Teachers, Apples and a Governor

The Maryland State Education Association (MSEA) filed suit against Governor Larry Hogan last month over his use of an apple with his campaign materials. Apparently the MSEA has a trademark registration for the outline of an apple in association with political services related to education. The registration is actually owned by the Montgomery County Education Association (MCEA), but it appears from what I’ve read that the MSEA filed suit. They probably have a partnership/licensing agreement with the MCEA.

So from what I can gather (I haven’t read the complaint or opinion), Hogan is using an apple with some of his campaign materials as a way to signal, “hey, I’m good for teachers”. The MSEA filed suit claiming that they have the sole right to use the mark in association with political services and teachers, and that by Hogan using the mark he is confusing others into thinking that the MSEA supports him or that there is some sort of association between them. (Again, I haven’t read the complaint, so this is conjecture, but I feel confident in what the MSEA is likely claiming).

Most recently, a Judge in Montgomery County denied a request for an injunction, which would have required Hogan stop using an apple with his campaign materials. Essentially, because of the widespread association between teachers and apples, even though the MSEA has registered trademark, the judge does not think the mark is distinctive enough to confer rights to the MSEA. (Again, conjecture—haven’t read the complaint.)

At first blush this doesn’t seem like that big of deal for the MSEA/MCEA. Hogan uses the apple, the teacher’s union makes some sort of statement that they don’t associate with or endorse Hogan, and, hopefully (for their sake), that’s the end of it and for the next election they go back to using apples to associate with the candidates they support.

But, if Hogan is successful in defending this suit to the end, any future candidate that is not endorsed by the teacher’s union, but wants to associate themselves with teachers, will be able to use an apple in campaign materials. That’s a problem for the MSEA/MCEA. Effectively, their trademark would be worthless.

(Apparently, a few years ago this issue came up with then-candidate Doug Gansler. He gave in and settled with the teacher’s union. )

This is a great example of an entity spending time and money on cultivating a trademark which results in rights that it will have a very hard time enforcing. Essentially, a person or business obtains trademark rights by using a mark that is distinctive to them. Some businesses choose a mark that is distinctive from the market and they immediately obtain rights, and other businesses choose a mark that isn’t too distinctive but through years of use and recognition by consumers it becomes distinctive (known as acquired distinctiveness).

The problem with acquired distinctiveness is, sometimes, it never happens. You might work for years attempting to create an association between your mark, your goods/services, and yourself only to find out that the mark you chose is too descriptive or too ubiquitous to ever be associated with only you. This, I believe, is the case here.

The association between apples and teachers (all teachers, not just MSEA or MCEA) is well known and the MSEA/MCEA doesn’t get to claim the sole right to use apples in association with teachers, even if they have a registered trademark for it. For the MSEA/MCEA a similar but more distinctive mark would probably be fine. Use an apple with “MSEA” in the middle of it. Hogan certainly couldn’t do that. Or come up with an altogether different and more distinctive logo/slogan.

A trademark registration is not (or shouldn’t be) the end-all for a business. When seeking a trademark, don’t only focus on what you can get registered and what you can “own”, but, rather, focus on what is distinctive and what will be enforceable. There’s no sense in spending time and money cultivating a mark if to consumer’s it doesn’t signal that the goods/services come from you.