Over the years, brands have fought trademark rejections from the USPTO in federal courts and won.
Take the defendant in USPTO v Booking.com. The trademark office maintained that generic terms tied to top-level domain names weren’t eligible for trademark protection. But the Supreme Court disagreed.
The booking website didn’t just obtain the right to protect its own name, it also paved the way for other generic.coms to register their marks.
Not all brand owners have been so fortunate when it comes to lack of distinctiveness rejections from the USPTO, however.
The owner of social media app Snapchat, on which pictures and messages are sent that are usually only made available for a short time before they become inaccessible to their recipients, attempted to register the word mark ‘Spectacles’ for its smart glasses in 2016.
The trademark office rejected this registration on the basis that it was generic, however, and that if it wasn’t generic, it was highly descriptive.
The Trademark Trial and Appeal Board then upheld this decision in November 2021, and Snap sued the USPTO in the District Court for the Central District of California last month in response.
Snap argued that its brand wasn’t generic because the goods covered were cameras and related software and hardware components. These, the company contended, were commonly and generically referred to as smart glasses or camera glasses, but not spectacles.
Whether Snap wins or loses this case – and there’s a decent chance it will lose – I don’t envy its position.
At worst, its arguments will fall flat in the Californian court and it will either be forced to rebrand or maintain a major brand without the benefit of trademark rights. Even if it wins, the social media firm will have had to spend time and money to achieve that victory, which could be better spent on other things.
It might have been better to have picked a more distinctive mark to avoid the whole mess in the first place – and if in-house and law firm counsel do nothing else with this case, they might want to use it to illustrate the perils of picking weaker marks to their clients.
Snap out of it
It’s likely that Snap considered the possibility that it could end up in the pickle it now finds itself in before it filed for ‘Spectacles’. I imagine that the company’s lawyers brought these issues to the attention of its executives and that together they decided the benefits outweighed the risks.
But other businesses should do all that they can to avoid being thrust into similar positions unless they’re absolutely sure it’s worth it.
After all, trademark registrations are more important to businesses than ever. Online infringement and counterfeiting are rampant after being exacerbated by COVID.
Companies stand a much better chance of fending off bad actors if they have federal trademark rights. Businesses need federal trademark registrations to register their brands with Customs and Border Patrol, after all, and to automatically get the right to litigate in federal courts.
Disputes such as Snap’s take a long time – time that could be better spent fighting counterfeiters.
Keep in mind as well that the USPTO is currently inundated with filings that are already holding things up. As of mid-June 2021, there had been a 63% increase in applications, which translated into 211,000 more filings than received at the same time in 2020.
Given the USPTO’s increased popularity, even highly distinctive marks are likely to face delays. Companies shouldn’t make things worse for themselves by choosing less distinctive marks and putting targets on their backs.
And if nothing else, litigation is expensive. Even if Snap wins its case, it will likely have to spend a lot of money to get there.
Snap may have the money for such an endeavour, but most businesses won’t and so they should try to select names that will be easily registered if they can.
Marketing v legal
Trademark lawyers may know that this is often more easily said than done, of course.
It’s well known that intellectual property attorneys and marketing teams usually have very different ideas about what constitutes a good brand name.
Marketing professionals often prefer names that are descriptive or even generic because these will resonate more with consumers and allow customers to get a sense of the goods and services offered.
Suggestive marks – those that suggest but do not explicitly describe goods and services – can be a good compromise for trademark counsel. But these can also cause issues if competitors or the USPTO itself argue that such marks are actually descriptive.
It’s not as if trademark lawyers can stomp all over the desires of marketing professionals and demand to have things their way – but they can and should point to cases such as Snap’s to bolster their arguments on the risks of choosing weaker marks.
Lawyers can use this case to point out that although certain names might have a lot of commercial appeal, they can also be expensive or impossible to protect.
Companies are certainly free to disregard all this, choose descriptive names, invest a lot in marketing and be prepared to fight for their registrations.
They might come out on top like Booking.com, but they’ll have to make sure it’s worth the risk.
