by Tommy Wang
The Trademark Trial and Appeal Board (TTAB) recently issued a decision that reminds all trademark owners it is crucial to properly use trademarks on their own websites to reinforce trademark importance. This decision emphasizes the importance of educating the individuals in
an organization as to proper trademark use and reviewing all promotional materials to guarantee consistent use.
The decision of Wet Dog Media, Inc. v. Rodale, Inc. is rather expected: basically the Board found that the applied-for trademark, “WOMEN’S RUNNING,” was too descriptive of the subject services to serve as a trademark. What is remarkable, however, is the Applicant’s own website was the critical evidence cited in defeating its claim of trademark rights and in ruling that “WOMEN’S RUNNING” was not used in a trademark manner. Particularly, the Board commented that the Applicant’s use of “WOMEN’S RUNNING” on its website was descriptive, and not used as a trademark, because the words were “used alongside, in the same font, [as] other website ‘categories’” of information. At first, the Examining Attorney allowed the Applicant’s claim of acquired distinctiveness in the descriptive mark but, after opposition by a competitor, the Applicant’s own website came under inspection and was used as the source to defeat its claim of trademark rights. The Board studied the Applicant’s website and found that “WOMEN’S RUNNING” was used in the same fashion and font as other descriptive headers such as “NUTRITION/WEIGHT LOSS,” “SITE
MAP,” and “BEGINNERS.”
The decision serves as an important lesson; when one is attempting to obtain trademark protection, all promotional materials should support a claim of trademark rights. Simply put, it is important to use a trademark in a conspicuous, distinctive manner, in a different stylization, font, and/or color than other wording on one’s website, to ensure that viewers see the mark as indicating the source of the goods/services being promoted. It is also effective to use the ™ or ® in the vicinity of the mark, when appropriate.
If your trademark is appropriately displayed on your website and in other marketing materials, it can help strengthen your rights in the mark
and cultivate the image that is paramount to the value of your trademark. Ultimately, although the Applicant in Wet Dog Media, Inc. v. Rodale, Inc. might not have been able to obtain a trademark registration for “WOMEN’S RUNNING,” it should not have been the Applicant’s own website that defeated its validity of trademark rights.
Tommy Wang is a registered patent attorney at Yang & Wang, P.C., a law firm he co-founded with his partner Elizabeth Yang. He currently practices Intellectual Property Law, including Patent, Trademark, and Copyright, and Business Law in Southern California and East Asia. His patent practice specializes in securing patents in the medical device, biochemical sciences and life sciences field.