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Sunday, 25 August 2013

Questionable Trade Marks: Squeezing Blood from the USPTO?

A Katfriend has sent the IP Kat a tip about a US-based law firm that specializes in debt collections.  That firm, Cook Collections Attorneys, uses the mark squeezebloodfromturnip.com, a reference, presumably, to its level of success. 

Can you squeeze blood 
from a turnip? At least one
debt collector thinks so
Says our tipster, who will remain anonymous: “Apparently in hopes of attracting clients yearning to go beyond what is reasonable to collect, collections attorney David Cook trade marked the term ‘SqueezeBloodFromTurnip.com.’ He obtained the trade mark in 2007 by claiming to the U.S. Patent and Trademark Office that he was going to use the phrase for ‘Clothing, namely, t-shirts,’ but he instead mostly uses it for his firm's website, email addresses and stationary.  I am among many who find a collection attorney's use of the phrase SqueezeBloodFromTurnip.com to be ‘threatening, offensive, disparaging, and immoral or scandalous.’”

The Lanham Act, which codifies US trade mark law, sets forth the various reasons why a mark will not be accepted for trade mark protection, including a mark which "consists of or comprises immoral, deceptive, or scandalous matter."

A debt collection attorney’s use of the mark “SqueezeBloodFromTurnip” in connection with debt collection practices may seem unsavory, and, perhaps, disrespectful to the debtors, who are not necessarily bad apples (pun intended).  However, this Kat doesn’t think it rises to the level of immoral, deceptive or scandalous.  Rather, this Kat views the mark more as a form of marketing puffery – proclaiming to potential clients that Cook can recover assets that the debtor would otherwise have been unable to pay.  But, as the saying goes, you truly cannot squeeze blood from a turnip, try as Cook might.  As long as Cook adheres to the legal obligations of debt collectors pursuant to the US Fair Debt Collection Practices Act and applicable state laws and regulations, Cook likely will not be able to achieve a better result than another equally qualified and experienced collection attorney. 
Mott's For Tots but
not yet for babies
What this Kat found more intriguing than Mr Cook's use of SqueezeBloodFromTurnip.com is that Cook has apparently secured registered trade marks in the marks Cook, Cook Collection Attorneys and Cook Legal Services .  In the US, a mark based primarily on a common surname cannot be trade marked unless it has achieved secondary meaning in the minds of consumers (think: McDonald’s and Heinz).  Cook is a relatively common surname in the US.  Indeed, it is the 60th most common surname in the country.  As such, it is surprising that the USPTO allowed the Cook marks to be registered as trade marks, especially since the USPTO recently rejected an application by Mott’s, arguably one of the most well-known applesauce and apple juice brands in the US.  In that case, Mott’s applied for a trade mark for use in connection with baby foods, a product category in which it had not previously sold products.  Despite the high consumer recognition of the Mott’s brand name in connection with apple-based products, the USPTO rejected the baby food application on the grounds that Mott’s is primarily surname, and "not a rare" one.  Thus it was ineligible to be registered as a trademark in the absence of acquired distinctiveness.  [Notes Merpel, Mott doesn't even crack the top 1000 most common US surnames.]  Most likely, the USPTO decision (which was subsequently upheld by the USPTO's Trademark Trial and Appeal Board) was due to the fact that Mott’s had filed its baby food trade mark application on an intent-to-use basis prior to actually using the mark in commerce.  Mott’s was thus unable to show acquired distinctiveness in the category of baby foods, and it failed to link the application to its distinctive and established trade marks, including a registered Mott's For Tots mark, in other food and beverage categories. 
In contrast, Cook appears to have filed his trade mark applications for Cook, Cook Collection Attorneys and Cook Legal Services after he had already begun using those marks in commerce.  He submitted evidence of his use (e.g. advertisements for his legal services under the name Cook Collection Attorneys) to the USPTO, and (as far as this Kat can tell) the USPTO appears to have accepted this evidence without further investigation.  Still, given the popularity of the surname Cook, it seems odd that Cook was so easily able to register trade marks featuring his surname.  In addition, Cook Collection Attorneys and Cook Legal Services seemingly also could have been challenged because the marks are merely descriptive of the services in connection with which the mark is used.  The USPTO often investigates or requests that an applicant submit further evidence of acquired distinctiveness in connection with applications claiming exclusive use of a relatively weak, descriptive or potentially unregistrable mark.  Would any readers care to share their thoughts on why the USPTO might not have questioned or rejected Cook’s applications during its review period of these marks?

The Kitchen Cat here and here
Merpel does not suggest putting the words Cook and Cat together in a single search query...

1 comment:

Anonymous said...

Cook has an ordinary dictionary meaning as well as a surname significance. So is it primarily merely a surname? Maybe the PTO examining attorney thought not.

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