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Will USPTO grant a new trademark that includes quotation marks?

News and Notes Focused on the 3 Public Faces of IP Law

  • Brand Image Protection - Trademark Law
  • Visual Image Protection - Copyright Law
  • Personal Image Protection - Right of Publicity Law

The Image Protection Law blog has been created in order to share stories and information on the legal aspects of: 1) the marketplace reputation of a company or product captured in its trademark, 2) published or publicly-displayed artwork, photography, and any created visual design, and 3) use of a person's photograph or likeness for product promotion or other commercial purposes.

The "IP3" share at least one thing in common: Image is everything. In these posts let's look at what that means in the realm of intellectual property in the news, but let's also be prepared to explore if there's something more beyond "everything." Don't forget, the intellectual in "intellectual property" doesn't mean smart or brainy, although by nature true creators often are. The word is used to refer to any creation, i.e., a "product of the mind." While this blog will be regularly updated, you are encouraged to share your thoughts on these posts.

Off-White is a popular Italian company affiliated with designer Virgil Abloh, creator of the line MARKERAD in collaboration with IKEA. MARKERAD items became available for sale at IKEA on Nov. 1. Some of the branded products at IKEA contain Abloh's signature use of quotation marks such as "TEMPORARY" on a wall clock and "WET GRASS" on a green doormat.

The Fashion Law reports that in May, Off-White filed an application for a trademark for "Product Bag" - including both the phrase and the quotation marks around them - for use on clothing. The Fashion Law speculates whether Off-White will try to expand rights to marks containing quotation marks around other words should this initial application be successful.

The author notes that trademarks have been registered before that contain quotation marks as well as for "stylized [quotation] marks themselves." Because Off-White uses quotation marks so widely on its products, it might try to register a very broad mark using placeholder characters with quotation marks like "xxxxx" says The Fashion Law, which the USPTO would likely reject as a phantom mark - one that could generate too many variations and meanings.

As explained in the Trademark Manual of Examining Procedure, the problem with a phantom mark is that it violates the requirement that a trademark application can only seek to register one mark. An application with variable characters can generate many potential versions of the mark, creating the further problem that the public may not have reasonable notice of the registrant's property rights.

The Manual clarifies that a mark "with a changeable element may be registrable if the element is limited in terms of the number of possible variations ..."

The Manual also provides insight into the use of punctuation in a mark. While it says that punctuation "generally does not significantly alter the commercial impression of the mark" beyond being merely descriptive, "in rare cases" punctuation can change the commercial impression of the proposed mark. For example, notes the Manual, there is a transformation of MOVE IT when changed to MOVE IT!

We will watch this application with interest and provide updates to our readers.

(NOTE: The Fashion Law piece refers to the IKEA-Abloh product line as MAKERAD, but on the IKEA site the company uses MARKERAD.)

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