A number of childhood icons are under attack. The Frisbee, Slip 'n Slide and Hula Hoop trademarks owned by Wham-O are being challenged in the United States Patent and Trademark Office (PTO) by Manley Toys (also known as ToyQuest), the competing outdoor toymaker who has, along with related companies, battled Wham-O for several years in various court cases over these well-remembered trademarks.
Manley is asking the PTO to conclude that Wham-O’s most famous marks are “generic.” Wham-O recently responded by asking a federal court to intervene and decide the issue rather than leave it up to the PTO. Wham-O has been successful at this fight in the past, but this latest round has not gone as well, in part due to the company’s own missteps.
As talked about in a prior column, if a mark becomes generic, that means it primarily describes a class of products (such as “yo-yo,” which used to be a trademark), rather than one specific company’s product (such as the “Barbie” doll). By arguing that Wham-O’s marks are generic, Manley hopes to cancel the federal registrations for those marks because a generic mark cannot be registered. Wham-O, of course, strenuously disagrees and believes its marks are not generic.
Seems like there is a significant dispute between the two companies that a court should decide, right? Well, in August, a federal court in California concluded otherwise, and determined this really wasn’t the type of dispute that the court should hear. As a result, the court dismissed Wham-O’s request that it decide whether Wham-O’s marks are generic.
In ruling, the court placed a lot of weight on the argument that Manley had already asked the PTO to determine whether Wham-O had the exclusive right to use the marks, or if, instead, anyone could use the marks because they were generic. Unfortunately, this is one of those instances in which a court simply got it wrong. Here’s why:
The PTO determines whether someone may register a trademark—a process in which a mark is examined to determine whether it meets certain criteria that warrant granting a certificate of registration, and the accompanying benefits (such as using ®, the registered trademark symbol). In contrast, the PTO does not determine whether a trademark may be used. Even without registration, a company may use a trademark on its products in the marketplace (think about all the unregistered trademark symbols [™] on products). Disputes about the use of trademarks are for the courts to decide. This is where the court in this case got it wrong. In other words, the PTO will not decide who can use marks, only whether marks may be registered. In fact, in its decisions, the PTO is fond of reminding parties that it decides “only rights to federal registrability, not use.”
Courts do make mistakes from time to time; that’s why there are appeals courts. What makes this case even more unusual, however, is that Wham-O got it wrong as well; it focused on trademark use too, mistakenly arguing that the PTO decision could ultimately “strip Wham-O of its common law right to use these Marks…” Instead, Wham-O should have focused on the benefits of registration it would lose if its trademark registrations were cancelled for its best-known products.
Make sure you don’t make the same mistake. Remember, trademark registration and trademark use are not the same.
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