Sufferin' Trademarks: The Trademark Dispute Over The Word Succotash

from the generic-defined dept

Tue, Dec 27th 2016 5:09pm — Timothy Geigner

If there is a common theme that runs through much of the posts we do on trademark disputes, it's that the ultimate responsibility for them lies at the feet of a USPTO that's only too willing to grant privilege on words and terms when it should not. The examples of this abound, from a video game trademark on the term "candy" to trademarks being granted in the entertainment market for the word "live."

And now we can add to this list that the USPTO apparently granted a trademark for the restaurant industry to a company on the word "succotash." This came to light when that company, Knead Hospitality + Design, sent a cease and desist notice to Beth Barden, who runs a restaurant in Kansas City that goes by the name Succotash.

Barden learned via email that Knead Hospitality + Design filed a trademark registration for Succotash and requested she remove the trademark symbol from her website. But the D.C. company's move has bigger implications: The filing gives it the nationwide right to use that trademark in connection with bar, catering and restaurant services. If Barden wanted to expand or franchise outside the Kansas City area, she could be subject to trademark infringement, said Cheryl Burbach, a partner in Hovey Williams LLP, an Overland Park intellectual property law firm.

"All of a sudden, your name isn't yours anymore," Barden told the Kansas City Business Journal. "It's a little terrifying because clearly they have more money than I have, more opportunity to fight this thing than I do."

Now, notably, Barden's restaurant is over a decade old, while Knead Hospitality + Design came to be only in 2014. As such, Barden likely has all sorts of protections available to her via common law trademark rights. She has hired an attorney to fight the C&D... and to get Knead's registration cancelled. And that really should happen, because allowing a trademark in the restaurant industry that consists entirely of the name of a common dish is insane. So insane, in fact, that that's the reason why Barden herself never even bothered to attempt to register the trademark herself.

Barden said she never registered a Succotash trademark because she didn't think a common vegetable dish could be trademarked. Even so, Barden is considered a senior user who owns prior common law trademark rights in the Kansas City area. Knead filed its trademark application on March 14, 2015, well after Barden began using the name in Kansas City.

Her naiveté would be quite sweet, had it not led to her now having to pay an attorney to keep a trademark bully with a mark that never should have been granted in the first place at bay. Which brings us all the way back to the original point: if the USPTO can't be bothered to think about a trademark application for long enough to realize it never should have granted this particular mark, the time for new oversight is at hand.

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Filed Under: succotash, trademarks, uspto

22 Comments

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Anonymous Coward, 27 Dec 2016 @ 5:35pm

Trying to trademark common words should be penalized
Anyone attempting to trademark common words already in use should be forced to pay for each and every legal dispute that results from their retarded trademark request. Anyone who grants such an insane request should also be responsible for paying the fees of attorneys.
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Krolis (profile), 27 Dec 2016 @ 5:44pm

Looney Tunes hasn't does this already with Sylvester the Cat?
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- Anonymous Coward, 27 Dec 2016 @ 7:29pm
  
  Looney Tunes
  They also didn't think the USPTO would be suffering succotash as a trademark.
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- Bruce C., 28 Dec 2016 @ 3:07pm
  
  Re: Looney Tunes
  Yeah, and whoever owns Warner Bros now (is it still Time Warner?) will go after anyone who uses "Suffern Succotash" as a trademark. Fortunately this only affects the people in a small town in New York.
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orbitalinsertion (profile), 27 Dec 2016 @ 5:45pm

I wonder if one could trademark "USPTO" for use in the toys, clothing, and comedy spaces.
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Anonymous Coward, 27 Dec 2016 @ 6:01pm

"...the time for new oversight is at hand." Not with Trump in charge - there won't be oversight for anything.
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- The Bad Anon, 27 Dec 2016 @ 9:23pm
  
  Re:
  You're probably right about that, but that doesn't mean it's not time anyway. If anything, it'll just be more time in 4 or 8 years when someone else gets to set up shop in the Big House.
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That Anonymous Coward (profile), 27 Dec 2016 @ 7:23pm

I don't have the energy to do so, but I wonder if someone were to look back in the history of USPTO and find where there were huge complaints about how long it was taking, so the answer was to approve first & let the courts sort it out.

