Argument Against Trademark

I am the recipient of a “Cease and Desist” letter from an attorney representing the holder of US Trademark Application, serial number 3532912, for the word “Frugalista.”  The holder of that application has a blog hosted by the website of the Miami Herald called “Frugalista Files.”  She covers fashion and financial issues, primarily in South Florida.
I recently started a blog for friends and family in Jackson, Mississippi, called “Jackson Frugalista.”  This blog is dedicated to talking about special sales, consignment stores, rummage sales, etc., in the Jackson, Mississippi area.
I looked at the restrictions for the trademark application in question.  The short definition is that any use of the word “frugalista” in ANY online journal or blog, related in ANY way to financial matters or tips (such as notification of sales) is restricted to only the application holder.

I would like to suggest that this word is not one that should be restricted as such and that perhaps the trademark application should be rejected.
My understanding of “common use” words in trademarks includes three concepts: descriptive marks, secondary meaning and genericity.

    1) Descriptive marks — where the mark describes a characteristic or quality.  Such words are not protected unless they have obtained secondary meaning.  The definition of “Frugalista” is completely descriptive — “a person who is fashionable while being thrifty.”

     2) Secondary meaning — when the consuming public associates that mark/word with a particular producer/source, rather than the underlying meaning.  The public doesn’t have to know the producer, they must simply understand that a single producer is associated with it.  I assert that the word “Frugalista” does not have that kind of association with the South Florida blog or the holder of the mark, even when she is mentioned in passing by other authors who use the word.

     3) Genericity — “A word will be considered generic when, in the minds of a substantial majority of the public, the word denotes a broad genus or type of product and not a specific source or manufacturer.”  While the blog the application holder runs is well-known in South Florida, the word “frugalista” does not typically cause the public to think of the blog.  The word has a meaning altogether separate from the blog, as evidenced by its extensive usage on the web (see sites listed and linked below). 

I presume the definitions and exceptions were included in trademark law to prevent any one person or company from having exclusive legal rights to what are (or are becoming) common-use words.  The wisdom of those definitions and exceptions – indeed, the entire reason the Trademark Office provides mechanisms for application appeals – is to keep language free.
I’d also like to suggest that the claim made by the applicant of first use of the term is incorrect.  The applicant states “FIRST USE: 20080131. FIRST USE IN COMMERCE: 20080131.”  I’d like to list a few instances that prove that statement incorrect:

 - 2005 February 11, “OUR FRUGALISTA IS GETTING MARRIED!”, Palm Beach Post (FL), page 4E:
 - First use in online discussion, financial matters  http://groups.google.com/group/misc.consumers.frugal-living/browse_thread/thread/aaf76ee48d7def17/e2a36d560b8da154?hl=en&ie=UTF-8&oe=utf-8&q=frugalista&pli=1
          *  Post By Sweet Gal, Jan 12 2000, 3:00 am
For whatever reason, it is over balanced in magenta.  Any photo editing
program should be able to adjust it for you.  I think you can still download
a trial version of PaintShop Pro (frugalista Photoshop).   Paula
 -  Early use in blog:  http://makinggooduse.typepad.co.uk/making_good_use/2007/05/the_frugalistas.html
          * The Frugalista’s Bible – This book was a huge inspiration to me.  I bought it for my mother about six years ago, this coincided with me going from full time work to part time, and The Complete Tightwad Gazette gave me an enormous number of ideas and suggestions about ways to save money.
A quick search of the internet would have shown the applicant that the first use of the word online and for related commercial discussions/postings happened long before she submitted her applicant

There are other indications of the broadening popularity of the word, totally apart from the applicant’s use of it.  The New Oxford American Dictionary named “frugalista” a finalist for “word of the year” for 2008 in a press release dated November 10, 2008 – less than a year after the applicant claimed “first use” (http://blog.oup.com/2008/11/hypermiling/).  Given the clear use of the word before the claimed date of first use, it makes sense that the NOAD designation was based on much more that simply the applicant’s use.

Even noted language columnist William Safire described the word as his favorite for 2008, describing it as “used in 2005 by The Palm Beach Post and The Toronto Star and picked up since in a Miami Herald blog by Natalie McNeal that she calls the Frugalista Files.”  That statement is one of general association, not exclusive meaning (http://www.nytimes.com/2008/11/23/magazine/23wwln-safire-t.html).

