trademark cancellation

What comes to mind when you hear the term “LifeProof”? Does it immediately make you think of something that protects from all of life’s hazards or does it merely suggest that something can withstand various accidents? That is what the Ninth Circuit in California is deciding in Seal Shield LLC v. Otter Products LLC, et. al. after hearing oral arguments on the topic in January. The issues central to the case hammer home the importance of using your trademarks in the right way—as a trademark identifying a brand—or a source—and not as term that merely describes the product.

In this case, Seal Shield and Otter Products both claim rights to the same term—LIFEPROOF. Seal Shield argues that it was the first to use it, so it should have the rights. Otter Products counters and argues that Seal Shield did not use it in the right way—that Seal Shield only used it to describe the product and not as a trademark.

Copyright: 91foto / 123RF Stock Photo
Copyright: 91foto / 123RF Stock Photo

Seal Shield sued Otter Products and TreeFrog Developments (which was acquired by Otter Products) after TreeFrog Developments obtained a federal trademark for LIFEPROOF in 2010. Seal Shield brought a suit in 2013 and argued that it had senior rights to the name LIFEPROOF and requested that the court cancel Otter Products’ trademark as a matter of law. In ruling in favor of Otter Products, the district court held that as a matter of law Seal Shield did not have proprietary rights to the LIFEPROOF name because the way Seal Shield used the name (as a tagline or slogan with its Klear Kase protective cases) was merely descriptive.

Seal Shield appealed the district court decision arguing that its use of LIFEPROOF is not merely descriptive but is suggestive. Specifically, Seal Shield argued that LIFEPROOF falls short of explicitly describing the various features that are included under the mark LIFEPROOF and it takes a mental leap to associate the word LIFEPROOF with a protective case that protects from all of the elements and human error, meaning the mark is suggestive. Seal Shield also argued the mere fact that the USPTO granted TreeFrog Developments federal registration of LIFEPROOF demonstrates that such mark is protectable.

For its part, in addition to a myriad of other arguments, Otter Products contends that Seal Shield’s use of the LIFEPROOF mark is merely descriptive and that it failed to show any consumer evidence of secondary meaning—such as a survey showing that consumers associate their use of LIFEPROOF with the goods of one maker rather than merely describing the product. And to address the seeming inconsistency, Otter Products contends that Seal Shield cannot rely on Otter Products’ federal registration as evidence that the mark LIFEPROOF is distinctive because, as Otter Products argues, it uses the mark as a trademark and not merely to describe the goods.

The court will rule on this appeal later this year. You may think it’s counter-intuitive for Otter Products to argue that Seal Shield’s use of the LIFEPROOF mark is merely descriptive while at the same time maintaining a federal registration for that same mark that is inherently distinctive and suggestive; however, this demonstrates that the way you use mark is a key component on whether a mark will obtain trademark protection.

The word “cars” is a synonym for “automobiles” (go figure!). But in the field of “software for capturing road data and determining safe curve speeds for automobiles, as well as hardware for capturing telemetry and road data,” the word “cars” as a trademark impermissibly describes the goods and services in that field, according to the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. The Board recently affirmed a Trademark Examining Attorney’s refusal to register the CARS mark as a result.

When a mark is used on or in connection with goods or services, the mark cannot be “merely descriptive” of those goods or services under the Lanham Act. “Merely descriptive” means the mark immediately gives the viewer information about some characteristic of the goods or services with which the mark is used.

“Suggestive” marks, on the other hand, don’t directly describe the goods or services. Those marks are allowed because they require some imagination or thought by the consumer to realize what’s being offered (e.g., SWEETARTS for candy).

The Board analyzes only the identification of goods and services in the application and not what the record before the Board reveals about the goods and services.

In affirming the CARS cancelled registration, the Board considered evidence establishing that “safe curve speed determinations are done for cars, and that cars often are used to gather the necessary information for such determinations, in that hardware and software installed in cars driven over the roads at issue collect the information.” Other companies in that field would use the term “cars” to describe their services in relation to curve speed determinations. The Board found that the Applicant even used the description “for automobiles” in its application – a signal that “cars” is a major part of describing curve speed determinations.

