Although this is not my typical style of blog post, I promised my 7-year-old son that I would use the recent U.S. Trademark Trial and Appeal Board (the “Board”) decision in In re Monster Cable Products
as a “teachable moment.” You may be asking yourself why would my son know about that decision? Well, I must confess, and I’m a bit embarrassed to say so, when my son was a bit younger I began reading aloud Board decisions during our programmed “reading time” unbeknownst, of course, to my wife. Amazingly he enjoys them! Or at least I think he does, since he asks some pretty good questions and is able to stay reasonably “tuned-in.” Or maybe he just likes being with dad. Either way, it’s all-good.
Might I be creating a next generation trademark/IP lawyer? I really hope not as my
secret dream for my son is for him to be a professional hockey player for the Boston Bruins (and I think it is his too) or for any professional hockey team for that matter (other than the for Habs, of course). But then again, I’d be pretty happy and a proud dad if my son were to score! a full college hockey scholarship at a nearby college and so I could use the “college fund” to buy my Porsche 911. Ok, on with the post. My son is now rolling his eyes.
This is yet another case of the trademark selection process running off the track. As I have blogged about many times, brand owners cannot ignore the importance of trademark selection and how the improper selection of marks has the potential to kill (or at least potentially harm) a brand. Brand owners must not only consider marketing aspects of trademarks (how a “mark” itself can “advertise” a product) but also legal ones. In my practice I work closely with many of my clients during the trademark selection process to ensure that valuable names are considered and ultimately selected. Getting trademark counsel involved early during internal trademark selection discussion should result in the selection of valuable brand names and may even reduce the costs associated with the clearance phase due to the pre-screening of proposed marks early in the selection process.
In the case of Monster Cable Products, Inc., Monster Cable sought registration for the mark MONSTER, in standard character form, for various automobile products, including suspension struts, bumpers, automotive fender flares, automotive grab handles, automotive grille, grille guards, automotive light bars, rear view mirrors, roll bars, running boards, automotive seats, shock absorbers, air intake manifolds and truck bed liners.
The Trademark Examining Attorney refused registration of the mark MONSTER on the ground it describes certain characteristics, features and/or qualities of truck accessories. The Examining Attorney argued that because the term “monster truck” means a very large pickup truck, the use of the term MONSTER in connection with truck accessories identifies products used for monster trucks. So the Examiner refused registration. The Examining Attorney based his decision on the long standing trademark principle that a term is deemed to be merely descriptive of goods or services, within the meaning of Section 2(e)(1) of the Trademark Act, if it immediately conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services.
Monster Cable argued that the term MONSTER, when used in connection with automotive accessories, is suggestive, if not arbitrary, for the following reasons:
1. Just because the record shows that there is a vehicle referred to as a “monster truck” does not mean that the word “monster” is descriptive of automotive accessories;
2. The word “monster” per se has no direct relationship with automotive accessories; and
3. Because the average consumer does not drive a monster truck, the word “Monster” does not directly describe automotive accessories.
The Board disagreed, however, by stating the following:
One of the primary characteristics of a “monster truck” is its modified suspension. One of the products listed in the description of goods is “suspension struts.” Consumers encountering MONSTER brand suspension struts will immediately perceive the products as being for monster trucks. Furthermore, the record shows that roll cage kits, roof racks, nitrogen shock absorbers, floor mats, battery cable kits and parts, windscreens, windshields, and canopies are sold for monster trucks. These products correspond with roll bars, automotive cargo management systems, floor mats, shock absorbers, automotive battery accessories, and window covers and deflectors listed in the description of goods. As indicated above, consumers encountering the MONSTER mark in connection with these products would likely perceive the products as being for monster trucks. Finally, a consumer encountering MONSTER for truck steps and truck bed liners would also understand, without any need for analysis, that the products were for monster trucks.
In view of the foregoing, the Board affirmed the Examiner’s merely descriptiveness refusal.
Trademark Principles for Non-Distinctive, Merely Descriptive “Marks”
When selecting new brand names, brand owners must understand that descriptive terms are not protectable as “trademarks” upon first use. Descriptive terms must acquire secondary meaning before any trademark rights are acquired – if ever any. To read more about avoiding the pitfalls of descriptive “trademarks,” read my blog posts on that topic, including here, here, here and here.
As pointed out by the Board in In re Monster Cable, below are certain key trademark principles you need to know to avoid adopting non-distinctive, descriptive terms as “trademarks”:
1. A term need not immediately convey an idea of each and every specific feature of the applicant’s goods or services in order to be considered to be merely descriptive; rather, it is sufficient that the term describes one significant attribute, function or property of the goods or services.
2. Whether a term is merely descriptive is determined not in the abstract, but in relation to the goods or services for which registration is sought, the context in which it is being used on or in connection with the goods or services, and the possible significance that the term would have to the average purchaser of the goods or services because of the manner of its use; that a term may have other meanings in different contexts is not controlling.
3. The question is not whether someone presented with only the mark could guess what the goods are. Rather, the question is whether someone who knows what the goods are will immediately understand the mark as directly conveying information about them (i.e., whether someone familiar with applicant’s truck accessories will understand MONSTER to convey information about the goods).
4. It is a well-settled legal principle that where a mark may be merely descriptive of one or more items of goods in an application, but may be suggestive or even arbitrary as applied to other items, registration is properly refused if the subject matter for registration is descriptive of any of the goods for which registration is sought.
5. A term or terms are not merely descriptive of goods or services if one must exercise mature thought or follow a multi-stage reasoning process in order to determine the product or service characteristics.
Rather than taking the “easy” way out by adopting “marks” that are capable of “advertising” the associated goods or services, select suggestive, arbitrary or coined terms to use in combination with the desired descriptive term(s). If Monster Cable had adopted a mark using that strategy, such as “Monster Planet” - “Monster Craze” – or “Pinnacle Monster Accessories” (assuming there are no prior users of those marks or similar mark, of course) it likely would not have been run over by the Board.