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!

Trails & Shores

 

Meet Gavin Law Offices Client: Meade Fitzgerald, Owner of Trails & Shores.

Trails & Shores is an outdoor-themed apparel company established in 2016. They are a team of outdoor enthusiasts with professional experience in the design, print, and apparel industry.

Like many business owners of creative products and services, Trails & Shores works closely with the Gavin Law Offices team for their intellectual property legal needs, specifically for their copyright and trademarking. In asking Meade why he chose to work with Gavin, he said, “Gavin really cares about who they are serving. Gavin found a way to protect my marks in a way that I had never thought of. It has been a learning experience for me, but they have taught me everything I need to know along the way as my business has continued to grow. I would highly recommend Gavin Law Offices to other small businesses and entrepreneurs, especially in the creative fields, to handle any and all intellectual property and business related legal services.”

Idea-Expression Pumpkin Contest

 

Happy October, friends of Gavin Law!  This month we want to educate you guys about something near and dear… to the heart of copyright law- the idea-expression dichotomy!  I see your eyes have glazed over.  Keep reading, there are pumpkins ahead, and a prize!

This Halloween, it’s likely that you and your friends and/or family will be carving pumpkins.  Maybe you are a very crafty person and are able to carve an elaborate parody of a movie that came out this year.  Maybe, like me, you’re going to stick with a modest challenge of a black cat or a spider.  Or maybe, you’ll go for the classic, a scary pumpkin face.  In copyright law, the idea of a cat, or a spider, or a face, cannot by itself be protected.  However, when the carver expresses their version of this idea onto the pumpkin, that design can be protected. 

The main concept to take away here is really that you cannot protect ideas, but rather how you express those ideas in a tangible way.  The reason for this is because humans are fascinating and can interpret one idea in millions of different ways.  If you want to write a story about the idea an orphan who saves the world, you could end up with Harry Potter or Star Wars.  

For Halloween, we are going to challenge you.  Our IDEA- the classic pumpkin face.  Give us your goofiest, most creative, scariest pumpkin and you will have the chance to win a $25.00 Amazon gift card.  That should buy you enough candy to restock your house after the trick or treaters come by.  We at GLO will vote on our favorite pumpkin and get back to you.  Send us those pictures!  Or ask us more about copyright law, if you want. 

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.

Gavin Networking in Scott’s Addition

Gavin Law Offices would like to thank Dominion Payroll, one of our trusted vendors, for inviting us to the SpeakUp 5K rally. Mari Kat and Katie had a BLAST supporting this local worthwhile cause. We firmly believe in the mission of the SpeakUp 5k/CKG Foundation to cultivate awareness and understanding of teenage depression and anxiety.

As event guests, we were also able to attend the soft open of the brilliant new Tang & Biscuit shuffleboard bar in Scott’s Addition. Let us tell you, they are really making the most of their branding by not only offering Tang-based cocktails, but also serving their trademark biscuits (our review, A+). We love seeing a great mark at work!