Can a Trademark Be Too Clever? Elon Musk Attempts to Find Out.
Elon Musk is boring. In an effort to solve the traffic problem in Los Angeles, Musk has begun implementing plans to build underground tunnels for a high-speed rail system. To do this, Musk founded “The Boring Company” in 2016 and has since begun testing designs and methods for establishing a low-cost tunnel system underneath the city of Los Angeles, with intentions to expand throughout the world. And in case you don’t get the pun…the company is literally boring tunnels underground. But he's gonna need a good trademark lawyer to get out of this one.
Elon Musk is far from the stereotypical entrepreneur and investor, so it’s no surprise that his most recent business venture incorporates a play on words. The double entendre name blurs the line between being an oxymoron and just plain descriptive – depending on how you read it. Like any astute businessman, Musk applied for a trademark for his business name in 2017, but the application has since been rejected by the Patent and Trademark Office as being descriptive. His appeals still in process, he'll definitely need a good trademark lawyer.
So that begs the question: what makes an effective trademark?
The purpose of a trademark is to enable the public to identify and recognize the goods or services as relating to a particular company. A trademark also provides protection to its owner, ensuring that a competitor will not be able to profit off of the use of another’s logo or slogan. Trademarks are also considered an aid to the consumer in deciding whether to purchase a desirable product.
The most protectable trademarks are fanciful made-up terms like “Kodak,” arbitrary terms like “Apple” for computers, or suggestive terms, like “Coppertone.” However, generic and descriptive marks are not readily eligible for trademark protection, as they merely describe the goods and services they represent. For instance, you could never get trademark protection for “Brick Brand Bricks” because “brick” is a generic term and descriptive marks like “Cold and Creamy” for ice cream would likely be rejected by the USPTO for being merely descriptive. The words so readily describe the service that it would be unfair to not allow other parties the right to use the terms.
Therefore, it is important to develop a protectable trademark for a product or service. To do so you should consider the following:
What is your company's brand and how will your mark relate to that brand?
What should the mark convey to your ideal market?
Are there other companies that have a similar mark to yours?
Is there a likelihood that consumers will confuse the mark with those of other goods and services?
In the case of Elon Musk’s Boring Company, although the double entendre is a cheeky way of illustrating his business model, it is likely that the plain meaning of the word “boring” in relation to what the company actually does pushes the phrase into the descriptive category. The Boring Company shows that it is not always guaranteed that the Patent and Trademark Office will understand your intention in choosing your mark. If the USPTO doesn’t like your reasoning, they can ultimately reject your application for trademark law protection, as they did with Elon Musk. Musk's next appeal is due in November.
Article by Kristin Hammond and Scott Brown