How Can “How” Be Trademarked?

Having trademark protection over certain words or phrases is perfectly adequate and sometimes even necessary for the preservation and profitability of a business.  However, where is the line drawn over what words or phrases should or shouldn’t be protected? According to bestselling author Dov Seidman, the simple, common word “how” is included in this protection.

Seidman is the founder and CEO of the company LRN, a business that helps companies create ethical cultures, and is the bestselling author of the book HOW: Why HOW We Do Anything Means Everything.  Earlier this year (2014), Seidman brought suit against the Greek yogurt company Chobani and advertising firm Droga5 for Chobani’s use of the word “how” in their marketing campaign stating, “How Matters” (which Chobani has a trademark on) to push that their yogurt is 100% natural.  Seidman claims that Chobani’s use of the word “how” was to convey that they are an ethical company and this is the same way LRN has used the word in its business.  This suit is premised on the assertion that the meaning of “how” was trademark protected and not the word “how” itself.  Chobani responded by denying they had knowledge of Seidman or of the trademark protection, and by asking the court to deny LRN’s trademark protection over “how”.

Almost any phrase, word, logo or symbol can be registered for trademark protection under the Lanham Act as long as two requirements are met: it’s used in commerce and it is distinctive.  Seidman’s use of “how” is clearly used in commerce.  The second requirement, trademark distinctiveness, is usually divided into four categories: arbitrary/fanciful, suggestive, descriptive, and generic.  A descriptive category is only protected if it has a secondary meaning known to the public that refers to the specific product or service, while a generic category is never protected because it refers to common terms that do not refer to any particular source.

This suit brought by Seidman would likely have to show that LRN’s use of the word “how” is in the descriptive category and not generic.  In determining a secondary meaning for a questioned word, courts generally have looked at direct consumer testimony and surveys, exclusivity, length of protection, manner of use, amount and manner of advertising, amount of sales, number of customers, established place in the market, and proof of intentional copying.  LRN is established in their market and have a fair amount of advertising, sales and customers.  However, it is probable that there was no intentional copying on Chobani’s part as Chobani and LRN are not competitors in the same market.  “How” is such a common word that a suit like this, if won, could open up new doors that the courts may not want to open.  If Seidman can show a majority of these factors have been met, then he may be able to show valid protection; however, even if the trademark is valid, he still has to prove that Chobani infringed on his rights.

To show trademark infringement, the plaintiff has to show they have a valid protected mark, the defendant used the same or a similar mark in commerce, and the use of the mark would likely cause confusion of association with the suing party.  The problem with Seidman’s suit is the fact of causing confusion.  Even though the similarity of marketing an ethical business may have merit, it is unlikely that consumers would confuse Seidman’s use of the word “how” with Chobani’s use of “How Matters” since they are different businesses in different markets.

Ultimately, it will be tough for Seidman to show valid protection over “how” and win this suit on an infringement by Chobani. For any business trying to assert trademark protection over a common word such as “how”, they need to obtain a strong consensus among consumers that the word is associated with the specific product or service asserted by the business and is not in the general category of distinctiveness.  Otherwise, trademark protection for common words may not be much protection at all.

* Alec Roberson is a second year law student at Wake Forest University School of Law and hopes to practice sports or tax law after graduation. He holds a Bachelor of Arts in Political Science and a Bachelor of Science in Accountancy from the University of North Carolina at Wilmington.