Scott D. Locke and Laura-Michelle Horgan ()
Marketing is, at its core, an attempt to create a memorable and favorable impression through brand identity. In doing so, marketers are often tempted to use words and phrases that describe their products or are laudatory. Unfortunately, these types of brand names do not readily form the basis for strong trademark rights. Appreciating this problem, some clients are tempted to use words or phrases that are double entrendres, which can elevate an otherwise descriptive mark to a higher status. However, as Calphalon Corp. recently learned in In re Calphalon, 2017 WL 1476288 (TTAB 2017), not all double entendres are created equal, and even the use of a clever misspelling to try to highlight a double entendre might not save a mark from being deemed by the U.S. Patent and Trademark Office (USPTO) to be descriptive. When this occurs, absent a showing of having become distinctive through use, the mark can only be registered on the Supplemental Register, which may present increased burdens when trying to enforce one’s trademark rights.
Trademark rights protect the goodwill and reputation that attach to products that are sold under, or services that are offered under, a brand name, symbol, or design. When an applicant seeks to register a mark, the USPTO will consider where on the continuum of inherent distinctiveness the mark falls. Arbitrary, fanciful, and suggestive terms can readily be the source of strong trademark rights because they are inherently distinctive. In re Chippendales, 622 F.3d 1346, 1350-51 (Fed. Cir. 2010). By contrast, descriptive terms are not inherently distinctive and thus can be the basis of strong trademark rights only upon a showing of secondary meaning; generic terms are prohibited from being the basis of trademark rights. Id.
If a mark is arbitrary (e.g., APPLE for personal computers), fanciful (e.g., KODAK for film), or suggestive (e.g., GREYHOUND for buses), the USPTO may allow it to be registered on the Principal Register without a showing of the mark’s having acquired distinctiveness through use. If the mark is deemed descriptive (e.g., AMERICA’S BEST POPCORN for popcorn) and the applicant has not demonstrated that the mark has acquired distinctiveness, the applicant may only register the mark on the Supplemental Register. 15 U.S.C. §1091 et seq.
Registration on the Principal Register is significant because with it comes a number of benefits, including having the application for the mark considered to be constructive use of the mark and after continuous use of at least five years, having the registrant’s exclusive right to use the mark in commerce, become incontestable, subject to only a few defenses. 15 U.S.C. §§1057 &1065. These benefits are not available for marks that are registered on the Supplemental Register. 15 U.S.C. §§1094.
Not surprisingly, attorneys prefer that their clients use arbitrary, fanciful, or suggestive terms. Unfortunately, often a client is drawn to the use of descriptive terms because those types of marks convey a message, and the client files the application before the mark has acquired distinctiveness. Because of the benefits of registering a mark on the Principal Register, many of the disputes with the Trademark Office focus on whether a mark is descriptive.
Whether a term or phrase is descriptive depends on whether it conveys an immediate idea of an ingredient, quality, characteristic, feature, function purpose or use of the goods of services with which it is associated. 15 U.S.C. §1052(e)(1); Bristol-Myers v. McNeil, 973 F.2d 1033, 1040 (2d Cir. 1992). Thus purely descriptive terms, as well as laudatory terms, which are terms that attribute quality or excellence to goods or services are generally deemed to be descriptive, and therefore do not receive the benefits associated with registration on the Principal Register. In re Boston Beer, 198 F.3d 1370, 1373-74 (Fed. Cir. 1999) (holding that the mark “the best beer in America” was a common, laudatory advertising phrase that could not be registered).
Under U.S. trademark law, a “double entendre” is a word or an expression that is capable of more than one interpretation as applied to a class of goods and services. TMEP 1213.05(c). If one of the interpretations is descriptive, but a second meaning is not descriptive, then the mark will both be deemed not to be descriptive and be capable of being registered on the Principal Register.
Examples of marks that are double entendres are LIGHT N’ LIVELY for reduced calorie mayonnaise and SHEER ELEGANCE for pantyhose. Id. However, when using terms with the intention of creating a double entendre, one must be careful to ensure that the non-descriptive alternative meaning of the proposed mark is one that would be readily apparent from the mark itself. Thus, a theoretical double entendre or one that is understood only in the presence of external indicia will not save a mark from being deemed descriptive.
For example, in In re The Place, 76 U.S.P.Q.2d 1467 (TTAB 2005), the applicant tried to register the mark THE GREATEST BAR for restaurant and bar services. The USPTO deemed the terms THE and BAR to be non-distinctive and the term GREATEST to be laudatory and thus itself descriptive. Further, the USPTO concluded that the combination of the terms rendered the entire phrase descriptive, and consequently, rejected the application for registration on the Principal Register.
In trying to overcome the examiner’s rejection, the applicant argued that its mark was a double entendre. However, the applicant explained that the purported second meaning would be understood in the context of the trade dress, theme and motif that the applicant would use and display in the restaurant/bar and in the promotion and advertisement of the restaurant/bar. The décor was to focus on the greatest people, places and events in Boston’s history, such as the Blizzard of 1978, Ted Williams, Aerosmith and John F. Kennedy. Because the purported double entendre would not be apparent from the mark itself in the absent of other indicia of use, the USPTO maintained the rejection.
