Crushing a Perfectly Good Brand Name?

Winthrop & Weinstine, P.A.

Remember how important it is to stay on the right side of the suggestive/descriptive line when it comes to making proper use of a brand name?

We have cautioned about the danger of “taking a suggestive name, mark, or tag-line, and using it descriptively in a sentence on labels, packaging, ad copy, or the Internet,” because doing so “unfortunately can move it to the left (and wrong) side of the line and render it merely descriptive.” A couple of years ago we noted how Smash burger needed to heed this warning in: Another Marketing Pitfall: How to Crush a Smashing Brand Name & Trademark.

And unfortunately now we see that COVERGIRL cosmetic brand’s mascara appears to be running down a similar problematic path with this otherwise eye-popping and attractive billboard sign:

The USPTO database reveals that CLUMP CRUSHER is federally-registered as a trademark for mascara and mascara brushes; neither registration issued based on acquired distinctiveness (meaning the mark was considered suggestive and inherently distinctive for these goods); and both registrations only disclaimed the descriptive word “clump” (meaning that CRUSHER was viewed as suggestive, not descriptive).

There are a few things working against maintaining CLUMP CRUSHER as an inherently distinctive trademark and brand name for mascara brushes: (1) The all lower case visual style for the CLUMP CRUSHER trademark; (2) descriptive use of CRUSHING in the billboard headline; and (3) failure to use the registration notice symbol in connection with the CLUMP CRUSHER trademark.

Trademark types, would you have cleared this billboard ad, as is? Of the three noted issues, which one(s) would you have compromised on, if any?

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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