Mike Drumm

What are Descriptive Trademarks?

So you’ve just been told that you may not be able to register your trademark because it is “descriptive.” What does that even mean? It’s my mark, why am I not allowed to register it?

The best place to start is with a quick overview of trademarks. A trademark can be classified into five different categories based on their distinctiveness: (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; and (5) fanciful. Generic marks lack the means of identifying the source of a particular good, and therefore cannot be protected as a trademark (e.g. trying to trademark the name “PEN” for selling pens). Moving up the list, you encounter suggestive (e.g. SPEEDIBAKE for frozen dough), arbitrary (e.g. APPLE for computers), and fanciful (e.g. CLOROX for bleach) marks. These three types are considered inherently distinctive and can be registered as a trademark assuming there isn’t a confusingly similar trademark already out there (you’re going to have a tough time getting a trademark for Florox, sorry).

Wait, but you skipped over descriptive marks! Don’t worry: a descriptive mark “describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services.” Descriptive marks are considered the weakest of protectable marks. But they can still be registered as long as a descriptive mark is capable of identifying the source of the goods or services. Some descriptive marks have a secondary meaning and can be registered right away, while others might have to be in use long enough for the public to develop an association with the mark and identify it with a specific product or service.

The United States Patent and Trademark Office (USPTO) maintains two registers for trademarks. The first is the Principal Register – this is the best of the best. If you’ve been using a descriptive trademark for at least five consecutive years, you can try to get that trademark on the Principal Register by arguing the mark has a secondary meaning or “acquired distinctiveness.” A good example is Bank of America – the name is descriptive in nature (if you were new to the world, it would probably sound like it could describe any bank that was in America), but it has been around so long that it has acquired distinctiveness; everyone knows which bank it refers to.  

The other register the USPTO maintains is the Supplemental Register. If you are unable to get a descriptive mark on the Principal Register, you can register it on the Supplemental Register.  The USPTO maintains this second register for trademarks that are capable of distinguishing an applicant’s goods or services, but currently don’t distinguish them enough to warrant registration on the Principal Register.  If a descriptive mark has been in use for less than five years and does not have sufficient evidence to show acquired distinctiveness, it can only be registered on the Supplemental Register.  

While the Supplemental Register doesn’t offer all the same protections as the Principal Register, pursuing a trademark registration here is still worthwhile and will afford your mark at least some of the important perks that marks on the Principal Register receive, such as:

• Nationwide notice to third parties;
• Permission to use the registered trademark symbol (®);
• It may allow you to object to future trademark applications for similar marks based on the likelihood of confusion with your mark; and
• The option to bring an action concerning the mark in the federal court.

However, you do lose some advantages by only being on the Supplemental Register as opposed to the Principal Register, including:

• You don’t have a presumption of ownership, validity or exclusivity of the mark;
• You can’t record the mark the with U.S. Customs to prevent importation of infringing goods;
• The mark doesn’t become incontestable;
• You do not benefit from a constructive use date (i.e. you cannot rely on an earlier filing date); and
• The mark isn’t published for opposition.

While this certainly isn’t an ideal scenario for someone looking to register their mark, it is usually the best course of action for a mark that is denied principal registration due to its descriptiveness. After all, if that mark later gains recognition, you can apply again to get it registered on the Principal Register.

by Mike Drumm

Super Bowl Trademark and Copyright Issues Explained

Can I Show the Super Bowl at my Brewery?

Sounds simple enough right? Just wipe down the bar, turn on the TV, and watch your beloved craft patrons flow in while your taps flow out. Like most things in life, it isn’t that simple and there are legal issues that may come into play (pun intended).

Copyright Issues?

The NFL owns the copyright to the Super Bowl. Think about it - how many times have you heard or read “Any other use of this telecast or any pictures, descriptions, or accounts of the game without the NFL's consent is prohibited” when watching a football game? So many times that it’s permanently engraved into your brain? Yeah, us to.

Here’s a quick refresher on copyright law. The Copyright Act grants five rights to a copyright owner:

1. the right to reproduce the copyrighted work;
2. the right to prepare derivative (spin-off) works based upon the work;
3. the right to distribute copies of the work to the public;
4. the right to perform the copyrighted work publicly; and
5. the right to display the copyrighted work publicly.

Like playing music in your taproom (check out our blog on that here), we are concerned with number 4, the right to perform the work (the Super Bowl in this case) publicly.

You must have the legal right to broadcast the game to the public.  One way to get that right is to use a commercial television service such as a DirecTV or Xfinity business account.  The key here is that it’s a “business” account.  You can’t use your personal DirecTV login to show the game at the brewery.  The business accounts typically cost more than consumer accounts because they include the licenses needed to publicly show the programming. The same is true for a large number of streaming services out there – you need to have a specific type of account authorizing you to stream its content to the public.

What if you don’t have one of these business accounts? Thankfully, there is another way to legally show the game.  And it’s old school. Remember in the before time when you had rabbit ears on the TV to watch any one of the four broadcast channels? If you don’t, we need to check your ID. Well, copyright law allows you to broadcast TV from an antenna in your brewery (or other business) so long as you meet these requirements:

• Your brewery is no larger than 3,750 square feet;
• You aren’t requiring customers to pay to access the space where the game is being shown (i.e. a cover charge);
• You don’t show it on more than 4 total TVs total (and each TV airing the game is in a different room);
• The TV screens airing the game are 55” or smaller; and
• You aren’t playing the audio on more than 6 total loudspeakers (and there aren’t more than 4 loudspeakers broadcasting the game in a single room)

We know that sounds pretty bizarre, but those are the rules. If you’re a larger establishment, you may be concerned about the square footage requirement. Don’t worry though, if we dive deeper there is a dream within a dream – I mean an exception within an exception, sorry. Even if your brewery is larger than 3,750 square feet, you can still avoid copyright infringement if you confine the viewing area to a space that is less than that particular square footage. For example, if you have multiple tap rooms in your brewery, only broadcast the game in a single room that doesn’t exceed the maximum square footage requirement.

Trademark Issues?

Just like you’ve trademarked the name of your favorite brew (if you haven’t, drop us a line), the NFL has trademarked the name of its favorite game. And like most corporate giants, the NFL can be pretty sensitive about the unauthorized use of its trademarks. So, establishments advertising themselves as a place to watch the “Super Bowl” should proceed with caution.

Under trademark law, a brewery could use another company’s registered trademark if: 1) the use does not suggest a relationship between the advertiser (brewery) and the trademark owner; and 2) the trademarked goods or services cannot be readily identified without using the trademark.  This is called “nominative fair use.”  The first part isn’t very difficult to achieve. Using a phrase like “come watch the Super Bowl” probably doesn’t suggest a relationship, while “get your Super Bowl beers at Brewery X” is more likely to imply an association or sponsorship. The second part of nominative fair use is harder to navigate in this case, because you can probably find a way to advertise that you are showing the Super Bowl without actually using the words “Super Bowl.”  Most Americans will know what you mean when you say, “come watch the Big Game with us!”

To be safe, just try to avoid using the NFL’s trademark.  Do something clever like “come watch expensive commercials and an American Football game this Saturday” or some other similar phrasing.  You can call it a “Football Watch Party,” or “The Sports Game Watch Party,” or “Game of Touchdowns” we don’t care. Just don’t use the term “Super Bowl.”

So get your favorite beer, watch some commercials and cheer for your team. GO SPORTS!

by Mike Drumm