TIL that P&G, the biggest name in CPG, filed a request with the United States Patent and Trademark Office to register LOL as a protected TM.
OK, that was confusing AF … so let’s step back a minute. As AdAge first reported earlier this week, the world’s largest advertiser recently filed several applications with the USPTO regarding “WTF,” “LOL,” “FML” and “NBD.”
WTH is P&G trying to do here? The company wants to use these phrases, commonly known as SMS (short messaging services) language or textspeak, “in commerce on or in connection with” several as-yet-unnamed products. They might or might not include “non-medicated liquid soap; dishwashing detergents; hard surface cleaners; and air fresheners.”
The goal is for teen text shorthand to adorn the packaging and marketing materials for Dawn, Febreze, Mr. Clean and/or their equivalents. These plans have been in the works for some time as the requests were originally filed in April, but they’re making news now because the Patent Office alerted P&G’s legal team to its lack of objections earlier this month, effectively allowing the requests to proceed.
FWIW, P&G is hardly the first company to try trademarking a popular acronym. For example, a tax prep app called What Tax Form failed to secure WTF, and the founder of a nail polish brand recently abandoned her attempt to register the brand name SAHM, or Stay At Home Mom. BuzzFeed, OTOH, successfully trademarked LOL—but only in its signature “sticker” image form.
So can P&G possibly win these trademarks? Yes, they can.
“Actually, it is feasible,” said attorney Ronald Coleman, chairman of the Intellectual Property and Brand Management Practice Group at Manhattan and New Jersey-based law firm Mandelbaum Salsburg. “The best example to demonstrate this point is to think of another product you would find in your kitchen: S.O.S. The phrase is part of the English language, [and] there’s no Morse Code in use anymore, so people don’t understand what it means. No one even thought that S.O.S was a kind of cleaning product until someone made steel wool pads for use in the kitchen and called them S.O.S.”
This early ’90s spot promoting the Clorox-owned line, whose name reportedly stands for “Save Our Saucepans,” reminds us that the brand was well aware of its inspiration.
There’s a key distinction here, Coleman said: “We always have to understand the difference between taking ownership and having a monopoly on a name or phrase and having exclusive rights to use a phrase or a word in connection with a certain product.”
Take, for example, Hershey’s PayDay brand. “Anyone in the world can say the word payday,” Coleman told Adweek. “But what they can’t do is say, ‘I make a candy bar called PayDay.'” Similarly, anyone can yell “S.O.S.” if they’re in a ship that’s taking on water; they can even use it for a line of women’s clothing. But there can be only one brand of steel wool pads bearing that name.
IOW, Coleman sees no reason why P&G shouldn’t be able to win the exclusive rights to use these phrases in connection to the brands in question. “That’s the whole idea: take a word or phrase that already rings in people’s ears and make it work for your product,” he said.
Laurie Marshall, Esq., founder of New York’s The Marshall Law Group, agreed that “under the standard of trademark law it should be allowed” as long as the LOLs are not directly related to the functions of the specific products themselves.
“LOL has even, in fact, been allowed for comedy shows, so even though it has a relationship to the services of comedy, the trademark office hasn’t found that it’s related enough to require a disclaimer,” she said. “And if that’s the case, then LOL for cleaning products would be distinctive enough to be permitted registration.”
P&G’s primary concern here, according to Coleman, is that a competitor—let’s say Unilever—beats them to the punch.
“The U.S. trademark system is based on first use, not registration,” he said. “You register ahead of first use so that when you do roll out your product, you can submit a very simple paper saying, ‘Remember how we said we were going to use this? Well, we used it.’ They only have to worry about someone else coming out with [similar products] between the time they file the application and the time they first use it.”
Despite the intense competition between these CPG giants, Coleman added, it’s unlikely that anyone will challenge P&G’s considerable legal prowess in this case.
“They should be able to do this,” he said. “That doesn’t tell you whether the products will be successful, but it’s a great idea.”
Spokespeople for P&G and the United States Patent and Trademark Office declined to comment for this story.