When is a trademark a trademark?

I spend a good deal of my time explaining trademarks. One of the major things I discuss is the difference between a common law trademark and a registered trademark. Most people don’t understand that a trademark is all about use, and while registration is great—and highly encouraged for most—it isn’t everything, and in fact use is a prerequisite to obtaining a registration. People are usually surprised to learn that once you use a mark in commerce, you have rights in it—usually.

This brings me to the latest trademark that has all the trademark attorneys abuzz. That is, a new company (admittedly I know little about them) known as Brandless. This business is banking its success on standing out by being plain. Essentially, its trademark is to be distinctive by being non-distinctive (or something like that).

The business has filed a trademark application for its look and is currently using a ™ with the label. And they are actually claiming the ™ that is placed in the right hand corner of a box as a portion of their trademark!!

Here’s the description from the application: “the color(s) white is/are claimed as a feature of the mark. The mark consists of a white rectangle with rounded edges. To the outside upper right hand corner of said rectangle reads the terms TM. The broken or dotted lines are not claimed as part of the mark but designate the outer edge or perimeter of the rectangle that forms the mark. The color white is claimed as a feature of the mark.”

What!?!?!? This means that the business is claiming the use of a white rectangle, without a set size, that uses a ™ in the upper right hand corner.

I’m spinning.

So back to when a trademark is a trademark.

For those of you who don’t know the difference between a ™ and an ®, the first one is a signifier that the entity promoting its goods or services believes it has trademark rights in its product. Businesses typically use the ™ if they aren’t planning to use the mark for long, can’t obtain registration, or are trying to create ownership first through use before filing for a registration.

Here’s the thing, using the ™ means very little, if anything at all. Again, the business is essentially saying to the public, “Hey, we think we have rights here. Just to let you know.” If another business uses a confusingly similar mark, and the first business attempts to enforce its claimed mark, it would have to prove that it has rights in the mark. Simply using the ™ doesn’t make it so.

On the other hand, the ® creates a presumption of rights. To obtain registration, the business has to go through a process by which a trademark attorney examines the mark and essentially certifies that the business has rights in it (or doesn’t if the application is rejected). So when a business uses the ®, it is telling you, “Hey, we have rights, so don’t mess with us.” And if that business were to enforce its rights against another business, the second business would have the burden of proving that the first does not have rights, which is very challenging.

The problem with the ™ is anyone can use it. Brandless is a great example–though it appears they are doing something different with their mark. I have a very hard time seeing how that business ever gets actual registered rights in its claimed mark. The labels are generic. They are meant to be generic. Generic uses have to be reserved for all to use. They cannot be assigned to just one business. I honestly don’t get it.

(Maybe Brandless is trying to create marketing buzz by claiming trademark rights in something they can’t get rights in. I don’t know.)

And the problem is, generic uses can never become distinctive. I couldn’t open a business that sells computers, call it the COMPUTER COMPANY, use it for a long time, and eventually own COMPUTER COMPANY. It doesn’t work like that. So, too, a company that sells house supplies, or food, or whatever else Brandless is selling, can’t package it with the simplest of packaging and generic word usage, like generic grocery store products, and claim they own that style. They may be known as “that generic looking company,” but they can’t own the concept.

But, as may be argued, its not the plain look, but the plain look with the ™. The use of the ™ is sort of tongue-in-cheek. They are using the ™ (a distinctiveness signifier) for something that is clearly not distinctive. That’s the business’s trademark. But using a ™ can’t itself be a source identifier (at least I don’t think it can); its the identifier that tells the world that the business using it thinks its mark is a source identifier (this is getting really meta). What will Brandless do if they get a registration? Have the ® placed to the outer corner of the ™?

Trademarks are all about being distinctive. If you’re not distinctive, then no rights for you. No matter how clever, creative, or counterintuitive a business wants to be. A mark must be distinctive for the business to have rights in it.

So when you see that ™, remember, it doesn’t necessarily mean a whole lot. At least not what you probably thought it meant. And when you read an article about how some business or person has “trademarked” some phrase or look, and you think “how could they own that?” Think twice about what the  really means.

To be clear, using BRANDLESS as a trademark is creative in my opinion, and the concept in general is clever. But claiming that a generic looking label with generic word usage and a ™ in the corner is distinctive. I’m not on board with that. I will be shocked if the mark is registered.