Monday, December 16, 2013
Sunday, December 1, 2013
HAVEN CONFERENCE 2013: A Husband’s Perspective
What’s All the “Dust Up” About “CHALK PAINT®”?
I was fortunate enough to attend the
Haven Conference with my wife that was held in Atlanta, Georgia from August 1-3,
2013. While Adrienne thoroughly navigated the conference attending workshops,
networking and meeting famous DIY/home bloggers like herself, author of the Adventures in DIY blog, I managed to visit with a childhood friend; attend an Atlanta
Braves baseball game and later tour the stadium, Turner Field; and sightsee
other major Atlanta attractions like Coca Cola®, CNN® and
Centennial Olympic Park (see this blog post). This was a fun little diversion from our day jobs
which for Adrienne is a financial analyst and for me is an intellectual property attorney.
Shortly before we left
for Haven, Adrienne excitedly told me about a reception being sponsored by Annie Sloan Interiors Ltd. (“Annie Sloan” or “Sloan”), a manufacturer and proclaimed inventor of a
“unique range of decorative paint, called CHALK PAINT®”[2] with which Adrienne seemed duly impressed.
Subsequently, while at the conference, Adrienne informed me that a lot of
conference attendees expressed displeasure with Annie Sloan because Annie Sloan
had sent a number of demand letters to conference attendees or similarly
situated members of the DIY/home blogger community demanding that they not use
the term “chalk paint” because CHALK PAINT is a trademark belonging exclusively
to Annie Sloan. As an intellectual property attorney who specializes
in trademark law, I naturally was curious about the trademark status of the
term “chalk paint” as soon as I learned about this product from Adrienne and I
promptly researched it in the online trademark database of the U.S. Patent
and Trademark Office website. So is CHALK PAINT really a trademark? And does Annie Sloan properly own the
earliest right to exclusively use that mark – to the exclusion of all
others? If so, has Annie Sloan followed
the proper procedures to protect the mark from use by others and is she now
entitled to enforce that exclusivity?
On
one side, we have Annie Sloan who states that she created a “unique decorative
paint over two decades ago which revolutionized the process of antiquing
furniture.” In 2003, she thought of calling the paint “CHALK PAINT because it
is “suggestive” of the “velvety,
chalky matte finish that the paint provides.” According to my research, when Annie Sloan decided to label this
unique paint “chalk paint,” there apparently were no other paints on the market
called “chalk paint” nor is it clear that there previously was a paint called
“chalk paint,” although a “chalky” paint did seem to exist in prior history.
According to Kathy van Gogh, a decorative artist in the USA and Canada since 2001 who has attempted
to cancel Sloan’s CHALK PAINT trademark registration, and whose trademark registration
application Sloan is opposing:
"Chalk paint has been around for hundreds, even thousands of years.
Remember Tom Sawyer and the whitewash fence? Chalk paint! Cave art? Chalk
paint! Frescos in the Sistine Chapel? Chalk Paint! All of these refer to
chalk paint or some version of chalk paint. Using lime and pigment and
magnesium or calcium carbonate (chalk) to create beauty is not a new
invention.”
The true history of
chalk paint, how it was developed, by whom, and whether it really contains any
chalk is unclear without conducting extensive research or reviewing each
party’s evidence, to which I am not privy or have had occasion to access, but there seems to be some industry
consensus that Annie Sloan developed an innovative paint with some unique
and desirable features that became quite successful both commercially and
artistically. So what is a seller of a
unique, previously unknown product that becomes immensely popular supposed to
use to identify that product which will uniquely identify only their product
but not any competing products that undoubtedly will emerge?
The phenomenon of
the public using a unique product’s label to refer to similar and competing
products is commonly known among branding professionals as “genericide” and can
result in the loss of the mark. Some
well-known examples of now generic marks because of genericide are ESCALATOR;
ZIPPER; ASPIRIN, THERMOS and many others. Examples of marks that have thus far
escaped from genericide include XEROX® and GOOGLE®.
I think a little primer on
trademark law would be useful here (pun not really intended).
Trademark Law
Primer
Q: What is
a Trademark?
