Sunday, November 08, 2020

When Is A Mark Not A Mark?

Perhaps you remember the homophone riddle from your childhood: "When is a door not a door?"

Here is a link to some riddles to help small children develop critical thinking and healthy skepticism for the meaning of the written word:

For this writer, this week, some of the most interesting legal blogs were about trademarks, hence, "When is a Mark not a Mark?" There's not snappy answer, but increasingly, it looks like ".SUCKS", "PAST PRESENT FUTURE", "You're fired!" and "TEXAS LOVE" are not markable ... trademarkable, that is.

Legal blogger Kimberly M. Maynard, representing Frankfurt Klein and Selz PC discusses a  possibly precedent-setting decision by the Trademark Trial and Appeal Board. The TTAB ruled that a generic top level domain name is the back-end part of an address and not a distinguishing mark that any reasonable potential customer would identify with a service.

So, "dot sucks" might make a mark (in the law enforcement sense of the word "a mark") think of a sordid service, but it's too much of a stretch for the TTAB to agree that the common man would see "dot sucks" and jump to the conclusion that this is an obvious and alluring and highly reliable domain name registration service.

The puns are mine. For a comprehensive and sober analysis of why "dot sucks" cannot get a mark to apply, read the original.

Link to the original article:  

Jeffrey H. Brown, blogging for Michael Best & Friedrich LLP opens with a knock-out pun to explain why a boxing champion cannot have legal dibs on "PAST PRESENT FUTURE" as a trademark for T-shirts.

Lexology link:
Link to the original article:

When it is "commonplace" it does not work as a trademark. It might be ones own favorite slogan, or one widely used by others to promote other goods or to express other sentiments, but increasingly, one may not trademark a slogan unless the trademark is very narrow and specific.

For Marks, Works and Secrets, (an Akerman LLP blog),  bloggers Ira S. Sacks and Rachel  B. Rudensky  ask (in part) "...when does a slogan function as a mark?"

Link to the original:

It's an important article that brings clarity to a confusing topic. No writer relishes the idea of certain words or expressions being unavailable for use or book titles, and if "TEXAS LOVE" is available for sale on some item of apparel, that does not put a writer in jeopardy if she writes a book called "Texas Love".  We need to know that stuff!

There's the bottom line. Descriptive use of a registered trademark is not infringement. You can write its name. 

For Harness Dickey and Pierce PLC, blogger Bryan K. Wheelock examines the use of common dictionary words in good faith, and in a descriptive capacity to communicate ones own ideas or products or services rather than to trade on someone else's mark.

When is a door not a door? When it's ajar! ("A jar".)

All the best,

Rowena Cherry   



1 comment:

  1. That's good to know. A while back I read about an author who was in trouble with the state of Texas for using the familiar slogan "Don't Mess with Texas" as a book title.