‘Tis the Season to Be Descriptive

After last week’s post featured Lola celebrating Thanksgiving in style, it seems only fitting for this post to cover the next phase of the holiday season. That’s right, we’re talking Black Friday and Cyber Monday! Given the commercial success associated with these two days each year, you may wonder whether “Black Friday” or “Cyber Monday” can be registered trademarks. The short answer is that they can be, but there are clear limits, and it is not in the way that you would expect. A quick search of the USPTO database shows that “Black Friday” and “Cyber Monday” marks have been registered. In fact, 33 results containing “Black Friday” and 8 results containing “Cyber Monday” turn up in the search. Why don’t those results spell certain trademark infringement doom for the army of retailers that use those terms in their advertising?

              These results don’t spell doom because “Black Friday” and “Cyber Monday” are descriptive in the context of retail services. Our earlier blog post has further discussion of descriptive vs. distinctive. Since both terms are commonly used to identify the popular retail shopping days on the Friday and Monday after Thanksgiving respectively, the USPTO has and will continue to deny registration for these terms by themselves for retail services. That means that the search results I found achieved registration by one of two paths.

The first path is using the mark for goods and services where the mark is not descriptive. Think of how an “Apple” trademark is descriptive for fruit, but it is not for tech products. Lakefront Brewing Company here in Wisconsin went this first path to register its “Black Friday” trademark for beer.

The second path is to use the mark for retail services in the way that raises the mark’s distinctiveness above descriptive. Build-A-Bear Workshop did this to register its “CyBEAR Monday” trademark. It is worth noting that the USPTO seemed concerned about descriptiveness when examining the application, so it made Build-A-Bear disclaim “Cyber Monday” as part of the registration. Another of our earlier blog posts discusses trademark disclaimers, but suffice it to say that the disclaimer essentially limits the registration to protecting a verbatim use of the mark, rather than “Cyber Monday” generally.

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