Wang IP Law Group, P.C.
Local 626-269-6753
Toll Free 888-827-8880


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.

No Comments

Leave a comment
Comment Information
Contact Us To Get Started

Contact Us To Get Started

Contact our office to schedule a free, initial consultation by dialing 888-827-8880 or by completing our brief, online questionnaire. Based in Los Angeles, our firm represents clients throughout California and in China, Hong Kong, Taiwan, Japan and Israel.

Bold labels are required.

Contact Information

The use of the Internet or this form for communication with the firm or any individual member of the firm does not establish an attorney-client relationship. Confidential or time-sensitive information should not be sent through this form.


Privacy Policy

Our Locations

18645 East Gale Ave.
Suite 205
Industry, CA 91748

Phone: 626-269-6753
Map & Directions

Los Angeles
355 S. Grand Ave.
Suite 2450
Los Angeles, CA 90071

Toll Free: 888-827-8880
Phone: 626-269-6753
Map & Directions

18662 MacArthur Blvd.
Suite 158
Irvine, CA 92612

Phone: 626-269-6753
Map & Directions

Taiwan - Taipei
37F Taipei 101 Tower, No.7, Sec. 5 Xinyi Road
Taipei, Taiwan 11049

Map & Directions

QR Code