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SB Master
The Just a Bit Too Extreme Infringer

Don’t Get Too Cute with “Protected Domain of Origin” Names

In a recent case appealed to the UK High Court regarding a trademark refusal “Nosecco” was found to be deceptive, and prohibited by EU law under its “Protected Designation of Origin” (PDO) for Prosecco.

Nosecco is actually a clever and memorable name, suggesting a similar-to-Prosecco non-alcoholic drink. And that’s the problem. Prosecco, along with Parmesan, Balsamic, Brie de Meaux, Sancerre, and hundreds of other food and wine names are reserved for products from specific geographies.

First used in 1411 to protect “Roquefort,” use of these protections grew when the modern…

This past summer something quite unusual happened: a trademark case was decided at the U.S. Supreme Court. This is rare, only one or two trademark-related cases/year are argued — and in some years, none — and most of these deal with procedural questions, damages, or dilution.

The USPTO vs. case, on the other hand, dealt with exactly the kind of issue name owners and creators worry about, that is, the uniqueness, registrability, and defensibility of one’s new company or brand name. Dating to 2011 when the USPTO (United States Patent & Trademark Office) refused to register

So Did Casper Always ave Something to Do with Mattresses?

You can probably visualize Casper the Friendly Ghost, a cartoon character created in the 1930s who has appeared in comics, 55 cartoons from 1945–59, five TV series from 1959–2012, the feature film “Casper” in 1995, and various spin-off films, videogames and commercials. You can even buy Casper pajamas or a Halloween costume for your kid.

Casper Sleep is a mattress company founded in 2014 (IPO Feb 2020) that sells mattresses, sheets and pillows, and most recently an app-controlled bedside lamp.

You might assume they would never meet in a trademark dispute. And that would be a fair assumption. Companies can…

A pioneer in professional name creation, SB is known for her creative and strategic naming and brand architecture innovations; for the famous names her companies create; and most recently for her software spin-off, Naming Matters.

Finding an ownable, defensible, and attractive name for a new company or product is always a challenge, a high-stake process for founders, investors, creative agencies, and enterprises. Creating names and evaluating them for availability (including the risk of being sued) has long remained the realm of founders struggling to do it themselves, creative agencies who do naming but not as their focus, and attorneys and…

SB Master

A pioneer in naming SB is known for her innovations in naming & brand architecture; for her many famous names; and for her Naming Matters software spin-off.

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