A: A trademark is an indication of source used in connection with a
specific product or service or group thereof (marks for services are called
“service marks” but “trademark” often is used to refer to both). Typically, a
trademark comprises a name, word, phrase, logo, symbol, design or combination
of these elements. A “standard character” mark refers to a federally registered
mark that covers the words in the mark regardless of any font, style, case or
design elements that may be combined with the wording.
At its most fundamental
level, a trademark is a reference to the person or entity responsible for the
quality of a product or service. Trademarks serve two main functions: (1) Consumer
Protection – protecting a consumer’s expectation of consistent quality and
brand protection; and (2) Brand
Protection – protecting the brand owner’s investment in developing and
meeting those expectations. Trademarks prevent consumers from mistaking one
product for another by providing a quick and easy reference to identify goods
and services and enabling them to select the products they like and avoid the
products they dislike. Trademarks also help businesses reap the rewards of financial
and reputational benefits when the business can successfully produce a certain
quality of product and effectively market the qualities of that product.
Trademark law prohibits
competitors and third parties from competing unfairly by confusing consumers
into believing that they are buying their desired product when in fact they are
buying that of a competitor, or from otherwise damaging the reputation and
source-identifying function of the brand. Annie Sloan intends and contends that
CHALK PAINT is a mark because Annie Sloan has both invested in teaching the
public that CHALK PAINT refers specifically to her and her company as the
manufacturer of her particular paint and her customers expect to find only her
paint when looking for “chalk paint.” Thus, other paint manufacturers who call
their paint “chalk paint” will mislead consumers into believing that those
paint products are from Annie Sloan when in fact they are not, according to Ms.
Sloan. Kathy van Gogh and other sellers of products that compete with CHALK
PAINT would argue that “chalk paint” is now generic because of genericide or
always was generic.
Q: What makes
the public recognize that a word on a product is a mark?
A: A general rule in trademark law is that the more a mark is unique and the
less the mark refers to a characteristic of the product, the better able the
word is to identify the source of a product, the stronger the mark will be, the more likely that consumers will recognize the mark as a mark and
the easier it will be to prevent others from using that term as mark. Also,
trademark law recognizes that business competition would not be fair if a term
necessary to describe a particular product could be considered a
source-identifier that exclusively identifies one business, even if that
business is the inventor of that product. One cannot expect to claim PAINT as a
trademark and therefore prevent others from manufacturing or selling paint
because others are not allowed to use the word “paint” as a mark. And consumers would not perceive “paint” or
even a paint color as a mark because they would perceive the wording as
describing the product, not identifying who offers the product.
For instance, APPLE®
can stop other computer manufacturers from using “apple” to refer to their
computers (or any similar or related product or service) because nobody would
think of “apple” as having anything to do with computers except for the
specific computers of Apple Corporation. The same is true for a mark like KODAK®
which is a completely made-up term. Trademark professionals often refer to a
mark being weak or strong based upon a trademark “spectrum” with one end
of the spectrum consisting of the strongest marks like KODAK and the other end consisting of
the weakest marks or terms that cannot function as a mark like “generic” marks.
Marks on the KODAK end are considered “inherently distinctive.” In the middle
of this spectrum are marks that could be understood as describing a quality or
feature of the product but with enough time and marketing of the product in the
relevant market, consumers learn that this term refers to who offers the
product and not to a characteristic of the product. In other words, the mark
has “acquired
distinctiveness.” Annie Sloan will likely argue that her CHALK PAINT mark falls into this middle of the spectrum status.
