Trademarks and Brands The Potential Paved Road to Protecting Highly Descriptive and Generic Terms Combined with Top-Level Domain Extensions

by Lee J. Eulgen and Bari L. Nathan, Guest Bloggers on Tuesday, 20 March, 2018

A word or logo can only function as a trademark if it is distinctive (i.e., capable of identifying and distinguishing the goods and services with which it is used from others’ goods and services) and, as most readers of this blog will readily recognize, a trademark’s distinctiveness ranges along a spectrum, sometimes called a hierarchy of marks. In order from least distinctive to most distinctive, the categories of distinctiveness are: generic, descriptive, suggestive, arbitrary, and fanciful. 

Marks that are suggestive, arbitrary, or fanciful are deemed sufficiently distinct to automatically function as trademarks. Descriptive marks, on the other hand, are not considered inherently distinctive, and can only function as a trademark if they have obtained secondary meaning (also known as acquired distinctiveness) in the minds of consumers. Generic terms are common identifiers for a type or category of product or service (e.g., “E-MAIL” used to identify an e-mail service, or “FITNESS CENTER” used to identify fitness centers or gyms) and, as such, the law does not allow these types of terms to be protected as proprietary to one party and registered as trademarks. This treatment of generic terms is based on the principle that people and companies deserve the right to accurately identify and describe their products and services, and granting a single party an exclusive right to a generic term would unfairly impede competition. 

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Topics: domains, trademark

Australian Brewer Files Trademark Application for the Color of Beer

by T+B BLOG TEAM on Wednesday, 14 March, 2018

There aren't many trademark registrations for colors in Australia, but now a brewing company has filed a trademark application for Pantone 142—an amber color resembling the color of beer—in the category of beer and ale.

The East 9th Brewing Co. uses the phrase "The Colour of Beer" on its beer cans, and, recently, one of its related companies filed a trademark application for the slogan.

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Topics: trademark

Lucasfilm in Trademark Dispute Over Mobile Game App

by T+B BLOG TEAM on Tuesday, 6 March, 2018

Do any of you Star Wars’ fans know how Han Solo won the Millennium Falcon?

The answer is: in a game of cards, called Sabacc, against Lando Calrissian. (Specifically, it was a variant of Sabacc called "Corellian Spike," played with a pair of six-sided dice. Thank you, Wookieeepdia.) Website Dork Side of the Force calls Sabacc “a combination of Black Jack and poker, but it’s rules are a bit more complicated.”

Disney’s Lucasfilm says it’s been using the Sabacc name in card games, comic books, theme parks, and more, since it was first introduced on film in 1978. And now, writes The Hollywood Reporter, the company is suing Ren Ventures over a mobile game app based on the card game.

According to Variety, Ren Ventures started selling a mobile game app called Sabacc in 2015 and registered a trademark for the name in international classes 9 (computer game software) and 41 (entertainment services) in August 2016. Then, last December, Lucasfilm challenged the registration by filing a lawsuit against Ren Ventures for trademark and copyright infringement, along with unfair competition.

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Topics: trademark, trademark infringement

Scotch Whisky Trademark Renewed in China for 10 Years

by T+B BLOG TEAM on Thursday, 8 February, 2018

The Scotch Whisky Association (SWA) has successfully renewed its trademark for the “Scotch whisky” trademark in China for 10 years. The first “Scotch whisky” trademark agreement with China was reached in 2008. The recent renewal extends the trademark until 2028.

The SWA has coordinated efforts with the British Embassy and Chinese authorities to prohibit locally produced spirits from being sold as “Scotch” in China. Many of the Chinese-made spirits use Scottish words and images in their names and logos, which have been trademarked in China. According to The Drinks Business, the SWA has already dealt with 200 brands of fake “Scotch” and challenged more than 100 trademarks.

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Topics: trademark

The Latest in Celebrity Trademark Applications: An Oscar Nominee Record-Holder

by T+B BLOG TEAM on Wednesday, 7 February, 2018

The annual film award season is in full swing — Golden Globes, SAGs, BAFTAs, Oscars, etc. — so why wouldn’t an oft-nominated film actress file a trademark application for her name during that very time period?

“Oft-nominated” could only mean one person, and, of course, that’s Meryl Streep. Her most recent nomination is for Lead Actress for the film ‘The Post’ from the Academy of Motion Picture Arts and Sciences, otherwise known as “The Oscars.” It is her 21st Oscar nomination — an Oscar record. Streep was also nominated for the same role for a Golden Globe Award, but lost to Frances McDormand for her performance in ‘Three Billboards Outside Ebbing, Missouri.’

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Topics: trademark, names


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