I’ve often discussed How to Choose a Good Trademark. But then I wondered, “What happens to the bad brands?” It turns out there is a place that offers rehab for bad brands, a trademark purgatory of sorts, where bad brands must remain for at least five years before seeking to be released. Rehab for bad brands is where the bad brands waits in punishment and suffering until it can be cleansed, purified, and elevated to the land of distinctiveness, maybe. It's called the Supplemental Register.
In 2015 alone, the Trademark Office rejected 29,992 applications on grounds the applicants' marks were descriptive and not registrable.
Bad brands are names their owners can’t let go of. They either didn’t get proper advice early on, or they insisted upon using the mark, despite the best efforts their trademark lawyer to dissuade them. Others are trademarks that have been in use for years, in which their owners have invested heavily without understanding the importance of choosing a distinctive brand name. In short, these brand owners are stuck with a pig in a poke.
Bad brands are most often descriptive words, ones that attempt to sneak their way into a real trademark registration pretending they are distinctive and memorable.
These are words or phrases that do not help a product stand out from the competition. Instead they are words that describe a quality, characteristic or ingredient of the product or service being sold under the mark. They may also involve a word or prefix that is in such common use that no one can obtain rights. In short, they are trademark light, and the public will likely never remember them. There is no association with the owner as the source of the goods or services
Descriptive terms are usually stopped at the gates of trademark registration where they receive a “Refusal to Register on grounds of “Section 2(e).” This is legalese for “you are not a real trademark.” These also include common surnames, literary titles, trade dress and colors. Descriptive words are however by far the greatest challenge.
While the owner is given a chance to convince the Trademark Examiner that the bad brand is not descriptive, the odds are not good. What are the odds? In 2013, 85.1% of all appeals from refusals to register were affirmed.
Here’s a recent example. The Trademark Trial & Appeal Board recently upheld a refusal to register LIMITED for “sports trading cards” on grounds LIMITED is descriptive of sports trading cards. Topps Company v. Panini America. It mattered not that Panini had used the mark since 1994! The court record was chock-full of articles showing use of the term “limited edition” in connection with trading cards. In short, parties often release “limited” the quantities of cards to protect their collectability. Panini could not prove the mark had become distinctive, especially because lots of others in the trading card industry also use the term “limited.” Panini’s mark is now no mark at all, and all its efforts were wasted.
Many of those who don’t appeal the refusal to register are sent to the “Supplemental Register.” Clients, and even their lawyers, don’t always under the meaning of the Supplemental Register. The “Supplemental Register” Purgatory for Bad Brands. It’s mostly a burial ground for words that describe what the owner is selling. Sadly, most never leave, or if they do, they may be stigmatized forever. Any registration on the Supplemental Register is presumed to be merely descriptive, and the registration alone cannot be used to enforce rights.
A few in rehab are eventually able to make the grade and successfully graduate by becoming distinctive if they can prove they have “acquired distinctiveness.” It’s a difficult, expensive journey even for those who win.
Acquired distinctiveness is just what is says. After 5 years, the owner must often come up with expensive evidence that shows the public things of the owner, not the trademark when it sees the brand. If the owner can show the public so loves the name, the once bad brand can leaves purgatory and goes to trademark heaven. There is takes its rightful place among the other distinctive and highly protectable trademarks of the world. This done by showing extensive advertising and sales, including consumer surveys.
A recent victor in 2012 was Coca-Cola for its mark ZERO for Diet Coke despite the fact the “zero” is often used to describe zero calories. The marketing and advertising power of Coca-Cola was sufficient to find acquired distinctiveness
And the moral of the story is: Choose an inherently distinctive trademark, one that can past the test at the gates of trademark heaven. Trademark rehab is a perilous place to live when it comes to brand protection.