Consequently, Annie Sloan’s ability to prevent other
paint manufacturers from using the term “chalk paint” to refer to their paint
depends upon whether the relevant market, i.e. present day DIY and home
improvement professionals and paint hobbyists, (a) would understand CHALK PAINT
as uniquely referring to Annie Sloan’s paint; or (b) would understand CHALK
PAINT as a term of art referring to a particular genre or type of paint product
that any paint manufacturer could offer. Some people, namely other chalk paint
sellers, would argue that Ms. Sloan’s decision to call her paint CHALK PAINT
because it has a velvety, chalky matte finish is clear evidence that her mark
was merely a description of that feature of the paint and therefore not an
inherently distinctive mark. Further, consumers always have and presently still
understand the “chalk paint” wording as referring to a paint characteristic and
not specifically to paint offered by Annie Sloan. Ms. Sloan in turn argues that
“chalk” did not describe the paint but actually was a clever hint about the
paint that one would need to infer refers to the paint. As such, Sloan
would argue that consumers consider CHALK PAINT a sufficiently unique
source-identifier to refer exclusively to Annie Sloan’s innovative paint. Alternatively,
since Sloan has been advertising and selling her CHALK PAINT for over ten years
now, consumers have learned to recognize that CHALK PAINT refers only to
Sloan’s paint products and the CHALK PAINT mark has therefore “acquired
distinctiveness.”
Q: Can’t a mark be created by registering it
in the U.S. Patent and Trademark Office?
A: This is
a common misunderstanding about U.S. trademark law, although it is true in most
other countries. Under U.S. law, simple use of a mark in ordinary commerce
creates trademark rights in the actual and immediately surrounding market in
which the goods are sold. A federal registration of the mark extends the
“common law” rights in the mark nationwide as well as establishes a presumption
of ownership and validity of the mark. Accordingly, Ms. Sloan obtained
trademark rights in the CHALK PAINT mark as soon as she labeled the paint cans
with “Chalk Paint,” placed them in the market and people purchased the paint
perceiving CHALK PAINT as identifying her specific paint. But Sloan’s trademark
rights in CHALK PAINT could not extend across the U.S. until she 1) sold the
CHALK PAINT labeled paint in interstate commerce or commerce between the U.S.
and another country; and 2) she federally registered the CHALK PAINT mark. In many other countries, Annie Sloan could have established rights to the CHALK PAINT trademark merely by registering the mark in that country's trademark office.
Q: Has Annie Sloan registered the CHALK PAINT
mark? What exactly are Ms. Sloan’s
present rights in the CHALK PAINT mark and what is going on with this mark?
A: Yes, Ms. Sloan has federally registered the CHALK PAINT mark in the
USPTO. My research promptly discovered two U.S. registrations for the mark
CHALK PAINT, one in “standard characters” and one in “stylized form” that are
owned by Annie Sloan (see below).
 |
| Reg. No: 4232734 |
 |
| US Reg. No: 4322847 |
The rest of this question can be answered to some extent by an analysis
of these two U.S. registrations; other USPTO registration activity for CHALK
PAINT marks; any litigation surrounding the mark CHALK PAINT either in the
USPTO - at the Trademark Trial and Appeal Board (“TTAB”) - or in state and federal
courts; and the public’s reaction to the CHALK PAINT mark in the relevant
marketplace. The pertinent details of
each registration certificate reads as follows:
Mark: CHALK PAINT
|
 |
Serial Number: 85-479014
|
Serial Number: 85-408522
|
Application Filing Date: Nov. 22, 2011
|
Application Filing Date: Aug. 26, 2011
|
Registration Date: Oct. 30, 2012
|
Registration Date: Apr. 23, 2013
|
Register: Principal – Sec. 2(f)
|
Register: Principal – Sec. 2(f)
|
Standard Character Claim: Yes. . . .
|
Standard Character Claim: No
Mark Literal Elements: CHALK PAINT
|
Mark Drawing Type: 4 - STANDARD CHARACTER MARK
|
Mark Drawing Type: 5 - AN ILLUSTRATION DRAWING WITH WORD(S)
/LETTER(S)/ NUMBER(S) INSTYLIZED FORM
|
---
|
Description of Mark: The mark consists of stylized terms
"CHALK PAINT" in all capital letters.
|
---
|
Color(s) Claimed: Color is not claimed as a feature of the mark.
