Black Friday, Cyber Monday, & Trademark Law

GLO readers, did you take advantage of any Black Friday and Cyber Monday deals? Millions shop, billions have been spent, and businesses may be thinking of ways to use “Black Friday” and “Cyber Monday” to promote the sales that their companies will have on these days. The question is – When it comes to trademarks and potential infringement, should companies be worried about using these terms in their marketing?

Using catchy phrases and slogans can create a lasting image with customers and allows companies to create brand recognition and increase the potential for sales. Acquiring trademarks for a business’s intellectual property protects a business from copycats and provides legal remedies. Companies (some more than others) diligently patrol the use of their trademarks and pursue infringement not just for monetary damages, but so that they do not lose their trademark or its marketing power.

The short answer to whether companies should be worried about receiving a cease and desist letter or otherwise for using “Black Friday” or “Cyber Monday” in their marketing is: probably not. However, it is worthwhile to understand why this is, and when businesses do need to worry.

Why are “Black Friday” and “Cyber Monday” okay for businesses?

If a business had to avoid using “Black Friday” or “Cyber Monday” the way they evade using “Super Bowl” and “March Madness” in their advertisements, no one would be able to refer to their sale as the “Black Friday Sale”, or “Black Friday Deals”. However, it turns out that no one has control of these terms in the same broad way that other companies have over trademarks.

A search for “Black Friday” on the U.S. Trademark Database reveals 38 “Black Friday” trademarks or marks using “Black Friday” with another word or term (ex: Black Friday Store). The live marks for “Black Friday” include one for a beer, a computer game, and an individual in Cleveland, Ohio for advertising and marketing services.

These examples help demonstrate an important principle of trademark law— trademarks only cover the registered use of a specific good or service – meaning that unless someone uses Black Friday to market a beer, computer program, or advertising services, they are likely not going to run into any problems. A search for “Cyber Monday” turns up no trademark for the exact phrase, though there are several variations (ex: TGI Cyber Monday).

So, why has no one else registered Black Friday or Cyber Monday as a trademark?

Depending on who you ask, many say that “Black Friday” originated in Philadelphia as a phrase used to describe post-Thanksgiving traffic.  Over time, it developed into a colloquialism for retail services the day after Thanksgiving. It may seem like a great idea to register a trademark for “Black Friday” or “Cyber Monday” for everything you can think of so you have a monopoly on the terms. However, you cannot register any phrase you want as a trademark – there are specific rules you must follow.

The USPTO does not allow the registration of generic words or phrases. For instance, a company that makes computers cannot trademark the word “computer” to sell its goods. It is considered generic, and too likely to be used in the course of daily business for many businesses in the same industry. A business can use a generic term if it does not fall within the industry, though. For example, Apple Inc. is allowed to use “Apple” and the apple logo to sell computers because the word is not generic for the sale of computers. The word apple makes you think of the brand that sells computers instead of just the fruit, or instead of just computers.

Previously inventive terms can also become generic. If due to its popularity or significance, the brand’s trademark has become the generic name for, or synonymous with, a general class of product or service (usually against the intentions of the trademark’s holder) then the company may lose its trademark. Examples of companies that are constantly facing this issue are “Xerox”, “Band-Aid”, and “Kleenex”. The mark BLACK FRIDAY as registered in connection with beer avoids this issue because it is not a generic term for beer. “Black Friday” has become the generic term used for the day for sales after Thanksgiving, and “Cyber Monday” for online sales the following Monday. Therefore, companies may use these terms to promote their own sales on those days with little risk of trademark infringement – no one owns trademarks for that type of use, and likely no one can register the terms due to them being generic promotional terms.

Black Friday – not just in the United States

While we think of Thanksgiving as a holiday unique to the United States and Canada, it has spread globally, as has the awareness of Black Friday and Black Friday deals. Picking up on this, Hong Kong-based company Super Union Holdings Ltd. (“Super Union”) registered the trademark “Black Friday” in Germany for almost all goods and services. Super Union, not unlike the NFL and NCAA, diligently patrolled the use of its mark, and even more diligently enforced it. When other businesses used “Black Friday”, Super Union sent warnings, and several injunctions to stop using the term were issued. Eventually, companies filed cancellation requests against the registration. PayPal, itself not the target of any enforcement measures, decided to join the cancellation proceedings specifically to take a stand for the rights and interests of retail. One company that filed a complaint stated that “Black Friday” was a purely promotional term in widespread use around the world and well-known in Germany, and that its registration as a trademark was illegitimate in the first place.

In April 2018, the German Patent and Trademark Office (DPMA) finally declared the term free for all to use in commerce, signaling the end of Super Union’s trademark monopoly on “Black Friday” in Germany. DPMA considered that lack of distinctiveness, being that the term was generic, was enough to cancel the mark.