Here is a short list of online uses of the word “frugalista” in online journals or blogs where little-to-no association is given with any product, service, or person associated with the applicant, further supporting the word’s genericity:

  http://en.wiktionary.org/wiki/frugalista

  http://www.walletpop.com/blog/2008/11/23/frugalista-great-word-even-better-concept/

  http://the-frugalist.com/2009/03/what-is-a-frugalista/

  http://lafrugalista.blogspot.com/

  http://www.noelheikkinen.com/2009/02/18/my-wife-the-frugalista/
 
  http://www.latimes.com/features/printedition/image/la-ig-ista14-2008dec14,0,6602009.story

  http://greenfrugalista.blogspot.com/

  http://www.cafam.org/blog/2008/12/frugalista-new-word-for-new-era_8139.html

  http://www.realwealthparadigm.net/blog/?page_id=23

  http://frugalistas.blogspot.com/ 

  http://littlemissknowitall.net/2009/01/28/moneyhacks-carnival-frugalista-style/

   http://radishmagazine.com/stories/display.cgi?prcss=display&id=428047

   http://stealsanddeals.ivillage.com/beauty/2008/08/fashionista-style-at-frugalist.html

   http://frugalistanation.blogspot.com/

   http://flypaper.bluefly.com/archives/2009/07/10-percent-off-everything-on-bluefly-today.html  
 

  http://www.ludoandthelion.com/2008_12_01_archive.html

Again, those links are the result of a BRIEF search.

Finally, the offline use of the word “frugalista” is becoming more and more common.  In March of 2009, the Target Corporation began development of a nationwide advertising campaign promoting inexpensive clothing options for women at their stores.  Those advertisements (television and print) make frequent use of the word in question. 

How is it fair to take a word that is generically utilized offline and restrict its use online?  Our language doesn’t work that way – we write and blog the way we talk.  I don’t believe the Trademark Office has any desire to maintain separate language standards for offline and online use.

The cease and desist letter I received stated that my use of the word “frugalista” online was “likely to confuse and mislead the consuming public and suggests an affiliation” with the applicant’s business.  It also suggests that my use “unfairly capitalizes on the goodwill and reputation embodied” in the applicant’s use of the trademark.  That makes as much sense as stating that anyone who uses the word “recession” is a threat to the CNBC brand.  This word, quite simply, is bigger than its “owner.”

The trade marking of common-use words like “frugalista” is fundamentally unfair.  The word is one that expresses a common desire among contemporary Americans, which is to find cost-effective ways of maintaining a pleasurable lifestyle.  It is laughable to think that the naming and discussion such a broad concept should be limited to one person or entity.  Allowing restrictions of this word to continue hinders one of the best uses of the internet, the free and open expression and exchange of timely ideas.
 
Please reconsider your approval of this trademark.  I look forward to your response.

  1. September 21, 2009 at 10:02 pm | #1

    Wow. The USPTO really dropped the ball here. You shouldn’t have to pay to appeal the patent, but I would encourage you to perhaps set up a Paypal fund. I’d be willing to contribute $10 just to see some lameass get her patent revoked, since it never should have been granted in the first place.

  2. deweyw
    September 23, 2009 at 1:16 pm | #2

    I see you are going to change your blog name – but – keep the old name – don’t let it lapse. Soon this fruga-nazi will get a clue – or the Streisand-effect will give her and her editors one – and so much negative energy will flow to her blog and newspaper that things will change.

  3. JD
    September 24, 2009 at 10:18 am | #3

    You need to find some legal precedents for your argument.

    And the way you are using the Internet to respond to a simple Trademark C&D request amounts to “cyber bullying”. You’re inciting people to threaten and harass someone and yet you write about Karma…wow. It’s disturbing the number of people you have calling McNeal names.

    You should be thanking McNeal–no one was reading your blog until you started posting the legal correspondence and getting yourself some free press. Now you have many more readers, so tell me, what is the damage to you? I see only GAIN!

    And yes, I can make my opinions known on the same sites that you are using–thanks for noting that in your comments back to US news.

  1. September 20, 2009 at 10:03 am | #1

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