First of all, according to the Dervaes, the letters were not a “legal notice” as it was sent by Jules Dervaes, not an attorney. According to the Dervaes it was a informational letter telling others about the newly acquired trademarks. It was others who have attributed motives and the scope of the letter and misinterpreted its contents.

If the letters she is referring to (there are may also be other letters sent by the Dervaes Family’s attorney that are more strongly worded) are anything like the letter posted on the Dervaes Family’s Path to Freedom website, the “information” provided is not all that friendly, or suggestive:

In addition, Dervaes Institute owns numerous trademarks which should be properly acknowledged if used. These protected names and images include the following registered trademarks:

URBAN HOMESTEAD®
URBAN HOMESTEADING®
PATH TO FREEDOM®
GROW THE FUTURE®
HOMEGROWN REVOLUTION®
FREEDOM GARDENS®
LITTLE HOMESTEAD IN THE CITY®

Also, THE TEN ELEMENTS OF URBAN HOMSTEADING copyright has been filed with the Library of Congress.

If your use of one of these phrases is not to specifically identify products or services from the Dervaes Institute, then it would be proper to use generic terms to replace the registered trademark you are using. For example, when discussing general homesteading or other people’s projects, they should be referred to using terms such as ‘modern homesteading,’ ‘urban sustainability projects,’ or similar descriptions.

Even though the words “cease” or “desist” are not present in this letter, the intent is clear: the Dervaes Family is asserting exclusive legal rights to “urban homestead” and “urban homesteading” and directing others to substitute other terms for its registered trademarks.

Elsewhere in the comments, two attorneys chime in. Paul Keating, a trademark lawyer residing in Barcelona, places the controversy in the context of free speech rights:

This entire comment string clearly shows many of the problems with today’s trademark registration system and the problems it causes. All too often obvious terms are registered. The USPTO should, IMO more aggressively enforce the registration process and the presumptions (which currently favor registration) should be reversed. The declaration at the bottom of each application should be more strictly viewed by the courts. The applicant should be required to actually sign it (not his/her attorney). How could the applicant in this case, for example, assert that they have any exclusive rights in the term?

The biggest issue here, however, is in the enforcement side. Take-down notices are easy to write and the recipients default to complying to avoid liability. This places the burden upon the third party who in the meanwhile had their site, blog, etc, terminated.

Trademarks are an exception to free speech. The original intent was to prevent consumer confusion. They are not, and should not be considered to be, a property right. I am personally becoming concerned at the degree to which the pendulum seems to have swung in favor of IP rights holders in general. It does not bode well for society and all of the overly aggressive tactics being used will hopefully soon come home to roost.

(I’m not sure, however, that the prevention of consumer confusion is trademark law’s sole reason for being. Trademark law may have always been intended to prevent unfair diversion of business and goodwill.)

TiM Atty raises the point that the examination process is fallible and that cancellation petitions function as a backstop against that fallibility:

Marie, I don’t know whether you practice in TM law or not but, if not, I’m impressed by your researching of the subject. However, I felt I had to comment on your statement in 30 that “The USPTO NEVER legally registers a generic word. That’s a legal impossibility.” That statement is either completely incorrect, or I’m misunderstanding your use of the word “legally”. The USPTO registers generic terms regularly, and it’s completely legal. The TM Examiner’s can make mistakes either by not researching a term thoroughly or not having access to the industry information in order to provide the evidence for the genericness refusal. It’s an evidence-based process and there is nothing illegal about registering a generic mark, it’s just a mistake. But that’s part of the reason for cancellation proceedings. So people in the industry can cancel a generic term if they have standing.

What is a cancellation proceeding? An owner of a trademark may file a petition of cancellation with the Trademark Trial and Appeal Board, which is an administrative court that makes decisions about federal trademark registrations, to cancel another party’s registered trademark if that registration harms, or will harm, its own mark. Depending on how long the mark has been registered, the cancellation petitioner can challenge the registered trademark for different reasons. If the mark is not yet incontestable (the registration is less than 5 years old), the challenger may seek cancellation of a registration because it is similarly confusing to the challenger’s mark or the mark is descriptive and has not acquired distinctiveness.

A registration may be cancelled at any time, even if it has become incontestable (has been registered for 5 years or more), for the following reasons: it’s functional or generic; it’s been abandoned; the registration was obtained fraudulently; it’s immoral, deceptive, scandalous or disparaging; falsely designates the origin of alcoholic drinks; incorporates or uses any governmental insignia; or uses the name, likeness or signature of a living person; or if it misrepresents the origin of goods or services. Collective and certification marks may also be cancelled for reasons specific to those types of marks.