The Board was also persuaded by evidence showing that the word “cars” is generally used in the automobile software field, noting three other similar software’s websites used “car” and “cars” in describing software which collected data on a car’s speed while it travelled or monitored engine performance and functionality.

The Board rejected the Applicant’s argument that CARS constituted “a complete, indivisible hardware and software unit” used by state and local governments to gauge speed data because that description never made it to the actual application, so the Board could not consider that description.

The Board also dismissed the Applicant’s “double entendre” argument that CARS was an acronym for “Curve Advisory Reporting System.” The Applicant failed to submit evidence that consumers actually knew that CARS meant anything but a synonym for automobiles, and the application only included the CARS mark and not the words in the acronym. The Board could only assess the meaning of the mark from the perspective of what the consumer actually sees – CARS.

The Board concluded that consumers would see CARS and understand that the features of the hardware and software involve cars and are used in cars, making the CARS mark merely descriptive and un-registerable as a trademark.

Potential applicants should come up with marks that are at least suggestive and not descriptive of the products and services listed in the application. While a suggestive mark is stronger and more registerable, a descriptive mark that has acquired distinctiveness may also be registered.

For considerations in selecting a mark, visit the International Trademark Association (INTA) page on developing a list of potential trademarks.

Randall J. Collins is an Intellectual Property Associate in Fox Rothschild’s Philadelphia office.

When is a trademark not a trademark?  When it no longer performs the source identification function for which it was adopted.  In a recent decision of the Trademark Trial and Appeal Board of the United States Patent and Trademark Office, the Board cancelled the trademark registration (and refused a currently pending application) for the logo “I♥DC” covering various merchandise ranging from clothing to tote bags to stuffed animals.

I (Heart) DC 1

I (Heart) DC 2

As grounds for the cancellation, the Board found that the mark no longer served its purpose of identifying the source of the goods, but instead was perceived as an expression of enthusiasm rather than a source indicator for the goods. In finding the wording no longer functioned as a trademark, the Board relied upon widespread ornamental use of the logo by third parties for a long period of time and evidence showed that consumers associated the slogan “as an expression of enthusiasm, affection or affiliation with respect to the city of Washington, D.C.” – even despite extensive use of the slogan on product hang tags (traditional indicators of trademark use).  Here the Board went so far as to recognize that many other “I ♥…” expressions also fail to function as a trademark (but instead simply imply an expression of enthusiasm).

Of course, the trademark owner did herself no favors, admitting that she did not create the design, that she was aware of other third party vendors using the slogan when she originally filed; that her rational for filing the application was to prevent copying of the products affixed (not necessarily the trademark); and when asked what the logo meant, she responded that “they love D.C” and that the customers buy the goods “to remember that they’ve been there”.  All candid responses, and all overwhelming support for a finding that “I♥DC” failed to function as a trademark.

Curiously, while no love exists for I♥DC trademarks, some 200 miles up I-95, we find ourselves in an alternate universe, where I♥NY has for decades stood as the focal marketing piece and perhaps one of the most famous brands associated with the State of New York.  In fact, the brand is so well known, aggressively enforced, and strategically licensed, that its owner, the New York State Department of Economic Development has its own website dedicated to the brand and licensing opportunities.  What a difference!

Although the facts overwhelmingly tipped against I♥DC (and its individual owner), the decision raises questions about “I♥[insert geographic location]” trademarks generally.  Don’t they all act as an “expression of enthusiasm, affection or affiliation with respect to the [insert geographic location]” – New York being no different?  And apparently affixing the logo onto hang tags is not enough to show “trademark use”.  So where is the line?

While the New York State Department of Economic Development may withstand challenges based on historic policing efforts, use on a wide range of goods and services, and developing an entire licensing program; owners (public and private) with smaller budgets and shorter histories likely face the same dangers and attacks as I♥DC.  Police your mark, keep ornamental use to a minimum and have a documented history of how you use your mark as an indicator of source of the product, not just as a cute slogan that you love a particular city.  And for those looking to enter the “I♥[insert geographic location]” branding market (whether entrepreneur or local government), check the registry, investigate your marketplace for preexisting use, and study this case for what to do (and not to do) in your use of the brand – as opportunities exist as both first adopter or simply on the coattails of prior owners failing to treat their brand as anything more than a slogan showing “enthusiasm” for the location.