The Trademark Trial and Appeal Board (TTAB) recently issued a decision that reminds all trademark owners it is crucial to properly use trademarks on their own websites to reinforce trademark importance. This decision emphasizes the importance of educating the individuals in an organization as to proper trademark use and reviewing all promotional materials to guarantee consistent use.
The decision of Wet Dog Media, Inc. v. Rodale, Inc. is rather expected: basically the Board found the applied-for trademark "WOMEN'S RUNNING" is too descriptive of the subject services to serve as a trademark. What is remarkable, however, is Applicant's own website was the critical evidence cited in defeating its claim of trademark rights and in ruling that "WOMEN'S RUNNING" was not used in a trademark manner.
Particularly, the Board commented that Applicant's use of "WOMEN'S RUNNING" on its website was descriptive, and not used as a trademark, because the words are "used alongside, in the same font, as other website 'categories'" of information. At first, the Examining Attorney allowed Applicant's claim of acquired distinctiveness in the descriptive mark but, after opposition by a competitor, Applicant's own website came under inspection and was used as the source to defeat its claim of trademark rights.
The Board studied Applicant's website and found WOMEN'S RUNNING was used in the same fashion and font as other descriptive headers such as "NUTRITION/WEIGHT LOSS", "SITE MAP", and "BEGINNERS". The decision serves as an important lesson because, in obtaining trademark protection, all promotional materials should support a claim of trademark rights. Simply put, it is important to use a trademark in a conspicuous, distinctive manner, in a different stylization, font, and/or color than other wording on the website, to ensure viewers see the mark as indicating the source of your goods/services being promoted. It is also effective to use the TM or ® in the vicinity to the mark, when appropriate.
If your trademark is appropriately displayed on your website, and in other marketing materials, it can help strengthen your rights in the mark and cultivate the image that is paramount to the value of your trademark. Ultimately, Rodale might not have been able to obtain a trademark registration for "WOMEN'S RUNNING", it should not have been the Registrant's own website that defeated its validity of trademark rights.