Kelly Coyne and Erik Knutsen, authors of “The Urban Homestead,” petitioned to cancel the “Urban Homestead” and “Urban Homesteading” registrations on the grounds they were descriptive, generic, didn’t have acquired distinctiveness and were obtained fraudulently. Their petition:

Petition to Cancel “Urban Homestead”

Cancellation proceedings before the TTAB are similar to court proceedings and the owner of the challenged registration has an opportunity to respond. The Dervaes Family’s answer:
Dervaes Answer to Cancellation Petition

Evidently, the folded edge is not functional and not a generic method of enclosing fruit in dough to be baked, but actually is a source indicator for Chudleigh’s, a commercial bakery in Ontario, Canada. The folded dough shape is designed to evoke apple blossoms, which in turn are meant to evoke an apple orchard. Because the bakery also operates an apple orchard, the pastry shape suggests Chudleigh’s is its source. So says Chudleigh’s office action response.

In that response, Chudleigh distinguished its pastry from Hostess and McDonald’s fruit pies. And then compared the pastry to traditional pies:

Finally, even if Applicant’s BLOSSOM product is not compared to snack cakes, but instead to baked goods in general, applicant is aware of no similar pie shape. Applicant’s BLOSSOM pastry has large folds arranged in a concave circle. The typical tart or piecrust is fluted by pinching the edges of the crust around the convex edge of the pan.

(Emphasis mine.)

Feast your eyes on this gallery of images for comparison. Any dessert lovers or bakers out there have an opinion on this? Is this a distinct and unique shape for a pastry and therefore capable of identifying source? Is the folded over pie edge functional because the shape is merely the result of an easy method to keep fruit enclosed? Is this shape a smaller version of a traditional galette? Where’s the acquired distinctiveness?

(Galette photo by Arnold Gatilao, CC Attribution 2.0 license)

The processing fee for an Oregon state trademark is $50. Although an Oregon trademark doesn’t confer all the benefits of federal registration, it does have some benefits over a common-law trademark, including trademark rights extended to the entire state without having to prove the geographical reach of your trademark use and triple damages of defendant’s profits as well as attorney’s fees.

Dropbox has had some difficulties with its trademark registration, but not because it received a mere descriptiveness refusal. Rather it had to overcome a §2(d) (likelihood of confusion) refusal based on two registrations, one for DROPBOX for “Computer software and downloadable software for use in database management, primarily in the field of life sciences research” in International Class 09 and services listed as “Providing temporary use of non-downloadable computer software for use in database management, primarily in the field of biomedical research” in International Class 42, and the other for DROP BOX HD for services listed as “Providing online non-downloadable software for uploading and transferring advertising programs and media advertising communications via global communications networks” in International Class 42.

Dropbox tried to persuade the Examiner that its mark was not confusingly similar but eventually had to amend its description of goods and services as follows:

IC 009. G & S: Computer software and downloadable computer software used to store and share data, documents, files, information, text, photos, images, graphics, music, audio, video, and multimedia content with others via global computer networks, mobile telephones, and other communications networks for the purpose of file back up and synchronization, not including software for use in database management in the field of life sciences research or software for uploading or transferring advertising programs and media advertising communications

IC 039. G & S: Storage of electronic media, namely, data, documents, files, text, photos, images, graphics, music, audio, video, and multimedia content

IC 042. G & S: Providing temporary use of non-downloadable computer software used to store and share data, documents, files, information, text, photos, images, graphics, music, audio, video, and multimedia content with others via global computer networks, mobile telephones, and other communications networks for the purpose of file back up and synchronization, not including software for use in database management in the field of biomedical research or software for uploading or transferring advertising programs and media advertising communications; hosting of digital content on the internet

This kind of disclaimer is one way to get past a particularly difficult §2(d) refusal and satisfy the Examiner, although registrants with similar marks still have a chance to oppose during the opposition period. The Dropbox application, however, has been stalled because three companies filed extensions of time to oppose, YouSendIt, box.net and OfficeWare, none of which are the owners of the registrations cited in the Examiner’s §2(d) refusal. YouSendIt and box.net have cloud-based document storage businesses and I would guess that they agree with Professor Tushnet that the mark is descriptive and Dropbox Inc. has not exclusively used the mark.

Pendleton Woolen Opposition Filing

Disney’s intentions were misunderstood, according to a person familiar with the entertainment company’s plans. Disney, which owns the ABC television network, is considering a TV show about the elite squad, similar to other fictional dramas about real-life arms of the military, such as “NCIS” and “JAG.”

