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Saturday, 31 December 2011

A Trade Mark Riff on the "New Year"

With the New Year upon us, I got to thinking in a way that only an IP attorney could -- how protectable are the words "New Year" as a trade mark? In principle, there should be no reason why this combination of words should be treated differently from any other word combination. The fact that the term consists of two commonly used words, and that the term itself has a clear meaning with respect to the order of the months of the Gregorian calendar, should not disqualify the words from protection when used in circumstances far-removed from their core meaning.

Actually, it may not be so clear thar the term "new year" has such a single, clear meaning. Consider the Jewish Tractate "Rosh HaShanah" in the Babylonian Talmud, which begins as follows: "There are four New Year days, one for the ascension of Kings and the order of the holidays, a second for the tithing of cattle, a third signifying the New Year for counting the ordinary year, the Sabbatical year and the Jubilee year, and the fourth for the counting of trees and herbs" (this actually takes place on the 15th of the relevant Hebrew month). That said, this Kat assumes that in most traditions, be they secular or religious, there is a single "New Year". As such, the question remains: how has term fared on the trade mark registry?

Curiosity having gotten the best of me, this Kat performed a simple, feline-like search for the term "New Year" on the USPTO. The results are interesting. There are 166 marks that contain the words "New Year". This Kat then carried out a manual count and found that 112 out of the 166 reported marks are listed as "Dead". While I did not examine the reason why each of these 112 applications/registrations is now "Dead", my sense is that the main reason is that the term (or the composite mark of which it is a part) was found descriptive, and the applicant did not/could not provide sufficient evidence to overcome such a descriptiveness objection.

Thus, not suprisingly, in the United States register the mark NEW YEAR (serial no. 75282963) for "all alcoholic beverages and particularly including champagne, wine, liquor and liqueurs" is listed as Dead. So is the mark HAPPY NEW YEAR (serial no.75062570) for "artificial fireplace logs 2000". Marks of similar descriptiveness ilk, such as HAPPY NEW YEAR 2000, TIMES SQUARE NEW YEAR'S EVE BALL and THE NEW YEAR'S EVE BALL LOWERING CEREMONY AT TIMES SQUARE, can be found throughout the list of 166 marks.

On the other hand, the mark NEW YEAR, NEW CELEBRATION (reg. no. 2202280) is registered "for printed matter, namely, free-standing newspaper inserts containing third-party advertisements and coupons related to health and fitness". Even more interesting is the registration of the mark AMERICA'S NEW YEAR CELEBRATION (reg. no. 2956701) for "entertainment and educational services namely, organizing, promoting and staging of annual cultural events, including floral pageants, parades, concerns, equistratian presentations, [and] sporting events" (reg. no. 2956701).


The registrant here is Padsadena Tournament of Roses Association. Translating this for non-Americans, it means that the registrant is the body behind a famous float and flower-adorned parade, known as the Rose Bowl Parade, that has been become an iconic part of the New Year's holiday in America. If there is any event that is "America's New Year Celebration", it is the Rose Bowl parade. And yet ....

The fact nevertheless remains that the overwhelming number of applied-for marks containing the words ""New Year" are no longer registered. Minutes before this Kat runs out to celebrate New Year's Eve (in its generic sense), he wondered whether the results that he found regarding the mark on the USPTO database point to an interesting aspect of registrability.

Thus, under (at least) the U.S. system, generations of trade mark professionals have been taught that an arbitrary mark is inherently distinctive -- if it is removed from its core meaning. A popular example is the word "apple", which is generic with respect to the fruit by the same name, but inherently distinctive with respect to computer products and musical records. That computers and music have converged complicated the matter from the point of view of confusion, as witnessed over nearly two decades of litigation, but it does not change the basic point about the essence of an arbitrary mark. This Kat found 3036 marks on the USPTO containing the word APPLE; his first impression is that the "Live" marks far outnumber the "Dead" marks.

And so the question--why the difference between "apple", on the one hand, and "new year", on the other hand, both of them being arbitrary terms when not used in their core sense, with respect to their respective fates on the USPTO? It seems to this Kat that the difference can be explained by the nature of the core meaning conferred by each of the terms.

Beyond the core meaning for the term "apple" as a type of fruit, the only extensions that come to mind are in relation to health ("an apple a day keeps the doctor away") and seduction (think Adam and Eve). As for "new year", beyond its meaning as the beginning of the calendar year, a much wider variety of extensions is suggested. One thinks of "a new beginning", "renewal", "revelry", "American football and parades" -- the list goes on and on. As such, the range of possible meanings that can be connected to the term "new year" is much broader than that of the word "apple". When these additional possible associations are connected with the core meaning of the beginning of a new year, the potential scope of use of the term in a descriptive sense is much more extensive.


However each of you feels about the value of the term "new year" as a trade mark, one thing is for certain for this Kat, as well as all my fellow Kats: we wish you all the best for 2012.

More on the 2011 Rose Bowl Parade here (we hope).

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