Makes awesome soundbites about how innovation is being protected, when you ignore the hundreds of cases like this where a stupid mark is approved that even a 10 yr old would turn down.

There is this stupid assumption that everything can be boiled down to black and white. There should be time to review submissions, but demanding a metric that only allows 2.5 minutes to review it & penalties for the processor for falling behind that pace isn't the good answer. The system could be improved, but that would require thought beyond a good soundbite.

The system is broken, has been broken, and will keep being broken until magically Congress finds the will to actually fix it rather than pay lip service to the issues. The banks were to big to fail, and it seems so many departments in the government are to big to succeed or to be reformed.
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- Anonymous Coward, 27 Dec 2016 @ 8:32pm
  
  Re:
  > The system is broken...
  
  I don't know about that. It seems to working quite well for the lawyers.
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- That One Guy (profile), 28 Dec 2016 @ 12:40am
  
  Re:
  Part of the problem is the incredibly stupid idea that 'more imaginary property' = 'more innovation', as though there was an actual link between the proliferation of patents and trademarks and more new things being created(besides billable hours).
  
  Now, this idea might hold some weight were the system only awarding such things for actual innovation, where something that is in fact new and/or a new use/remix of something old was made, but when you can get a patent on trivial crap that's been around for ages and use it to shake down those actually making things, or trademark the name of a dish that's been around for at least decades, the idea that 'more patents/trademarks' equals more new and innovative ideas and creations goes right out the window and under a train.
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- Anonymous Coward, 28 Dec 2016 @ 3:50am
  
  Re:
  The USPTO should increase the application fees until they can afford the amount of staff needed to handle the load.
  
  We need to protect the little man, the fees should be progressive based on the annual gross income of the entity making the application. If any parent entity of the one making the application produces income then the totality of income between all parents is used to calculate the fee. Require all transfers of IP to inform the USPTO where the fee is based on the same sliding scale of the purchasers income. If it is revealed that an entity hid the parent owners income resulting in lower application fees then any approved applications become voided without the ability to appeal.
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- Weeee, the peeps, 28 Dec 2016 @ 10:18am
  
  Re: Broke Congress... along with most everything else
  Your comments are insightful, well intended, and appreciated by we few. Unfortunately, your reference to a fix by congress ignores the fact that congress itself is broken, along with dog and pony show election cycles that drag on for months and years to distract we sheep from state sponsored fake news sloppily presented as pablum for the populi.
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Scote, 27 Dec 2016 @ 8:44pm

"Her naiveté would be quite sweet, had it not led to her now having to pay an attorney to keep a trademark bully with a mark that never should have been granted in the first place at bay."

Not really naiveté given that Tech Dirt agrees that the USPTO "never should have granted this particular mark," and it shouldn't be granted to *anybody*. If she'd applied for it Tech Dirt would have said *she* was wrong to register a generic word as a trademark.
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Anonymous Coward, 28 Dec 2016 @ 3:01am

Those Zany White Folks and Their Wacky Ownership Hijinks
"...at least decades..." qualifies as Churchillian understatement. The original, Native American word already existed in Naragansett in at least the 17th century. Kind o' fun to see white people fighting over the rights to dominate the use of a word from the language of a people whom they destroyed - very...innovative.
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- That One Guy (profile), 28 Dec 2016 @ 7:22pm
  
  Re: Those Zany White Folks and Their Wacky Ownership Hijinks
  It was from a quick search on wikipedia that mentioned the dish being 'popular' during the great depression, but hey, enjoy making mountains out of molehills if that's your hobby I guess.
  