|
Disclaimer: "PAINT"
Acquired
Distinctiveness Claim: In whole
|
Disclaimer: "PAINT"
Acquired Distinctiveness Claim: In whole
|
For: Paints for arts and crafts; Paints for
decorative purposes
International Class(es): 002
|
For: House paint; Interior paint; Paints for arts and crafts
International Class(es): 002
|
First Use: Oct. 08, 2003
|
First Use: Dec. 2010
|
Use in Commerce: Jan. 01, 2004
|
Use in Commerce: Dec. 2010
|
In these two issued and presently valid
registrations, we can tell from the “Register: Principal – Sec. 2(f)”
notation on each registration that the USPTO did not consider the CHALK PAINT
mark to be “inherently distinctive.” The trademark examining attorneys assigned
to review each of these applications probably concluded that CHALK PAINT is
“merely descriptive” of a quality or characteristic of the paint goods, i.e.
that the paint is “chalky” or contains chalk material, based upon the
dictionary definition of CHALK: “a soft white or gray fine-grained sedimentary
rock consisting of nearly pure calcium carbonate originally formed under the
sea and containing minute fossil fragments of marine organisms.” Consequently,
Sloan’s only option for obtaining full U.S. registrations[3]
of these marks was to claim that the CHALK PAINT mark had “acquired
distinctiveness,” presumably based upon her exclusive and continuous use of the mark in
U.S. commerce for the past five-plus years. The “2(f)” refers to a section of
the federal trademark statute which sets forth a legal presumption that five-plus
years of exclusive and continuous use of a mark in commerce should teach the
public to recognize that the mark refers specifically to the mark owner’s
associated goods. Challengers of these registrations would probably contend that Annie Sloan was not an "exclusive" user of CHALK PAINT during the five-year period. We also know from the “Disclaimer: ‘PAINT’” notation on each registration that
the USPTO treated the PAINT term as a generic term.
In addition to my
discovery in the USPTO records of Annie Sloan’s two aforementioned trademark
registrations (shown in bold below), I found the four additional pending
USPTO applications shown below which are all listed in reverse chronological
order by filing date:
Serial Number
|
Filing Date
|
Word Mark
|
Owner
|
Status
|
86-048369
|
8/26/2013
|
AUNTIE M'S CHÁLK PAINT
|
Rob Barber &
Amanda Barber
|
New Application (not yet examined);
Letter of Protest filed for likelihood of confusion with 2 Sloan
registrations
|
85-911375
|
4/22/2013
|
CHALK PAINT
|
American Paint Company
|
Office Action refusing
registration (response required by Feb. 9, 2014); Letter of Protest for
likelihood of confusion with 2 Sloan registrations
|
85-669594
|
7/5/2012
|
WEBSTERS CHALK PAINT POWDER
|
Websters Chalk Paint Powder, LLC
|
An opposition after publication is
pending
|
85-600814
|
4/18/2012
|
KATHY VAN GOGH CHALK PAINT COLLECTION
|
Studio van Gogh
(Kathy Ellen van Gogh) |
An opposition after publication is
pending
|
85-479014
|
11/22/2011
|
CHALK PAINT
|
Annie Sloan
Interiors Ltd.
|
Registered - Reg. No.
4232734
cancellation proceeding is pending |
85-408522
|
8/26/2011
|
CHALK PAINT
|
Annie Sloan
Interiors Ltd.
|
Registered - Reg. No.
4322847
|
All of these registration applications were filed
after Annie Sloan’s registration application, possibly aware of and as a
challenge to Sloan’s registrations. These subsequent, additional and unrelated third
party applications to register CHALK PAINT, as well as any unrelated third
party usage of the CHALK PAINT term without any registration, support the
claims that “chalk” has to have some meaning in relation to paint and that
“chalk paint” cannot be referring to only Sloan’s paint.
We
note with great interest in the Status column how two applications filed in
2012 are presently being opposed at the TTAB; of the most recently filed applications
(filed on April 22, 2013 and August 26, 2013) both applications have had a
Letter of Protest filed against it and the April application has been refused
registration because of Sloan’s two earlier registrations; and one of the Annie
Sloan registrations is the subject of a cancellation action at the TTAB. Moreover, the
opposed applications were approved to register over Sloan’s registrations by a
USPTO examining attorney. NOT coincidentally, Annie Sloan is involved in each
one of these adversarial proceedings – Annie Sloan is the party opposing the applications
of Studio Van Gogh and of Webster’s
Chalk Paint Powder LLC; Annie Sloan must have
filed the Letters of Protest because the basis for each protest is the alleged
confusing similarity of the targeted registration applications with Sloan’s two
registrations; and the cancellation proceeding against Annie Sloan’s
Registration No. 4232734 was actually instituted by the two aforementioned separate
parties whose applications Sloan is opposing – Webster’s Chalk Paint Powder and
Studio Van Gogh. This is a fine mess.
