HAVEN CONFERENCE 2013: A Husband’s Perspective

What’s All the “Dust Up” About “CHALK PAINT^®”?

By Alex Butterman[1]

 

                                                                                                © 2006 AnnieSloan

            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.”

            

  

© 2012 vanGogh Fossil Paint  

  

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 Number: 4232734	US Registration Number: 4322847
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: 

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 

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[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.