Conclusion

If this all makes you nervous about whether or not a word or term is a registered trademark or not, here is some advice: if you see the ® for a registered trademark or a ™ for a trademark in the process of being registered, you are being notified that you must not use this trademarked phrase without permission in any other business. The best place to be sure of the status of a phrase or name is the U.S. Patent and Trademark Office (USPTO) website, which anyone can access for free. As always, you should contact an attorney before you use a trademarked word or phrase in commerce to avoid any issues stemming from potential trademark infringement.

Happy shopping!

The Intersection of Trademarks and Art

Written by: Mari Kat Gavin

Art and intellectual property law intersect in many obvious ways—intellectual property is, after all, the protection of human creation. However, copyright normally gets a lot of the spotlight. There is art in trademark law, don’t get me wrong. Andy Warhol’s series on consumer products are some of the most well-known works of art incorporating brands, and additionally commenting on them. However, I find that I less often find incorporation of trademarks in art that aren’t a commentary on consumerist culture.

This month, I was fortunate enough to encounter such a piece at the VCU Institute of Contemporary Art. In the Declaration Exhibit, I found the piece Edifice and Mortar by Sonya Clark. Clark used the unusual mediums of brick, hair donated by local Richmond barbers, and a blue glass mirror. She created a rectangular shape out of bricks and then incorporated the blue mirror so as to represent a subverted American flag. She then imprinted a portion of the Declaration of Independence on the front and TRADEMARKS on the back.

Okay, I’m getting ahead of myself. The words imprinted onto the back of the “flag” was not what you would consider a modern day trademark. However, trademarks are the oldest form of intellectual property, some say back to Roman times. Artisans would stamp their “mark” into goods that they had a hand in producing. Consumers could see these branded goods and be sure of the quality of the good that they would receive, because trademarks are, at their essence, an indicator of source. The twist here, is that the bricks reveal stamps that say “El Schiavo”, Italian for “Slave”.

This piece successfully integrates the concept of trademark law and consumer protection into a beautiful commentary on society, which often ignores the monumental part that slaves played in building our nation. This is especially poignant in Richmond, the second largest slave importation city in the nation during the time of slavery. Looking back to the mediums used, the hair donated by local Richmond barbers is very likely hair from descendants of slaves. Kudos to Clark for creating such a thought-provoking piece.

West End law firm sweeps into N.C. with new attorney

Gavin Law Offices, which handles intellectual property matters for clients, earlier this month opened an outpost in Raleigh, North Carolina, after picking up attorney Alan Etkin. It’s the firm’s first office outside of Virginia.

Founder Pam Gavin said the expansion is similar to its January push into Charlottesville when longtime solo attorney Elva Mason Holland joined the fold.

“This is very much a similar story,” Gavin said of Etkin.

Etkin, who earned his law degree from Emory University, handles a variety of business law issues for closely held corporations.

“Alan and I worked together for years. He was in house with a big client,” Gavin said. “The company he was with was sold and he was doing his own thing and I said, ‘Why don’t we tackle this together?’”

Gavin also liked the idea of having an office in Raleigh to tap into that area’s concentration of tech firms and startups, a ripe environment for the firm’s bread-and-butter IP practice.

“It’s a great market for tech and intellectual property,” she said.

The firm, founded about 15 years ago after Gavin’s stints at McGuireWoods and Reed Smith, now has an attorney headcount of seven.

Gavin said she’ll keep her eye out for future growth through similar deals with attorneys.

“I’m always plotting and planning,” she said. “I’m just going to continue to grow.”

Click here for the full article on Richmond BizSense

Gavin Law Offices expands into Charlottesville

A Richmond law firm that boasts clients in the entertainment industry has expanded its practice westward.

Gavin Law Office, which was founded locally in 2002, last month opened an office in Charlottesville.

The expansion was prompted by the addition of Elva Mason Holland, a Charlottesville attorney who had a longtime solo practice before joining Gavin.

Firm founder Pam Gavin said she’s had her eye on Holland for years.

“I’ve been trying to get her to work with me forever,” Gavin said. “She’s been solo. She needs more depth to the bench and I’m always interested in growing.”

Gavin said her firm’s practice and Holland’s book of business fit nicely together. Gavin Law represents musicians and a range of businesses, from startups up to large companies, in intellectual property matters. Holland represents talent in the entertainment business.

The new addition brings Gavin’s attorney headcount to six. Its local office is in Henrico County at 2229 Pump Road.

Holland has her bachelor’s and law degrees from UVA.

Gavin, also a UVA grad, began her career in bank marketing, before going back to law school at William & Mary. She started her own firm in 2004 after stints at McGuireWoods and Reed Smith.

Gavin has expanded the firm previously, including by adding a solo practioner in Bedford years back, before that attorney in that office decided to go back out on his own. She said this latest stop in Charlottesville won’t be the firm’s last.

“I’m always planning and plotting,” she said. “Continued expansion is on the horizon.”

Click here to read the full story in Richmond BizSense