The advent of the Internet and the tsunami of social media have unquestionably altered the practice of trademark law and many core trademark principles. Brands no longer control the conversation. Traditional trademark enforcement is no longer in vogue and may be downright counterproductive (eg, trademark bullying). The more creative the approach, the more effective the result (examples include Bud Light’s use of an actor to deliver messaging regarding misuse of its DILLY DILLY mark that earned it kudos from its recipient as well as its customers; and the VELCRO brand’s “Don’t Use Velcro” music video). Additionally, Google has proven to all of us that those longstanding commandments about consistent trademark use (see Google’s daily ‘doodle’) and verbal genericide (see ‘Googling’) may not always apply.
But what’s good for [the] ‘Google’ is not necessarily good for the ‘Gander’ (ie, the rest of us). Few brands enjoy the ubiquity or resources of Google. And as the Trademark Trial and Appeal Board (TTAB)’s recent decision in In re U-Haul International Inc (Serial Nos 86757544, 86757575, 86757589, 86757631 and 86757635, November 17 2017) clarifies, brand owners need to be aware of, and careful about, their use of less distinctive brands.
In 2015 U-Haul International Inc applied to register five TRAILERSHARE-formative trademarks for rental services of trucks, trailers, vans, vehicles, portable moving and storage units. The U.S. Patent and Trademark Office (USPTO) refused registration for TRAILERSHARING as being merely descriptive of the identified services, and similarly refused registration of the other TRAILERSHARE-formative marks, absent a disclaimer.
While the mark TRAILERSHARE was coined by U-Haul and is not defined in dictionaries or in widespread use in the industry, U-Haul’s own descriptive use of its marks ultimately defeated its claims of distinctiveness. On its website, U-Haul stated: “Truck and trailer sharing refers to rental services intended to substitute for private truck ownership.” U-Haul further explained that its services are “built on a model of sharing, where customers move each rental from one area to another to be shared continuously. Sharing rental trucks and trailers is at the foundation of our rental products…”. Even U-Haul’s specimen claims that ”[s]hared use of U-Haul trailers reduces the cost for users and reduces the need to build new trailers, which makes for a win-win-win situation environmentally, socially and economically”.
On appeal, the board found that U-Haul’s descriptive and textual use of the phrase on its website and in marketing and advertising materials, coupled with its own provision of a definition for the coined mark, offered sufficient support for the USPTO’s conclusion that TRAILERSHARE was merely descriptive. The board rejected U-Haul’s argument that the marks were suggestive, rather than descriptive, because the terms ‘sharing’ and ‘rental’ are not synonymous, and sharing implies a non-financial, personal interaction. In response, while noting that the dictionary definition of the term ‘sharing’ makes no reference to the exchange of money, U-Haul’s argument was undermined by its own specimen of use, which stated that it was “built on a model of sharing”, but referred to rentals for a fee. The board stated:
“In short, when the term ‘trailer’ is combined with forms of the term ‘share’, the mark as a whole… does not convey ‘any distinctive source-identifying impression contrary to the descriptiveness of the individual parts’.”
The TTAB’s decision, while non-precedential, offers an important reminder to all brand owners about the importance of policing not only third-party use of their brands, but their own use as well. Moreover, the decision highlights a universal truth - brand owners can be their own worst enemies if they do not follow the following key rules:
- A coined trademark is a valuable commodity that, if properly cared for, can be one of your greatest and longest-lasting assets. As a brand owner, your role is to educate consumers that the trademark is a sourceidentifier as contrasted with a descriptor of your goods and services. If you have to definethe meaning of your mark, do so without using its component terms and make sure you are using your trademark as an adjective, not a noun(think KLEENEX tissue, not KLEENEX), and not a verb(think photocopy not XEROX).
- Do not use your mark in descriptive text in your advertising and marketing materials. If you need to give the public a generic way to refer to your goods or services other than your trademark, do that (think in-line skates rather than ROLLERBLADE).
- Do not use the terms that make up your mark in your goods or services description in any trademark application filed with the USPTO. You are asking for a descriptiveness refusal and/or a disclaimer requirement.
- Do not use your mark in a plural or possessive format, unless the mark itself is plural (think 1-800-FLOWERS) or possessive (think LEVI’S). Only nouns (as contrasted with proper adjectives) can be plural or possessive.
- Take the time to understand the differences between a trademark and a trade name. Your trade name identifies your company as an entity - and can include an ‘Inc.’ or ‘Company’ or similar designator. Your trademark, on the other hand, identifies the source of your goods or services (COKE is the name of the drink. The Coca-Cola Company is the name of the entity).
- Make sure you use your mark consistently in your marketing materials, on your website and otherwise. While Google can get away with changing its logo every single day, it is probably one of the only brand owners that can, and still maintain consumer recognition of its traditional logo. Unless you are the foremost search engine in the world, you are likely undermining consumer recognition and the strength of your logo.
- If you can persuade your marketing department to include a form of trademark notice on your marketing materials and packaging, even better. The more you educate consumers to recognise your brand, the stronger and more enforceable it will be. Make sure that you use the correct notice. If your mark is not federally registered, that is a TM, not a ®