“The company must stop shooting itself in the foot”.
That self-help adage applies in many contexts, including when adopting a new #brand, #slogan or other #trademark. Just ask NTT Data as to SPILLPROOF. No, not some new toddler-proof cup. Rather, software for encrypting documents.
In the encryption world “SPILL” is a term of art for “a security incident where sensitive or classified information is unintentionally exposed to an unauthorized or uncontrolled environment”. “PROOF”, when coupled with “SPILL”, readily conveys the meaning that the encryption software means “to create a preventative state” to avoid such unintended exposure … at least that is the view of the USPTO examiner in refusing to register SPILLPROOF. The examiner found SPILLPROOF “merely descriptive” of such encryption software.
But, how did NTT Data “shoot itself in the foot”? NTT Data frequently described its products as creating “spill-proof documents”. Ouch!! This highly descriptive use served as additional compelling evidence for the USPTO examiner in rejecting SPILLPROOF.
It feels much worse when the materials which seal your company’s fate are your company’s own promo materials … especially when such negative impact is preventable.
NTT Data lobbed a soft ball to the USPTO examiner when NTT Data, itself, descriptively used “spill-proof” in many of NTT Data’s advertising and promotional events (#LinkedIn, webpages, conference materials, etc.). NTT joins an unenviable club: the many companies who have “shot themselves in the foot” with their own advertising materials by not adhering to proper trademark usage. Such incidents are quite unfortunate given that such self-debilitating “descriptive” use is likely easily avoided. The best practice is to first clear advertising and promotional materials with experienced trademark counsel who can advise on proper trademark usage.
NTT Data also confirmed to the USPTO examiner that both SPILL and PROOF were “terms of art” in NTT Data's industry. As such, the USPTO examiner initially rejected SPILLPROOF without relying on NTT Data's promotional materials. But, when NTT Data attempted to push back, NTT Data’s own advertising materials were easily found, and then used, by the examiner to deftly confirm NTT Data’s self-sabotaging "descriptive" use.
What would suffice for proper trademark usage? As but one example: "Our SPILLPROOF brand document encryption software prevents unauthorized exposure of your documents".
Yes, it might be that such statement is not as catchy or clever as others and that the NTT Data marketing department would not readily embrace that copy. If so (and only speculating here), perhaps it falls to the executive in charge, after joint consultation with marketing and trademark counsel, to weigh up the issues and make the business decision.
In further speculating, but as to prior events which lead NTT Data to this juncture, an earlier “weighing up” joint consult session may have occurred at the outset when NTT Data initially considered the key question of whether to adopt SPILLPROOF as the trademark for their software encryption product. If so, that session likely would have reflected a basic and classic tension between the marketing department favoring some type of descriptive use in the adopted trademark versus trademark counsel expressing some (perhaps much) uneasiness with such descriptive use. That said, at the end of the day, selecting and adopting a new brand, slogan or other trademark is a business decision.
The marketplace and the USPTO register are populated today with many trademarks that were not trademarks on day one in the marketplace due to the mark being “merely descriptive” in relation to the goods or services. SPILLPROOF (even without the self-sabotaging promotional materials) appears to fall in that category per the USPTO examiner’s decision. Whether SPILLPROOF has acquired, or can acquire, distinctiveness (secondary meaning) is not the subject of my comments here.
Clearing a trademark for a business is a multi-dimensional process, certainly more than the sole question as to whether other businesses are using similar terms. There are risks (and rewards, albeit gained over a longer horizon) in selecting a highly descriptive term as a brand, slogan or other trademark.
Incidentally, it matters not that, presumably, most of the general public has no idea that SPILL has a special meaning in the encryption world. To those in that industry, they know the special meaning. Use of a trademark where the trademark, or a part of it, has a special meaning in the industry (a “term of art” for that industry) should at least raise a yellow flag when adopting a new brand, slogan or other trademark for that industry.
Conducting periodic “trademark audits” of a company’s website, social media and other promotional materials, as well as clearing copy before publication or release, are best practices to insure and conform to proper trademark usage … and to avoid the “self-shooting in the foot” fate of SPILLPROOF.
BTW, if seeking more PROOF, this SPILLs it out.
PS: To be continued, if NTT Data does not abandon the application. NTT Data’s options might include: (1) appealing the examiner’s rejection by seeking review of the examiner’s decision with the Trademark Trial and Appeal Board; (2) seeking to amend the application to the Supplemental Register (and perhaps trying again at a later date with a new application); or, (3) seeking to claim “acquired distinctiveness” by one of several means (perhaps a 2(f) declaration, if ripe).
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