Selecting a Trademark Part 2 Distinctiveness

In our last trademark blog, we described steps for a prudent business owner to take in choosing a mark that will avoid conflict with existing marks. The second critical consideration is choosing a mark sufficiently “distinctive” from your product or service to permit its registration or protection.

An understandable tendency is to prefer a mark that will describe the nature or quality of that product or service. However, the closer a mark is to an actual description, i.e., the more indistinguishable it is from the product or service, the less likely it is to be accepted for registration or recognized as legally enforceable. While perhaps counterintuitive, a stronger, legally viable mark is one not ordinarily associated with the product or service you are going to provide, i.e., clearly distinct from that item.

Practitioners, as well as federal and state regulatory agencies, scale the degree of “distinctiveness” by categories:

Arbitrary and Fanciful Marks

The best marks are arbitrary or fanciful.

An “arbitrary” mark is a real word used to describe something that is normally unrelated to that word. A prominent example is the use of a fruit – Apple – to identify a company that makes computers and other electronics. Almost certainly, that company would not have been able to register its name as a sufficiently distinct trademark if its founders had called it “Computers, Inc.”

A “fanciful” mark is a made-up word or expression that does not have any actual previous meaning. They can also easily be registered and protected most of the time. EXXON and XEROX are famous examples, created words that have become widely associated with the products they brand. The danger is a unique mark that becomes so tightly associated as to become synonymous with the product. When XEROX used to describe only photocopiers, it came perilously close to being declared generic and thus unprotected (see below) because the public widely regarded the term for any brand of photocopier or even for just the act of making a photocopy. Xerox Corporation has had to take strong measures to prevent this, promoting the term for a host of other products as well.

Suggestive Marks

Suggestive marks reside lower down the scale. These are words or expressions that, when you hear or see them, suggest, in an indirect way, some quality or attribute of the product or service in question. Q-tips (for cotton swabs) and Greyhound (for bus transportation) are suggestive.

Descriptive Marks

A term that too directly portrays a quality of what you are attempting to identify becomes “descriptive” and thus further down the strong-to-weak scale. For example, “Chewy” would be descriptive of caramel candies. Federal or state trademark agencies would be unlikely to accept it for registration as a mark for use in branding caramel candies unless the applicant could show it was already using that name for some time and a significant portion of the public currently identified “Chewy” as a distinct brand of such candies.

Generic Marks

Generic terms are the lowest on the scale, carrying virtually no distinction from the products or services they identify. No applicant could likely register “CAR” as a trademark for an automobile manufacturer.

Thus, while a first instinct might well be choosing a mark that will swiftly identify or characterize a product or service, the law more readily recognizes and better protects marks with no or little logical connection to the item in question.

Our Of Counsel attorney, Helena Kobrin can help in the often high stakes process of choosing or defending a protectable mark.

As we have described in California’s Expanded Immigration-Related Protections and California Extends Protections for Whistleblowing Employees, several California laws protect employees, regardless of undocumented status, from actual or threatened retaliation for demanding workplace rights.

These state protections of immigrant workers, some of the strongest nationwide, would seem at odds with the federal law (Title 8, section 1324a of the United States Code) making employment of undocumented persons illegal and requiring companies to confirm an applicant’s ability to work in the U.S. by a completed “I-9” form supported by sufficient evidence (e.g., birth certificate, green card).

However, in Salas v. Sierra Chemical (2014), the California Supreme Court confirmed that an undocumented individual’s initiative and ability to land a job –- whether by falsified proof of work authorization or by an employer’s willingness to look the other way – does not then strip that person from this state’s protections from workplace discrimination under the Fair Employment and Housing Act (FEHA).

In Salas, a seasonal worker sued his former employer for FEHA disability discrimination and retaliation, alleging the company did not have the right to refuse to rehire him for a new season and accommodate his disability. He had worked for Sierra Chemical for four seasons, presenting an I-9 and social security card each time. During the last season, he had injured his back twice and had filed for workers’ compensation. The next season, Sierra said it would rehire him when he received a doctor’s release for full duty. It only learned of his undocumented status late in the lawsuit and then asserted it was immune from any FEHA liability because the rehiring, in retrospect, would have violated the above federal law.

The Court rejected the employer’s position. Mr. Salas was able to raise disability discrimination as the basis for Sierra Chemical’s failure to rehire him because consideration of his documented or undocumented status was not a factor in that decision. On the other hand, if Sierra Chemical had been diligent enough to determine Mr. Salas’s status and to have declined his re-employment on that basis, then he would have had no chance of bringing the FEHA claim. The decision turned on Labor Code 3339, created by the 2002 passage of Senate Bill (S.B.) 1818, providing all California workers the “protections, rights, and remedies available under state law, except any reinstatement remedy prohibited by federal law . . . to all individuals regardless of immigration status who have applied for employment, or who are or who have been employed, in this state.”

