A Federal district court in New York ruled that Kate Spade’s Saturday brand does not infringe Saturdays Surf New York City mark. The decision focused on the use of the term “Saturday” by more than one business in the fashion and clothing industry. Not just by these two brand owners, but also by other manufacturers and retailers. When a term is used by many businesses, it is considered a “weak” mark and cannot be monopolized by any single business. To the contrary, the more unique a trade name, the stronger it is – it is memorable by its distinctiveness. That makes it easier to protect and creates stronger trademark rights for the brand owner.
Businesses often try to use different adaptions or deviations of trendy names to capitalize on the trend. This can be a complicated trademark issue. Take for example the recent food trend in pomegranates. POM brand juice came out and was followed by pom-this and pom-that. The problem is that using the term “Pom” for pomegranate flavored foods was not particularly unique. The analysis of whether one mark is confusingly similar to another mark with shared elements (“Pom”) is a complex one and can result in seemingly inconsistent conclusions. Commonly used or rather obvious terms are difficult to protect as proprietary marks because secondary meaning (consumer recognition) is difficult to establish.
The takeaway here – try to choose unique branding and steer away from commonly used terms to have a strong mark with commercial value that can be easily asserted and defended.