The Trademark Trial and Appeal Board recently parsed a word mark in a way that could inform creation of your next brand. WARNING: This is nerdy stuff from a trademark lawyer. My hope, though, is that by skimming these couple of paragraphs, you will save yourself time, stress, and legal fees by choosing a brand name that will pass muster with the U.S. Patent and Trademark Office-and also withstand a challenge from a competitor.
Trademarks come in four varieties: generic (e.g., “aspirin” or “e-mail”), descriptive (“shredded wheat”), suggestive (e.g., “Coppertone” or “Greyhound”), and arbitrary/fanciful (“Swatch” or “Sun” computers). In Miss World Limited v. Camila Productions Ltd., Opposition No. 91206024 (January 7, 2016), the two marks in controversy were THE WORLDS PAGEANTS (“for entertainment in the nature of beauty pageants”) and MISS WORLD (“for entertainment services – namely, conducting of beauty competitions” among others).
With respect to THE WORLDS PAGEANT, the judge found that “the” lacked any source-identifying significance. It also determined that “pageant” was generic in association with beauty pageants. As to MISS WORLD, the honorific of “Miss” is only of descriptive significance, indicating the gender and marital status of the competitors. This left WORLDS versus WORLD for entertainment connected with beauty pageants.
Because WORLDS and WORLD were essentially identical, and used to identify sources for the same services, registration of THE WORLDS PAGEANTS was denied. Even more unfortunate, the owners of THE WORLDS PAGEANTS had been using the mark, investing in this brand, for over 5 years-all that time, effort, and money gone to waste. This situation could have been avoided by performing clearance when the brand was first conceived. If you want to find out more about the clearance process, please don’t hesitate to give me a call.