OK, I get it, it was just one big misunderstanding. Except that, there is no intention in trademark registrations. An owner of a registered trademark has an exclusive, nation-wide right to prevent anyone else from using the same term or any confusingly term in connection with the goods or services covered under the registered trademark. When Disney filed the application for Seal Team 6 for “entertainment and education services” (which it would have to amend eventually with a more specific and narrow description), it was beginning a process of claiming the sole right to title television programs or motion pictures with “Seal Team 6.” Although Disney may make noises that what they really wanted was to protect a TV series like “NCIS” or “JAG,” securing registration would have given them a basis for asserting the right to stop all types of education or entertainment programs or movies that had as their subject Seal Team 6 from using the term “Seal Team 6″ in their titles. Disney’s original “intention” wouldn’t have had anything to do with its exclusive right. And although other uses would have had defenses available, these are only defenses; the producers would have had to hire lawyers to help them defend their rights to use “Seal Team 6.”

As my trademark and copyright professor in law school repeatedly said, “Don’t f–k with the Mouse.” (I’m not sure if Professor Janis actually dropped the f-bomb in class, but his intent was clear.) Disney has a very expansive view of intellectual property rights, both in its legal enforcement and efforts to shape our IP laws, and I wouldn’t place any faith in Disney showing restraint when it comes to securing and enforcing rights to a name that should be available to all of us.

Unlike a trademark or a service mark, a certification mark is not used by its owner to indicate the source of a product or service, but instead is used by other parties after having met the criteria set by the certification mark owner. For the AHA, this means that “No Animals Were Harmed” isn’t used to identify its own services, but rather permits the use of the phrase by television programs and movies if they meet the AHA’s animal safety guidelines.

The “No Animals Were Harmed ” certification mark indicates that certain standards have been met, but there are two other types of certification marks. One is a geographical certification mark, which certifies that a good or service comes from a specific region. For example, chile growers in New Mexico have a certification mark for “Chimayo,” which means that any chile pepper sold that uses “Chimayo” to describe it must comply with the certification process established by Chimayo Chile Farmers Inc. The third kind of certification mark is used to certify that work performed was done by a member of a particular organization, or by someone who meets certain standards and tests of competency set by the certified mark owner. An example is “ASHI Certified Inspector.” Only those home inspectors who have been authorized by the American Society of Home Inspectors after having met its certification standards can use “ASHI Certified Inspector” when advertising or marketing their home inspection business.

Descriptive Marks

So that’s certification marks in a nutshell, but if you’re wondering how a simple factual statement like “No Animals Were Harmed” can get trademark protection, the answer is that it’s possible for descriptive phrases to be trademarks. If a mark obtains secondary meaning, i.e., when consumers have come to associate a name or phrase with a particular source, then it serves as a trademark (Mike Masnick of Techdirt says that this kind of descriptive mark is a trademark “no-no”–he’s half-right, descriptive marks are a trademark “no-yes”–they aren’t trademarks at first but can be if secondary meaning is proven). For trademarks, secondary meaning refers to the source indication of the underlying product. For certification marks, the secondary meaning is for the source of the certification, not the product or service that is being certified.

To obtain registration of its certification mark, the AHA had to demonstrate that “No Animals Were Harmed” had secondary meaning, also called acquired distinctiveness, i.e., that the phrase over time came to mean to the public that it was used in connection with AHA’s animal safety certification program. But it wasn’t easy. The application process took almost two years and involved repeated correspondence between the AHA’s trademark attorney and the trademark examiner. The AHA had to submit volumes of evidence of secondary meaning, including letters from the AHA’s lawyers that contained over a hundred pages of articles and other evidence about the AHA’s role in protecting animals in movies and the use of “No Animals Were Harmed.” Now that five years have passed since the registration was issued, the certification mark’s acquired distinctiveness has become incontestable–a defendant cannot raise in court a defense that the mark is merely descriptive.

Even though the AHA has proven secondary meaning for its certification mark, its right to exclude other animal safety organization from using phrases similar in meaning is limited. Competing animal safety organizations (this may be hypothetical as the AHA seems to have a monopoly for animal safety certification as the result of an agreement with the Screen Actor’s Guild) have a right to their own certifications using an informational phrase indicating that animals were treated safely.  But use of AHA’s exact wording would be infringing and it would be wise not to use some variation of the phrase, like “animals were not harmed” or “no harm came to any animals,” which could be considered confusingly similar by a judge.

“Pet Salad”

Farming Turtle, which owns the registered trademark “Pet Salad” for “pet treats,” has the stronger, more protectable trademark. It’s stronger because the term “pet salad” is a suggestive mark, which is inherently distinctive. To be considered suggestive, the mark must involve some imagination, thought, or perception to reach a conclusion as to the nature of those goods or services. During the registration process, the Trademark Examiner for “Pet Salad” determined that the mark was suggestive presumably because the mark doesn’t immediately convey to consumers that the product is grass meant to be eaten by pets. Instead, “pet salad” only indirectly indicates that the product is some manner of plant or vegetable for pets–some leap in thought is needed to connect the meaning of the mark with the underlying product.

