A Legal Blog by Aaron | Sanders, PLLC


A Registered Weak Trademark Is Still a Weak Trademark: How to Build Up a Strong Trademark

Trademark Registrations Are Important, but Not the Way Many Markholders Think

In my high school “health and guidance” class, I was taught that you can’t sober up a drunk with coffee. All you get, I was told, was a wide-awake drunk. Although now stimulated, the guy’s motor skills were just as impaired as before. I don’t know if that’s still the received wisdom—this was the 1980’s, after all—but it’s a lesson I took to heart. Coffee doesn’t sober up a drunk, and lipstick doesn’t make a pig pretty.

And a registration doesn’t make a trademark strong. If you manage to register a weak trademark, all you get is a registered weak trademark. Trademark registrations don’t generate trademarks out of thin air. They make already-existing trademarks stronger. They are force multipliers. If your trademark is strong, then a registration will make it considerably stronger. But just as multiplying a tiny number still results in another (slightly larger) tiny number, a registration doesn’t add that much to weak trademarks.

The Brawny Poetry of Trademarks

What makes a trademark strong, if not registration? Trademark strength has two ingredients, and you (the trademark owner) control both of them: inherent distinctiveness and goodwill. Goodwill arises from consumers’ recognition…

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Gambling Away from the Track: Trademark Confusion and Horse Racing in the 6th Circuit

It’s Derby time!  I don’t live in Louisville, but I used to spend a lot of time there for work, and when I was in college at Vanderbilt University, the Kentucky Derby would always be the Saturday right after finals ended and was only a two hour drive up I-65.  As poor college kids we drank watered down Mint Juleps and got soaked and muddy in the infield and of course never saw a horse, but it was always a great time. Now, I mostly just watch it on TV and pick a horse based on whether Bob Baffert has trained it, since you can’t bet on the jockey Bill Shoemaker anymore, which is what my grandfather always said you should do.

The enormous business of horse-racing and all the merchandising that goes along with it causes horse tracks to occasionally get aggressive with their trademark ownership.  Courts in the Sixth Circuit sees their fair share of these cases, since Central Kentucky is Horse Country, and has been Horseracing Country since the late 19th Century (thanks to a crackdown on gambling in New York brought about by the women of the Progressive Movement.)

The latest case to reach the Sixth Circuit,…

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Swimming in the Shark Tank: Even Gladiators Need to Clear Trademarks

Swimming with the Shark Tank

If you’re a fan of Shark Tank, one of the more interesting pitches was by Rachel Zietz in 2016, a (then) fifteen-year old lacrosse player and entrepreneur. She said she was tired of the lousy lacrosse equipment she had been buying from the major manufacturers, who, she suspected, didn’t really understand the sport. She would design better equipment herself. Encouraged by her parents and The Young Entrepreneurs Academy of Boca Raton to form a business around something she loved, she started manufacturing and selling lacrosse equipment. She called her business “Gladiator Lacrosse.” She was only thirteen. It was 2013.

None of sharks invested in her company, though they were all impressed and a few were intrigued. They didn’t doubt her business model or her success. Her company already had revenues of $340,000, in just a matter of two years, so she was clearly tapping into something. They just didn’t see how their involvement and money would add anything to her company. Some also doubted that she could stay involved in her company at such a young age, when she would have so many other commitments. She responded that she has a strong brand: GLADIATOR.

Those about to…

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Honey Catches Flies and Hackers, But Not A Trademark Registration

In honor of Valentine’s Day, the Trademark Trial and Appeal Board has offered us honey. You know, that stuff with which you catch more flies.

The lines between descriptive and suggestive marks has never been easy to define.  Bitvoyant, a Virginia-based software company, found that out this week.  Bitvoyant applied to register the mark HONEYFILE in connection with the following:
Computer software platforms for use in the field of computer network security that assist in the tracking of data exfiltration and network intelligence in Class 9; and

Computer security consultancy; Computer security service, namely, restricting access to and by computer networks to and of undesired web sites, media and individuals and facilities; Computer security services, namely, enforcing, restricting and controlling access privileges of users of computing resources for cloud, mobile or network resources based on assigned credentials; Computer virus protection services; Design and development of electronic data security systems; Platform as a service (PAAS) featuring computer software platforms for use in the field of computer network security that assist in the tracking of data exfiltration and network intellegence in Class 42.
The Examining Attorney found the mark descriptive, based on evidence that the cybersecurity industry used the term to denote files that would…

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A Business New Year’s Resolution – Don’t Violate the Trademark “Anti-Trafficking” Rule

You need a trademark lawyer. No, really.  Even if you have a corporate lawyer. No, especially if you have a corporate lawyer.  Do not let your corporate lawyer do your trademark lawyer’s work.  Would you let your dentist do your appendectomy?  The following is a story of trademark work gone wrong. (Arguably better than an appendectomy gone wrong, but still).

Perry Orlando files a trademark application for THE EMERALD CITY in 2008. He files on an “Intent to Use” basis. Everything goes fine, and the application is allowed, but Mr. Orlando still has to file is Statement of Use before the mark will register.

In 2009, and before he files the Statement of Use, Mr. Orlando assigns the trademark to Emerald Cities Collaborative, Inc. (The U.S. trademark lawyers, of course, can see the problem immediately). From the case, it looks like the assignment was probably drafted by a lawyer. The lawyer seems to have even maybe understood the problem and tried to get around it.  Mr. Orlando agreed to “assign unto ECC all right . . . in the Mark . . . . at such time as the Mark is registered at the PTO” (emphasis in original). Emerald Cities Collaborative…

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