In 2013, Pookie and Louisa Burch launched a fashion brand, through their company 21st Century Survival, under the name TRADEMARK. That’s the word TRADEMARK, being used as a trade mark.
A website selling the brand’s accessories (shopspring.com) explains: "Trademark is built around signature essentials designed to be worn as one’s own trademark".
The logo version of 21st Century Survival's TRADEMARK mark
21st Century Survival also sought to register TRADEMARK as a trade mark in the US and elsewhere in word and logo form. So who owns the TRADEMARK mark, if anyone?
The United States
In the US, 21st Century Survival has registered TRADEMARK as a word mark in classes 14, 18, 25 and 35, without any objection as to its registrability.
In fact, 21st Century Survival is far from the first to register TRADEMARK as a trade mark in the US. The earliest registration for the plain word TRADEMARK dates back to 1994 (registration number 1,867,548 by Bell Microproducts Inc in class 9).
The biggest hurdle to registration appears to be overcoming objections based on earlier applications and registrations for or incorporating TRADEMARK. 21st Century Survival’s application to register TRADEMARK in class 3 was initially suspended due to the existence of a prior application for TRADEMARK SERUM for the same class (serial number 85,388,056).
Other registered TRADEMARK marks include:
- TRADE MARK BURGER (registration number 5,081,492) in class 30 (for hamburger sandwiches and other goods) and class 43; and
- BEER IS MY TRADEMARK (registration number 5,036,570) in class 45 (for social networking events in the field of beer and other related services).
The registrations for TRADE MARK BURGER and BEER IS MY TRADEMARK both include disclaimers, but in relation to BURGER and BEER, not TRADEMARK.
US registration no. 5,081,492
Some applications featuring TRADEMARK have been refused. An application to register T®ADEMA®K in class 45 (serial number 85,629,103) was refused on the basis of the mark being merely descriptive of the services covered - understandable, given that they were "Legal services, namely, preparation of application for trademark registration".
US application, serial number 85,629,1031
The ultimate test of strength for a trade mark registration is whether it can be used to restrain others from using the same or a similar mark.
The word “trademark” has long-standing use as a descriptive term not necessarily meaning trade mark in the legal sense (for example, “Michael Jackson’s trademark glove”) and generically to refer to trade marks (“the well-known GUCCI trademark”).
It seems that it was 21st Century Survival’s intention to take advantage of this common use of the word “trademark”. In an interview in 2013, Pookie said the TRADEMARK brand “… was inspired by the idea of a signature look -- your trademark sweater, or your trademark shoes”.
So, would a reference to “Michael Jackson’s trademark glove” infringe 21st Century Survival’s class 25 registration? No. In these circumstances, there should be a fair use defence available insofar as the reference is to the single glove commonly worn by Michael Jackson (which resulted in the public identifying the wearing of the glove with him).
However, the position may be less clear when the word TRADEMARK is used by another brand owner. For example, if the words GUCCI TRADEMARK were applied to an item of clothing would this constitute use of TRADEMARK as a trade mark or would a fair use defence be available? Even if it is use as a trade mark, it is unlikely that consumers would be likely to be confused.
Europe
In Europe, the position is clearer. The EUIPO rejected 21st Century Survival’s application to register the TRADEMARK mark in various classes, on the basis that the mark was not inherently distinctive and that the mark was not capable of indicating the origin of the goods or services.
Various trade marks are registered with the EUIPO which include the word TRADEMARK, such as: TRADEMARK EXPLORER (classes 35 and 38); NEW ENGLAND TRADEMARK (in class 25 for clothing, footwear and headgear); and TRADEMARK FACTORY (in class 45 for legal services, namely the preparation of applications for trademark registration).
However, none of the registrations comprises the word TRADEMARK by itself.
Other territories – the United Arab Emirates
In other countries, there are statutory restrictions on registering words such as TRADEMARK as a trade mark or as part of a trade mark.
For example, in the UAE, the Trade Mark Law prohibits the registration of any trade mark containing the words ‘patent’ or ‘copyright’ as well as ‘any words or expressions resembling them’. Although the word TRADEMARK is not specifically listed in the Trade Mark Law, the wording of the relevant provision is sufficiently broad to mean that an application for a mark that comprises or includes the word TRADEMARK is likely to be refused.
Rob Deans is a member of the IP Outer Borders Team and a partner of Clyde & Co LLP in the UAE
Janet Satterthwaite is a member of the IP Outer Borders Team and a partner of Potomac Law Group, PLLC in the US
Issue 075