Mr. Salas’s FEHA rights were not entirely unaffected by his undocumented status. The Court also ruled that Mr. Salas had no right to collect lost wages resulting from any Sierra Chemical disability discrimination from the point that the employer learned he was barred by federal law from acquiring further employment in the U.S.

The employer lessons learned from this decision thus include:

(1) Do not hire workers who cannot satisfy the federal I-9 requirements;

(2) In California’s FEHA, any undocumented worker (whether that status is suspected or actual) is entitled to the protections against unlawful workplace discrimination, harassment and retaliation accorded to all employees; and

(3) On any later discovery that a worker is not (or no longer) eligible for employment under federal law (because of false documentation or any other reason), a California employer is prohibited from continuing that employment. However, because of the potential of a FEHA claim under the Salas guidelines, that employer should promptly obtain legal advice on how to promptly terminate that relationship.

For assistance with any questions on these subjects, you can contact our attorneys, Tim Bowles, Cindy Bamforth, or Helena Kobrin.

Cindy Bamforth, April, 23, 2015

New Court Decision on Delivery Drivers Shows the Issue Requires Detailed Analysis

The dividing line between properly classified employees and independently contracted workers can often be about as clear as mud. The June, 2014 decision from the federal Ninth Circuit Court of Appeals in Ruiz v. Affinity Logistics Corp illustrates the perils of a company’s miscalculation on this issue.

Sears contracted with the Affinity Logistics Corporation to make home deliveries of Sears merchandise to consumers. As a condition of hiring, Affinity required delivery drivers to work as “independent contractors” through registration of fictitious business names, maintenance of separate business licenses and commercial bank accounts, and one-year, automatically renewed contracts.

Affinity directed these drivers to work five-to-seven days/week and paid them $23 per delivery, usually with eight deliveries per day. The drivers held no special licenses or training. Nearly all leased their trucks from Affinity with fees deducted from paychecks. The trucks bore the Sears’ logos and Affinity’s name and motor carrier number on their doors. The company required drivers to stock their trucks with supplies required by Affinity’s procedure manual. The company required drivers to leave the trucks at Affinity’s warehouse at day’s end, leaving their keys in case someone else needed the trucks overnight. The Affinity manual also required specific uniforms and grooming standards for drivers.

The drivers had to attend meetings with company supervisors each day before starting their Affinity-designated sequence of deliveries. Supervisors also checked the loaded trucks daily for proper tools and other materials. Affinity also required the drivers to report completed deliveries to Sears by phone as well as to call in their progress to Affinity throughout the day. The company phoned drivers running late or off course to get back on schedule or on route. Affinity also conducted “follow-alongs,” supervisors tailing drivers for the first few stops to confirm a given driver was wearing a uniform and using the proper delivery procedure.

Affinity won the first round in court. Focusing on driver ability to hire helpers and back-up drivers, a federal trial judge in San Diego ruled the drivers were independent contractors. The Ninth Circuit reversed on appeal, finding the drivers employees under California law.

That Ninth Circuit appeals court relied primarily on the California Supreme Court’s guidance in S. G. Borello & Sons, Inc. v. Department of Industrial Relations (1989) 48 Cal. 3d 341 [256 Cal. Rptr. 543, 769 P.2d 399] that “the right to control work details is the most important or most significant consideration.” It concluded that Affinity’s right to control the details of the drivers’ work, including their equipment, “every exquisite detail” of their appearance, and the close monitoring and direction of driver movements and production was the most important factor supporting employee status. The appeals court rejected the trial judge’s emphasis on driver ability to hire helpers, observing that Affinity actually required the drivers to hire the helpers. Affinity also imposed the same degree of driver control upon any back-up drivers. The court thus ruled these factors amounted to Affinity’s “absolute overall control.”

As also directed by the Borello decision, the Ninth Circuit found many secondary factors that required the drivers to be classed as employees, including the drivers’ lack of a genuinely distinct business operation; the lack of specialized skill requirements; Affinity’s providing the drivers with trucks and requiring drivers use a specific type mobile phone; compensation that was essentially by the hour and not by the jobs completed; drivers’ delivery work was the central aspect of Affinity’s regular business; and the lack of any definite term for the relationship.

This has almost certainly been a very costly learning experience for Affinity. In addition to paying attorney fees through several rounds of court battle only to eventually lose at the higher court, the suit was brought as a class action, potentially applicable to all Affinity drivers the company had erroneously classified as independent contractors. Affinity is thus now potentially responsible for paying compensation, penalties and interest for its alleged failure to pay each such driver sick leave, vacation, holiday pay and severance wages and for return to the drivers the fees charged them for workers’ compensation insurance.

The proper classification of workers as employees or independent contractors is a case-by-case undertaking. If the trial judge and the three appeals court judges could not agree on the proper outcome in the Ruiz case, then a company’s decision on which way to go with classification for any given individual in countless other scenarios can be anything but clear-cut. See also, our blog article Independent or Employed?. Thus, skilled legal assistance in evaluating or reevaluating such classifications is good business. Please contact Tim Bowles, Cindy Bamforth, or Helena Kobrin in our office.