This test is subjective, however, and another Trademark Examiner could have considered the mark descriptive, as did the author of the Times article (“Pet Salad is, in fact, a salad. It’s made to be munched on, but not by you.”), making a case that the product is literally salad for pets. When choosing a mark, keep in mind that there are over 400 Trademark Examiners at the PTO and with a determination like this, where language and word meanings have subjective interpretations, be prepared to respond to a refusal letter stating that the applied for mark is merely descriptive. Choosing a suggestive mark that has a chance of being considered descriptive is risky, at least compared to arbitrary or coined marks, which will more easily survive the examination process.

If a Trademark Examiner determines that the mark meets the test for suggestiveness, the mark is considered inherently distinctive and the application can go forward without the applicant being required to demonstrate that the mark has acquired distinctiveness. This inherent distinctiveness gives “Pet Salad” the advantage of having trademark protection on day one of use. The trademark also gets placed on the Principal Register, which is the primary registry of trademarks conferring all the rights and benefits that come with having a registered trademark, including nation-wide protection, a presumption of validity and exclusive ownership, the ability to bring a case in federal court and the right to use the ® symbol. Farming Turtle has what it needs to protect its turf prevent unauthorized uses of “Pet Salad.”

Even though “Pet Salad” is a somewhat strong mark and on the Principal Register, Farming Turtle could do a better job of protecting its trademark. On the Google search results page for “Pet Salad,” an e-commerce website sells a wheatgrass item described as “Pet Salad,” that may not be Farming Turtle’s product and doesn’t have a ® symbol next to the product’s name. Either the product is not Farming Turtle’s, which may mean that there’s trademark infringement, or the product is Farming Turtle’s and the term is not being used as a source identifier, but rather as a description of the product or the generic name of the product. In any case, Farming Turtle’s trademark rights are weakened.

“Pet Grass”

The second company, Bell Rock Growers, owns the registered trademark “Pet Grass” for “live wheat grasses.” “Pet Grass” is weaker than “Pet Salad” because the mark merely describes an ingredient and purpose of the wheatgrass product. This mere descriptiveness prevented the mark from being placed on the Principal Register. Because Bell Rock didn’t have enough evidence at the time of application of any acquired distinctiveness, the registration was relegated to the Supplemental Register, an official list of trademarks that lack distinctiveness now but have the ability to acquire distinctiveness in the future. An owner of a trademark on the Supplemental Register may use the ® symbol, the mark will appear in the search results of the Trademark Office database and a Trademark Examiner will refuse future applications that are confusingly similar to a trademark registered on the Supplemental Register (although the goods or services for both marks have to be virtually identical, which is not the case for trademarks on the Principal Register).

Registrations on both Registers serve as a basis for bringing a lawsuit in federal court, but trademarks on the Supplemental Register are denied the presumption of exclusive use, ownership and validity, and they do not receive nation-wide trademark protection. Registration on the Supplemental Register essentially gives a trademark only a few more protections than a common-law trademark is given.

Bell Rock tried to convince the Trademark Examiner that “Pet Grass” was inherently distinctive in an attempt to get the mark placed on the Principal Register, arguing that “Pet Grass” was a double entendre and therefore suggestive. Bell Rock argued that the alternative meaning of “Pet Grass” suggests that the grass is a pet, like a pet rock. An interesting argument but failing, I think, because an invented meaning isn’t persuasive, or rather, the alternate interpretation should be one that the public can easily make.

Perform a Google search for “pet grass” and you’ll find other companies using the term to sell wheatgrass as food for pets and to sell lawn turf for pets. At this point, “Pet Grass” doesn’t have much distinctiveness and the company appears to be relying more on “Pet Greens” or “Bell Rock” as its brand identity. One of the weaknesses of having a trademark on the Supplemental Register is that it’s more difficult to enforce the mark, which can result in more uses of the descriptive term appearing commercially. If this happens, the mark becomes less capable of indicating source, making it harder when the owner wants to shift to the Principal Register. Even worse, the term could become generic.

Really, the main problem of a having a mark on the Supplemental Register is it’s a lot of bark but little bite that in a sense it’s not a trademark at all–the Supplemental Register is for marks that do not currently but may later function as a source indicator. If a mark can’t identify source, it’s not a trademark. That doesn’t mean brand owners can’t try to enforce the mark with litigation or cease and desist letters, but they should be prepared to prove that the mark has acquired distinctiveness even if distinctiveness couldn’t be demonstrated when the mark first was registered.