In
addition, Annie Sloan has filed a trademark infringement lawsuit in federal
court in Louisiana against two additional entities not named above who
apparently have not filed any trademark applications in the USPTO - Cece
Caldwell’s Paints, LLC and Donna Schultz
(Caldwell’s owner); and Dallas Faux Finishing, LLC d/b/a Maison Blanche
Paints. These last two entities apparently either were a
licensee of Annie Sloan or negotiated to be a licensee/distributor but failed
to consummate the deal. Moreover, one of these defendants - Cece Caldwell – counterclaimed
against Annie Sloan in the same manner as did Webster and Van Gogh in their
cancellation proceedings against Sloan at the TTAB. We could perhaps diagram this network of lawsuits as such:
.jpg)
All this litigation and
third party application activity surrounding the CHALK PAINT mark is really
remarkable.
In short, the answer to this question is that Annie Sloan presently
maintains exclusive rights in the CHALK PAINT mark based upon her claim of
acquired distinctiveness and ongoing usage of the mark in U.S. commerce, which
appear earlier and therefore senior to any of her challengers, as well as her record of enforcing her exclusive rights in the mark. However,
needless to say, Annie Sloan’s U.S. rights in the CHALK PAINT mark are in
serious jeopardy of being lost, most likely due to genericide.
Q: How, if at all, could Annie Sloan have
avoided this dilemma?
A: Of course, this answer is purely speculative but the two action items
that I believe could have better helped Annie Sloan avoid this quagmire are 1)
selecting a more distinctive mark; and 2) investing in a stronger monitoring
system and more vigorous enforcement strategy early-on to promptly eliminate any
third party usage of CHALK PAINT by other paint manufacturers and sellers. Both
of these actions can broadly be categorized as a greater investment of
resources in the branding protection process which often is easier said than done.
Conventional legal
wisdom for the establishment of an effective branding program is to select the
most unique and strongest mark imaginable, i.e. a “coined” term like KODAK or
an arbitrary term like APPLE for computers, and then train the target market to
associate that mark with the company’s product or product line. However, many
smaller businesses seem to resist that strategy because of a fear of the
advertising and marketing expenses associated with training their market to
recognize the new brand. These business people believe that the mark needs to
convey to the consumer “something about the product” to minimize the marketing
expenses necessary to train its targeted market. Of course, one “gets what it
pays for.” The trademark lawyer’s advice responsive to that concern is to
combine the unique and strong mark with a more descriptive or generic term, i.e. Apple Computers,
thereby maintaining the strength and source-identifying function of the
selected mark. The formula that expresses this strategy is to always make the
mark the adjective (e.g. "APPLE") and the associated product or service a noun (e.g. "computer"); and never use the
mark as a noun or verb. In effect, Annie Sloan achieved this if ANNIE SLOAN is
considered the unique and strong mark and “chalk paint” is considered the noun
and generic description of the product with the mark. But this of course requires that Ms.
Sloan abandon any rights to the CHALK PAINT wording as a mark. And this is a
common outcome for new innovative products that previously had no English word
to describe them.
The second part of the
recommended legal strategy to protect the mark is to constantly monitor the
relevant market for unauthorized third-party users and applicants of the same
or similar mark. The market can be monitored using internet searches for
unregistered common law uses of the mark; and via trademark vendors or lawyers who
offer “watch service” subscriptions to monitor the USPTO for any new
application filings or approvals for such similar marks. Upon discovering any
third party trademark adoption activity, or even improper use of the mark in the press, the mark owner should promptly notify the
allegedly infringing user or writer of the mark owner’s claimed trademark rights in the
term, and demand that such usage of the mark be
immediately stopped.
