Trademarking Punctuation Marks “[ ]” – Who Knew

Posted on: February 4, 2014

                Did you ever think punctuation such as “[ ]” could be trademarked? In May 2013, this was discussed by the US Trade-mark Trial and Appeal Board in relation to Casella Wines’ application for the trademark of “[ ]”. It is an interesting case for those interested in intellectual property.            

The two aspects that were examined were the descriptiveness of the mark (does the mark simply describe the product or service or its natural characteristic) and its inherent distinctiveness (the ability of a mark to distinguish a good or service).

Regarding descriptiveness, the board found that the mark was not merely descriptive of wine or alcoholic beverages as it did not relate to the description of “an ingredient, characteristic or feature of wine or alcoholic beverages”.

                Regarding distinctiveness, the court considered the position that the mark was a punctuation mark and could not function as a trademark. The question to be asked is whether the mark is actually capable of distinguishing wines and spirits. What do you think? In this case, because use of the brackets had not commenced, the Board was unable make a finding regarding how the mark would be perceived by the public based upon its actual use (i.e. punctuation vs. trademark). Because a finding could not be made, the Board ruled distinctiveness would not be a bar to the registration of the trademark, but an application to cancel the registration after the trademark was used would be permitted.

                On October 1, 2013, a Notice of Allowance issued for the mark. This means Casella Wines has 6 months to commence using the mark or request an extension.

Denese Espeut-Post is a registered trade-mark agent.  Visit Avery Law Office for your trade-mark needs, registrations and ongoing maintenance.

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