  (Also, the 'reply to this' function helps when responding to someone)
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Anonymous Coward, 28 Dec 2016 @ 5:46am

Its simple the uspto should stop giving trademarks
on single words in common use or say company x gets
trademark on company x bacon but that does not mean
it can sue any company that uses the word bacon
in products or trademarks .
eg only one company can use the word pepsi cola on drinks ,
I can still sell company x cola .
apple does not sue companys that use the word mp3 player
or tablet .
its crazy a company can get a trademark on a single
word that has been in common use for a 100 years .
most electronic devices are made in china because
it has large factorys and 1000,s of engineers ,
If we just go by patents ibm would be the no 1 american
computer company instead of apple .
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Stosh, 28 Dec 2016 @ 10:21am

I wish I had known there was a trademark restriction on the word succotash 50 years ago when my mother used the term, and I refused to eat it...
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Entrepreneurman (profile), 28 Dec 2016 @ 11:39am

willful false statements
Not only is the USPTO too willing to grant federal trademarks on common generic terms (i.e. "entrepreneur"), the USPTO refuses to go after companies that make fraudulent statements to get or keep trademarks.

The USPTO refuses to do anything even though companies submit declarations acknowledging that making willful false statements to the USPTO is "punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the United States Code."

For example, the USPTO has known for years that trademark bully Entrepreneur magazine gets and keeps trademarks by making willful false statements (including using the alias of "Chase Revel" to hide extensive criminal history of the mag's founder, and also submitting false specimens).

But the USPTO refuses to go after Entrepreneur magazine's fraudulently acquired and maintained trademarks.

NOTE: Entrepreneur magazine is so fraudulent, that they have to continue their use of aliases to attack highly accurate comments about their fraudulent trademarks!
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- Entrepreneurman (profile), 28 Dec 2016 @ 5:23pm
  
  Re: willful false statements
  Below is a list of some of Entrepreneur magazine's recent efforts to monopolize the word "entrepreneur" at the USPTO. But most, if not all, of these entrepreneur-related trademarks have already been REVIEWED and APPROVED by the USPTO's trademark examining attorneys (Note: over 95% of federally registered or pending entrepreneur-related trademarks are NOT owned by Entrepreneur magazine!):
  
  1. VENTUREPRENEUR (For: Providing business research and Educational services)
  2. PREDICTIVE ENTREPRENEUR (For: Education services)
  3. ENTREPRENEUR IN LOVE (For: Consulting in the field of personal relationships)
  4. THE PHILANTREPRENEUR (For: Educational and entertainment services)
  5. THE SMART ENTREPRENEUR (For: books, business seminars, MP3 files, etc)
  6. ENTERTAINEUR (For: blogs featuring information on entertainment, entrepreneurship, and law, etc)
  7. ENTREFEMMEUR (For: website featuring articles and discussions about women's careers and entrepreneurship)
  8. M ENTREPRENEURLAND (For: Business consulting services)
  9. EVOLVING ENTREPRENEUR (For: Business education and training services)
  10. ENTREPRENEURS' GUIDING PRINCIPLES FOR SUCCESS (For: Education and entertainment services)
  11. THE LONELY ENTREPRENEUR (For: series of books and written articles in field of entrepreneurism)
  12. CLUB ENTREPRENEUR (For: Incubation services)
  13. THE 10% ENTREPRENEUR (For: Education services, Books in field of entrepreneurship)
  14. ENTREPRENEUR'S PLANNER (For: daily, weekly, and monthly paper planners and diaries)
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  - Entrepreneurman (profile), 28 Dec 2016 @ 5:36pm
    
    Re: Re: willful false statements
    To be clear, this is a list of already APPROVED federal trademark applications that Entrepreneur magazine CEO Peter Shea has recently had his attorneys threaten at the USPTO.
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Anonymous Coward, 29 Dec 2016 @ 6:45am

The USPTO needs to be defunded.
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George, 29 Dec 2016 @ 12:16pm

We got the story wrong
I emailed the heads of this Knead company and apparently they received the cease and desist letter, not Ms. Barden:

Hi George,
The information you have is incorrect. That is not at all what happened and we would never ask her to stop using the name. It is she who has filed suit against us, unfortunately.

Sent from my iPhone
Cell ***-***-****

On Dec 28, 2016, at 2:11 AM, George wrote

Your company doesn't sound like the type of company I'd want around.
Shame on you, using your superior monetary weight to force someone to court over the word succotash. Don't sue me!
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