As you could imagine, all of these
aforementioned efforts can be quite challenging for a new, innovative and
successful product that many competing businesses may want to emulate but which
was never previously known on the market and which may have limited resources to budget for legal matters.
Conclusion
Q: What is the prognosis for Annie Sloan?
A: The outcome will naturally depend upon the evidence. Annie Sloan will
produce her valid trademark registrations as a presumption of her ownership and
validity of the CHALK PAINT mark; document her extensive history of marketing
expenditures and use of the mark in U.S. commerce; present evidence of her
efforts to stop third parties from using CHALK PAINT without authorization; and
perhaps present consumer survey evidence that CHALK PAINT is widely recognized
by consumers as a mark exclusively identifying Sloan’s paint. The challenging
third parties will probably produce dictionary evidence of the meaning of
“chalk” in reference to paint; evidence of widespread generic use of “chalk
paint” in the relevant media, trade press, by consumers and other third parties; and also
possibly rely on survey evidence. Consumer surveys are extremely expensive but
can be the best evidence in trademark litigation if properly conducted. Actions
and determinations by the USPTO in the examination of the registration
applications could be viewed by a court as persuasive evidence but is not
binding on the court and can easily be outweighed by the actual evidence
presented by the parties.
My
experience with these potential genericide situations is that they usually do
not end well for the original trademark owner once multiple parties have
established their use of the mark in a generic manner. Significant third party
usage of the claimed mark on the relevant goods is typically readily visible
and available to challenge the claimed mark owner and these third parties can
develop momentum and pool their resources to outnumber and outweigh the
battling mark owner. Trademark litigation usually proceeds as far as the
parties want to invest in it which often is not too far. In fact, about 95% of
trademark cases, especially at the TTAB, generally settle. I typically see
these alleged genericide cases settle, although the settlement often entails
the mark owner agreeing to relinquish their claims to proprietary rights in the
disputed mark. But that private settlement is oftentimes better than having a
public court judgment stating that the mark is generic.
If Annie Sloan is forced
to relinquish her trademark rights in the term CHALK PAINT, at least her ANNIE
SLOAN name should remain as a strong mark perpetually identifying her as the
source of quality paint.
ENDNOTES
[1]
Alex Butterman is a trademark attorney with Staas & Halsey LLP, a Washington, D.C. intellectual
property boutique law firm. Alex is admitted to the bars of Washington, D.C.,
New York and New Jersey but, unless otherwise specified, the article is
intended to convey only general legal information applicable to any U.S. state. Actually, this article primarily discusses applicable
federal laws. No attorney-client relationship or obligations are intended to be
established herein. The reader is strongly encouraged to consult with an
attorney to discuss any specific legal questions or unique legal situations. Additional information about Alex Butterman’s
practice may be viewed at his Staas
& Halsey bio and his Avvo
profile.
[2] The
author recognizes that CHALK PAINT is a U.S. trademark registered with the U.S.
Patent and Trademark Office and perhaps in other countries as well, and
therefore applies the ”®” symbol at the initial mention of
this mark and any other mark in the article believed to be registered with the
USPTO. However, for the sake of simplicity, the “®” symbol is
being noted only at the initial mention of each mark and not continuously
throughout the entire article. Any images of the CHALK PAINT product or logo
are believed to be purely for fair use and do not indicate any association
whatsoever with Annie Sloan, as there is none. Also, the author’s views
expressed in this article are not intended to represent any person’s or
entity’s views other than his own, and the author endeavors to remain as
objective as possible and to not interject any of his views or opinions on the
subject.
[3] There
are two types of U.S. registration: 1) a Principal Register registration which
grants all of the benefits of a U.S. registration (e.g. presumption of
ownership and validity; ability to stop infringing goods at U.S. ports; etc.)
and a Supplemental Register registration which grants only the right to be
registered in the UPSTO Registry as well as the right to use the ® symbol but
not any presumption of ownership and validity and the other rights listed in
this parenthetical. A Supplemental Register
registration is only available to marks considered merely descriptive and
believed to be capable of eventually “acquiring distinctiveness;” generic marks cannot be registered on the Supplemental Register.
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