Words like ‘how’ and ‘smart’ and the evolving world of trademark law

by John Chapman

Chobani yogurt has mounted an advertising campaign based on the phrase “How Matters.” For example, the Chobani website notes, “HOW WE MAKE OUR PRODUCT MATTERS. A cup of yogurt won’t change the world, but how we make it might” and “How we do business matters to us, because we believe in doing business the right way.”

Dov Seidman, a bestselling author and business ethics consultant, has built a career and business largely around similar use of the word “how.” For instance, Seidman’s website features a video entitled “HOW Matters Because…” in which his colleagues discuss the company’s “How Is the Answer” campaign. His business management bestseller is entitled “How: Why How We Do Anything Means Everything.”

Seidman has filed suit alleging that Chobani has appropriated his brand by using “how” in precisely the way he uses it. The case is Seidman et al. v. Chobani, LLC et al., case number 1:14cv4050, in the U.S. District Court for the Southern District of New York.

Meanwhile, in the financial services sector, JPMorgan Chase & Co markets a brand called “SmartRetirement” and MassMutual markets a brand called “RetireSmart.” MassMutual has filed suit seeking a declaration that its brand does not infringe on Chase’s brand. MassMutual’s lawsuit demands the cancellation of JPMorgan’s trademark and alleges that “many individuals and companies” use the terms “smart” and “retirement” in connection with helping people save for their post-work years. The company also argues there should be no trademark on the term because it is “merely descriptive.” The case is Massachusetts Mutual Life Insurance Co v. JPMorgan Chase & Co, in the U.S. District Court for the District of Massachusetts, No. 14-cv-30183.

When a claimed mark relies on common words, a question is often raised as to whether the mark is “suggestive” or “descriptive.” A “suggestive trademark” is a mark that alludes to a quality or characteristic of goods and services. Such marks require a bit of imagination or thought on the part of a consumer to connect the name to a particular good or service. Greyhound (for the bus company) and Playboy (for the magazine) are examples of suggestive trademarks.

A descriptive trademark simply describes an aspect of the goods or services to be sold. Best Buy (for a retail store services in the field of electronics and appliances) or Vision Center (for an optics store) are examples of descriptive marks. If a trademark is considered to be descriptive, it will be entitled to full legal protection only if it acquires a “secondary meaning.” A descriptive mark attains a secondary meaning if the user of it so effectively markets the product or service with that mark that consumers come to immediately associate the mark with only that particular kind of good or service.

A “generic” term is one that does nothing more than describe or name the general product or service with which it is associated. “Homogenized milk” and “crushed red pepper” are generic terms. A generic term fails to distinguish between competing versions of the same type of product or service, and is said to lack distinctiveness. In Harley Davidson, Inc. v. Grottanelli, 164 F.3d 806 (2d Cir. 1999), the court rejected trademark claims by Harley Davidson to the word “hog.” Harley Davidson had sued a motorcycle repair shop called “The Hog Farm.” The court found that the word “hog” had been used generically to refer to various brands of large motorcycles by the1960s and that Harley Davidson had not attempted to use the word in its marketing to refer to only its goods until the 1980s.

The recent cases involving “how matters” and “smart retirement” may ultimately turn on questions such as whether the marks are merely generic and not entitled to full protection or whether they have acquired a secondary meaning such that should be granted full protection. Given what appear to be increased efforts to push boundaries between common words and phrases and fully-protected brands, it seems there will be many such disputes in the near future.

Intellectual Property Law and Heygood, Orr & Pearson

At Heygood, Orr & Pearson, our attorneys have handled numerous patent matters including prosecuting claims for infringement, as well as for interfered-with patent rights. For example, we have represented a client suing a large American pharmaceutical company for interfering with its patent rights to liposome technology and have represented an international businessman in a trademark infringement lawsuit relating to the diamond and jewelry business.

From multi-national corporations to small local businesses, we have experience representing a variety of clients pursuing a variety of intellectual property claims. We have handled claims brought by a large company for infringement of its rail car patent, claims by a local inventor for infringement of a patent for a childcare product, and claims by an Israeli company against a Fortune 500 company for infringement of its wireless technology patent.

Although technical knowledge and familiarity with patent rules and intellectual property law is a must for attorneys handling infringement claims, there is no substitute for courtroom experience. Our ability to prosecute trademark and patent infringement litigation is aided by our extensive trial experience. The seasoned litigators at Heygood, Orr & Pearson have the experience to take even the most complex case and explain it in terms a jury can understand.

Heygood, Orr & Pearson is AV-rated, the highest legal and ethical rating available from the leading law firm rating service. Our partners, Mr. Heygood, Mr. Orr, and Mr. Pearson are all Board Certified in Personal Injury Trial Law by the Texas Board of Legal Specialization and have been selected as Super Lawyers in the State of Texas for several years in a row.* Mr. Heygood and Mr. Orr are additionally Board Certified in Civil Trial Advocacy Law by the National Board of Trial Advocacy.

Heygood, Orr & Pearson routinely represents clients in federal and state courts throughout the United States. Our attorneys are capable of litigating trademark and patent infringement claims throughout the country. Firm attorney John “Jay” Pate is licensed to prosecute patents before the U.S. Patent and Trademark Office.

If you or your company is in need of representation in an intellectual property matter, contact us for a free consultation by calling toll-free at 1-877-446-9001, or by following this link to the free case evaluation form located on our website.


* Michael Heygood, James Craig Orr, Jr. and Eric Pearson were selected to the Super Lawyers List, a Thomson Reuters publication, for the years 2003 through 2014.

by John Chapman

John Chapman is a licensed attorney with experience in complex commercial litigation (including securities fraud, RICO, shareholder oppression, and derivative actions) and personal injury litigation.