Idaho Law Blog
Going through the Trademark Official Gazette of December 29 was a little disheartening at first. It was the usual mish-mash of made-up words that marketers hope will become famous trademark through the expense of lots of advertising dollars, and I was despairing of finding anything interesting until I came across this:
There is usually a fight going on between the marketing people and the trademark protection staff over what to call a product. The marketers often want to give it a name which describes some desirable quality of the product. The trademark staff, on the other hand, know that marks which are merely descriptive of the product get very little protection, and may not be registrable. The trademark examiners at the Patent and Trademark Office are diligent about not allowing trademark owners to remove from the lexicon common words that competitors might want to use to describe their products. So a word that is the generic name of a product cannot be used as a trademark; words that are descriptive of the product can be used as trademarks but may not be registrable and will get very little protection. The compromise is to find words that are suggestive of a desirable quality, but not directly descriptive of the product. Or, of course, you can make up a word, like XEROX, or use a common word that is not related in any way to the product, like APPLE for computers.
With SHEER AND INNOCENT, there was clearly a compromise. A product might be sheer, but can a thing ever be described as innocent? Take them together, and the mark will be suggestive and eligible for registration, even though part of it might be descriptive. And, yes, the registrant in this case had to disclaim any rights in the word “sheer” apart from its use as part of SHEER AND INNOCENT as a whole. A disclaimer of this sort is an admission that, in most cases, use of the word “sheer” in another trademark would not be an infringement.
So what is this sheer and innocent product? This is the strange part: The mark is for synthetic aliphatic hydrocarbons and mixtures of synthetic and mineral oil aliphatic hydrocarbons for industrial uses to make waxes, synthetic oils, pharmaceuticals, and cosmetics. I am guessing that the registrant, Sasol Wax GmbH, of Hamburg, Germany, will be using this mark primarily for marketing to the cosmetics industry.