark law, and has the experience and knowledge to advise you properly.

Trademark Clearance Is the Name of the Game

What is the most important thing that a trade mark attorney can do for you? If you answered score you tickets to the Brooklyn Nets home opener, you answered correctly. The second most important thing that trademark attorneys can do for you is to clear your mark before you start using it. Registering a trademark is broken down into two components: clearance and filing. Filing is the easy part. Yes, there are rules to follow and hurdles to overcome in the filing process, but the threshold question when choosing a new trademark is, and always should be, is the trademark that you have selected available for your use in the manner in which you propose to use it. In other words, is there someone else who has a trademark that’s identical or confusingly similar to yours. Failure properly to clear a trademark can have adverse consequences ranging from a rejected trademark application, having an application opposed, receiving a cease and desist letter, being sued for trademark infringement, and being forced to rebrand. The costs of properly clearing a trademark application are modest compared to the costs of hiring a lawyer to defend a lawsuit, paying damages, and rebranding.

When most clients think about filing for a trademark, they think of the application process, not clearance. A number of online trademark filing services focus on the filing part of the process, without conducting a meaningful clearance search or explaining the risks of adopting a mark without clearance. Although high volume automated filing services appear to make the trademark application process more affordable, they fail utterly in educating clients about the risks of adopting trademarks without proper clearance. Even obtaining a trademark registration does not mean that the client is clear to use the mark, as other parties may have superior common law rights, and may still file a cancellation proceeding or infringement litigation. That said, if a client has no budget to conduct a clearance search, that client can make the decision to take on extra risk, but the decision should always be made knowingly.

Wish You Were Here

In the case of In re Diane R. Gunter, Serial No. 77227513, the TTAB recently reversed a refusal to register the trademark Wish You Were Here for underwear.  The Trademark Examining Attorney had taken the position that applicant’s mark was confusingly similar with the Wish You Were Here, Love Jetsy mark:

Both marks contain the phrase “Wish You Were Here.”  The Love Jetsy postcard mark is registered for “women’s dresses, shirts, skirts and apparel.”

The Trademark Examining Attorney argued that consumers are more likely to focus on the first part of a trademark; that both marks were substantially similar as to appearance, pronunciation, meaning and commercial impression; that underwear is related to outerwear; and that both goods would be sold through the same channels of trade.  The Applicant countered that the Examining Attorney had failed to place proper emphasis on dominant design elements of the post card trademark.

In reversing the Examining Attorney, the TTAB held:  ”we cannot agree with the Trademark Examining Attorney’s position that the phrase ‘Wish you were here!’ is the dominant element of applicant’s mark. As depicted in the drawing, the words ‘Love, Jetsy’ are prominently displayed, comprising the largest element on the card. . . and [] have the effect of catching the eye and engaging the viewer before the viewer even looks at the phrase ‘Wish you were here!’ In this context, the ‘Wish you were here!’ phrase is a postcard cliché that acts merely to reinforce the design element of the postcard, and would not otherwise make an impression on the viewer.”  In a nutshell, wish you were here in the postcard sense creates a different commercial impression from Wish You Were Here in my pants.

The TTAB then declined to equate “shirts” with “t-shirts” worn as underwear, or to include underwear within the definition of apparel.  But see, Lady Gaga.  The TTAB found that the dictionary definition of apparel encompasses outer garments — not underwear.  Got it.  Underwear and apparel are not related goods.

TTAB?

“We do not suggest that underwear and items of apparel are not related goods.”

Okay, so they’re related.  They’re just not related enough.