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May 8, 2014

If you give your product a catchy name, you best protect it with a trademark registration

by Steven Z. Raber

Close observers of television commercials will have noticed that the proprietor of the KLEENEX trademark takes great pains to ensure that its product is always referred to as “Kleenex brand facial tissues”. This is done, we expect, on the advice of trademark counsel, who have likely pointed out that allowing a trademark to be used as the descriptor of a product, rather than a brand, will result in the owner losing that trademark. Put a slightly different way, when the trademark stops being distinctive of the origin of the goods, it stops being a trademark.

A recent decision from the United States Patent and Trademark Office’s Trademark Trial and Appeal Board (“TTAB”) demonstrates how failing to register a trademark can result in the party that coined a term for a specific product losing all rights in that mark.

In the example from the TTAB, a company opposed the application by a competitor for the trademark HEMP HEARTS & Design on the basis that the “opposer” asserted that it coined the term “hemp hearts” to refer to its shelled hemp seeds. Further, the opposer claimed to have used the term as a trademark since prior to the date its competitor filed its HEMP HEARTS & Design application in the United States. In short, the opposer was unsuccessful. The TTAB observed that, since the opposer did not own any registered trademark, it must rely on its common law use of “hemp hearts” as a trademark to prove priority. In order to prevail, however, the opposer was required to prove that its mark was distinctive of its products.

The applicant for the HEMP HEARTS & Design mark asserted that the opposer’s “hemp hearts” mark was merely descriptive of the goods the opposer claimed to offer for sale. The TTAB found that the opposer was indeed selling shelled hemp seeds under the mark “hemp hearts”. Relying on the multitude of internet references to “hemp hearts” as being shelled hemp seeds, the TTAB found the opposer’s asserted mark to be generic. As such, the opposer failed in its claim that there was a likelihood of confusion. It had lost its right to claim exclusivity as it did not have a registered trademark for HEMP HEARTS.

Interestingly, the opposer also claimed that its competitor made intentionally false statements during the prosecution of its application by saying that it was entitled to use the mark and that “hemp hearts” is sometimes used within the industry to describe the inner part of a hemp seed.

The TTAB, having already found that hemp hearts is used generically to describe or to refer to shelled hemp seeds, had no difficulty finding that the applicant’s statement that it was entitled to use the term entirely appropriate. The opponent’s allegations of fraud, therefore, failed.

Issues of fraud aside, this case serves as a reminder to owners of trademarks that they best register them in order to maintain a monopoly over the use of their marks. The opposer’s failure to register the coined phrase “hemp hearts” resulted in the term becoming a generic descriptor. Unless a successful appeal is filed, this case is all over but for the crying over a lost opportunity; we can only wonder if the opposer is reaching for a Kleenex brand facial tissue.

Steven Z. Raber, LL.B., F.I.P.I.C., is a lawyer, registered trademark agent, and trained mediator and may be reached by direct telephone at (204) 957-8304, by direct facsimile at (204) 954-0304, or by email at stevenraber@fillmoreriley.com

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