By Keely Herrick, IP Attorney, Parks Wood LLC
With the recent opening of a store called Trademark in New York City featuring clothing by Pookie and Louisa Burch, the designers now have an opportunity to register the word “Trademark” as a trademark. While this may seem counter-intuitive, the U.S. Patent and Trademark Office has allowed an entire family of trademark applications filed by the sisters for the word TRADEMARK covering a wide range of goods, from candles to clothing. The introduction of the brand opens up an interesting opportunity to revisit what allows a word to function as a trademark.
A Trademark By Any Other Name…
Primarily, the purpose of a trademark is to serve as a source identifier. When you see the terms CHANEL, DKNY, or CALVIN KLEIN placed on clothing and apparel, you instantly are aware that a particular company and entity stands behind these products, and you associate a certain standard of quality and customer service with the source of the products. Furthermore, you make your purchasing decision at least in part based upon your opinion of the source of the products.
Generic terms cannot function as trademarks. Therefore, “hat” cannot be a trademark for hats, and “shoe” cannot be a trademark for shoes. If someone was allowed to claim exclusive rights in all uses of either of these terms for the respective products, the rest of the industry would be at a disadvantage as it would be unable to use a necessary term in referring to the products. Does it follow, then, that “trademark” cannot be protectable as a trademark? Not necessarily.
Apples and Oranges (and Trademarks)
Consider the term APPLE, a well-known trademark for computers and related products. This is what is known as an arbitrary trademark, where a term that has a defined, generic use in relation to one type of products (here, apples, and apple-flavored foods) can function as a trademark for goods which are unrelated to the known definition of the term. Similarly, TRADEMARK has a defined use as a source-identifier: a symbol, word, or phrase established by use as representing a company or product. However, TRADEMARK is not a defined item of clothing like a shoe or a hat.
If the Burch sisters obtain a trademark registration for the term TRADEMARK for use in connection with clothing, does this mean that all other fashion labels have to remove the term TRADEMARK from their labels and hangtags? Is Louis Vuitton no longer allowed to refer to its LOUIS VUITTON trademark? Of course not. The term will still be available for others to use in a generic sense, and it can be included in registrations obtained by others, such as a current registration for a design mark including the terms METRO KIDS COMPANY EST. 1989 TRADEMARK, owned by Parque Industrial Taveiro for use with clothing. In that registration, the owner is using TRADEMARK in a generic sense, and it had to disclaim any claim of exclusivity to the term outside of the specific design as registered.
Alas, poor TRADEMARK…
What, then, do the Burch sisters gain from registering TRADEMARK as a trademark? Essentially, no other company should be able to refer to their clothing and apparel line as TRADEMARK, alone, without any other additional terms. While the term TRADEMARK can be included in other entities’ marks, as described above, it shouldn’t be the dominant portion of the mark visually. As a practical matter, even though the applications cover the mark in block letters, they would have the greatest chances of success in objecting to use of the term TRADEMARK in a stylization similar to the block logo currently in use at their store.
The step-daughters of Tory Burch were apparently inspired by the concept of creating a “signature look” or a trademark style for their clients in developing the brand name. Accordingly, this mark is arguably in the suggestive category of trademarks in that it indicates a particular quality of the clothing, that it will help the wearer to stand out. It will be interesting to see how the TRADEMARK trademark develops over time, and it’s another example of the intricate study of language that makes intellectual property such a fascinating area of law, especially for former English majors.