DANISKA CORONADO IS FIRM’S NEWEST LEGAL ASSISTANT

We are extremely pleased to have Ms. Daniska Coronado Iberico as a legal assistant with the firm. Daniska is a licensed attorney in Peru, with business, commercial, and corporate law experience. She recently moved to the United States to become a lawyer here, now working full time at Bowles Law while fulfilling her formal educational requirements for the California bar.

Raised in a family of lawyers, Daniska received her Bachelor’s Degree in Law at the University of Lima in 2011, having served there as Associate Editor for the Lima University “Advocatus” Law Review. Following admission to the Bar of Lima, she served in Peru as in-house counsel for transnational companies in mining, construction and hydrocarbons sectors. Daniska also has considerable experience on human rights education projects in her native country, serving as a volunteer for Youth for Human Rights International.

In addition to proficiency in her areas of legal practice, Daniska brings her Spanish and English bilingual skills to the firm. We welcome Daniska and look forward to working with her.

PAM HARDER IS NOW FIRM’S LEGAL ASSISTANT

We welcome Pam Harder as a firm legal and administrative assistant.

Pam joins us with a solid background in personnel management. She is pursuing the ABA-approved paralegal studies program at Pasadena City College, with graduation and California paralegal certification slated for August, 2016.

Pam assists our attorneys with information compilation analysis and legal research. She also works with our office manager on administrative and personnel-related matters. Pam is also coordinating a project to convert the office to paperless operation.

She is also Clementine’s mom, named by many well-placed people as Most Adorable Child in Pasadena for 2014, 2015 and, so far, first quarter of 2016.

PETER BREYER – IS FIRM’S FINANCE DIRECTOR

Mr. Peter Breyer has joined the firm as our finance director.

Peter comes to us with an extensive finance background in the publishing industry. As a chief financial officer, he supervised collections, disbursements and accounting procedures. He is pleased to be working with a law firm, having acquired an interest in the law during his work securing publishing rights.

Originally from Germany, Peter set out at an early age to travel the world, eventually settling in Los Angeles. In his spare time, Peter likes to read and take walks with his dogs. He is also an avid skier and in the winter has been spotted ripping up the slopes at Big Bear.

We welcome Peter to the firm and look forward to working with him!

CLARK CARR IS FIRM’S CLIENT SERVICES REPRESENTATIVE

Mr. Clark Carr has joined the firm as our client services representative.

Clark comes to us with an extensive background with international humanitarian organizations, including work in some 30 countries with government agencies and ministries, media, and the public.

In the 70s and early 80s, Clark served as teacher and curriculum development specialist for an Oregon educational foundation that now embraces a planetwide network of private institutions and instructors. He’s also an experienced business management consultant and the published author of two novels. Clark is also fluent in Spanish.

We welcome Clark to the firm and look forward to working with him!

The Law Offices of Timothy Bowles has been voted Pasadena Weekly’s Best Law Firm of 2019! We would like to thank our community for voting and allowing us to serve you since 1998. Click here to see where you can pick up your copy the newspaper out now!

Attorney Tim Bowles, July 2019

Tim Bowles, our lead attorney, has an extensive and successful 40-plus year history as a litigator.

A graduate of the University of California Berkeley (1971) and University of California Davis School of Law (1977), Tim mentored under some of the leading constitutional and trial lawyers of the day, representing churches of Scientology and related organizations. During this time, through court precedent and legislation, Tim helped establish and confirm valuable protections for free religious practice and conscience in America that continue to benefit individuals from all faiths and walks of life.

Having focused on management-side employment practice since the mid-1990s, Mr. Bowles has earned a top-“AV” Martindale-Hubbell rating by his peers and judges before whom he has appeared. He is a frequent law blogger on workplace issues and the author of the Bowles Law Report, a regular publication servicing over 20,000 recipients. Mr. Bowles is also a regular speaker for employers and professional groups, including seminars on a wide range of employment law-related subjects such as gender-based discrimination and harassment, employee pay practices and workplace dispute resolution.

From decades of experience, Tim has also developed model employment forms and workplace policy manuals adapted and in practice by thousands of employers.

Tim’s first journey into the developing world was to India and Nepal in the early 1970s, traveling through some of most poverty challenged regions of the planet. The experience affected him profoundly, witness to the hundreds of millions of people worldwide who bear the brunt of human rights deprivations and social injustices.

After some three decades of litigation work in the American courts, Tim returned to the developing world in 2005, this time to post-genocide West Africa as a volunteer for Youth for Human Rights International (YHRI), an organization dedicated to teaching young people their human rights as embodied in the 1948 Universal Declaration of Human Rights of the United Nations. He has since helped YHRI develop successful human rights education and youth leadership initiatives in Africa as well as the United States.

Beginning in 2014, Mr. Bowles has also volunteered to create and spearhead the African Literacy Project in West Africa for Applied Scholastics International, another NGO dedicated to effective, competency-based education and fighting illiteracy worldwide.

October, 2019