Similarly, in In re RiseSmart, 104 U.S.P.Q.2d 1931 (TTAB 2012), the applicant unsuccessfully tried to overcome a rejection based on its trademark being descriptive. The applicant tried to register the mark TALENT ASSURANCE for personnel placement and recruitment services, employment counseling services, and employment outplacement services. It took the position that TALENT ASSURANCE was a double entendre to the extent that is tells consumers that the user of the services will be presented with capable and talent candidates while also telling them that the applicant would supply personnel, which in slang may be referred to as talent. In other words, the mark would refer to both the quality of the candidates and to the quality of the services. The USPTO dismissed the argument because both of the meanings were descriptive of the services and both referred to the needs of the customers that were being met.
Misspellings in Trademarks
Another strategy that applicants employ when trying to get register otherwise descriptive terms on the Principal Register is to misspell them intentionally. Unfortunately, a slight misspelling of an otherwise descriptive will not render it non-descriptive. TMEP 1209.03(j).
The recent case, Classic Liquor Importers v. Spirits International, 201 F. Supp. 3d 428 (S.D.N.Y. 2016), illustrates this point. A newcomer to the liquor business, Classic Liquor, had launched a product line under the mark ROYAL ELITE, which was the subject of three pending trademark applications. An established industry player, Spirits International (SPI) owned three registrations that incorporated the term ELIT. Only one of those marks was not stylized: STOLICHNAYA ELIT. SPI sent a cease and desist letter and the new company filed a declaratory judgement action including a claim of non-infringement.
In making its case, SPI found itself between a rock and a hard place. It wanted to argue that its marks were strong, because they were registered on the Principal Register, which as noted above is only for marks that are inherently distinctive i.e., arbitrary, fanciful or suggestive, or have acquired secondary meaning. However, the marks were all composite marks that contained non-descriptive elements that were not present in the plaintiff’s marks. Consequently, the defendant was required to focus on the likelihood confusion between the term ELIT in its marks and the plaintiff’s use of its mark ROYAL ELITE.
SPI argued that the term ELIT has no meaning in English and thus was fanciful. The court disagreed, emphasizing that a slight misspelling as was the case here with the registrant have dropped the second E, would not generally turn a descriptive work into a non-descriptive word. Under the court’s analysis, if a mark is the misspelling of a work but so phonetically identical to the original descriptive term that buyers would recognize it as descriptive, then the mark is deemed descriptive. Here the court deemed the term ELIT to be “a bastardization of ELITE” and thus the type of self-laudatory term that is not entitled trademark protection absent a showing of secondary meaning. Because there was an issue of fact as to whether the registrant has established secondary meaning with respect to the term ELIT, the court denied a motion for summary judgement.
‘In re Calphalon’
Calphalon filed an application to register SHARPIN on the Principal Register for cutlery knife blocks that incorporate built-in sharpeners that automatically sharpen knives. 2017 WL 1476288 (TTAB 2017). According to Calphalon the mark created a double entendre with the two meanings being that the device functions to sharpen knives and that the device has a built in sharpener. Additionally, Calphalon noted that the mark is misspelling of the term “sharpen.” The ex parte examiner rejected the application, deeming the mark descriptive of the goods with which it was associated. The applicant applied to the Trademark Trial and Appeal Board (TTAB).
The TTAB agreed that the mark was descriptive because someone who knew what the goods that were to be associated with the mark were would understand that the mark conveyed information about them. The TTAB emphasized that the term SHARPIN evoked an immediate association with the term SHARPEN, which is phonetically-identical, and otherwise a virtually-identical word. Thus, the misspelling would not save the application.
With respect to the alleged double entendre that the mark created, the TTAB deemed that the proposed second meaning (a device with a sharpener built in) was not readily apparent from the mark itself, and thus there was no double entendre.
The TTAB’s decision might not have been a surprise to the applicant. During ex parte prosecution, the applicant had amended its application, originally filed as the word mark, SHARPIN, so that the drawing of its mark was changed to sharpIN. However, the applicant never amended the application to designate that the mark was of special form, i.e., limited to a particular font style, size or color. It is unclear whether this was intentional, in order to retain broader rights. If so, the applicant’s attempt to have its cake and to eat it too only emphasized the correctness of the TTAB’s decision.
On appeal, the applicant argued that in disregarding the double entendre argument, the examiner missed the point of the amendment. But if as the applicant argued, an amendment to a specific presentation of the mark was necessary in order to appreciate the double entendre, then failure to amend the application in order to have the term in a specific form only emphasized that with respect to the mark of the original application, the public would not understand that mark as applied to the goods to be a double entendre.
In re Calphalon offers a cautionary example of how clever marketing is not synonymous with strong trademark rights. The temptation to use and to massage descriptive terms and phrases through the creation of a double entendre alone or in combination with a misspelling should be resisted unless someone has examined them with a critical eye. If a misspelling itself it minor and does not alter the phonetic presentation of the word or a proposed double entendre does not have a non-descriptive meaning that is apparent from the mark itself as applied to the goods, then an applicant or purported trademark user may be deemed to possess only a descriptive mark, which may render the brand less valuable and more difficult to protect in the marketplace.