Is the name ‘Smoothies’ too fruity for a cosmetics brand?
A trademark for ‘smoothies’ for skincare, sounds fresh, fruity and healthy, right?
That was probably the idea behind the U.S. company that applied to register the word mark SMOOTHIES for cosmetics. The name is however just a little too... juicy.
The connection is clear: smoothies are nutritious, fruity and good for your body — qualities that are also appreciated in cosmetics. But what sounds appealing commercially can be a legal pitfall in trademark law, as the Boston-based company found out the hard way.
If a sign describes (or can be understood as describing) features such as the type, quality, or ingredients of the product or service, it is barred from registration. In this respect, there must be a sufficiently direct and specific relationship between the meaning of the sign and the relevant goods or services — consumers must immediately see it as describing the product or its characteristics. While ‘smoothie’ clearly refers to a drink, if the word can also describe characteristics of the cosmetic goods, registration is still excluded.
The applicant argued that the link between smoothies and cosmetics is only moderate. Do you really think of cosmetics when you hear the word ‘smoothies’? Also, the plural form makes it look more like a noun than an adjective — less likely to be seen as descriptive.
But the European Trademarks Officer (EUIPO) disagreed. The Office held that there is a clear conceptual link between the term and the products. Consumers would understand ‘smoothies’ as referring to the characteristics of the goods: after all, cosmetics and personal care items are often associated with natural ingredients like fruits and vegetables due to their perceived benefits. Market research even showed that ‘smoothie’ is already used in the beauty sector. So rather than seeing it as a brand, consumers would interpret it as a description of the type and quality of the goods.
The mark was therefore definitively refused. Unless the U.S. company appeals, they’ll have to come up with a new trademark name — or try to register ‘Smoothies’ as part of a distinctive logo (though the word element would then receive only limited protection).
Take note: when choosing a trademark name, even seemingly creative terms may carry meanings that link to your product’s characteristics — and that can spoil your chances at trademark registration.
Author: Erwin Haüer
Bio: Erwin is a trademark attorney and, as the managing partner, in charge of IT and Information Management. He works extensively with startups and scale-ups, while his clientele also includes numerous multinational corporations. Erwin possesses a sharp wit and a keen eye for remarkable trademark news and curious brand infringements.