In the 1992 trademark case of Monarch v Ritam, the Federal Court decided the usage of the word “ooze” or “ooz” in the marketing of a novelty toy product goo. The Court decides that ooze is either generic or descriptive and does not qualify for Lanham Act protections. And for the second time, a federal court cites Teenage Mutant Ninja Turtles even though its not really involved in the case.
MONARCH LICENSING, LTD., Plaintiff, -against- RITAM INTERNATIONAL LTD., INC., and BRAVMAN ASSOCIATES, INC., Defendants.
92 Civ. 3108(PNL)
UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF NEW YORK
1992 U.S. Dist. LEXIS 8225; 24 U.S.P.Q.2D (BNA) 1456
June 12, 1992, Decided
The Court explains:
Ooz Ball is either a generic unprotectible mark or a descriptive mark which is unprotectible without secondary meaning.
Ordinarily, distinctiveness is a prerequisite to the establishment of trademark rights. Marks that are generic are never protectible. Marks that are descriptive rather than distinctive are protectible only on a showing of “secondary meaning.” See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 – 11 (2d Cir. 1976); Restatement (Third) of Unfair Competition §§ 13, 15 (Tent. Draft No. 2 1989) [hereinafter Restatement]
Monarch’s asserted trademark rights attach to the mark “Ooz Ball.” This mark results from the combination of two words: “Ooze” (with the final silent “e” dropped) and “ball.” This mark is used to designate an object which is denoted, or at least described, by those words. The object is delivered in the form of a ball and is intended to be used (at least partially) as a ball (by bouncing it and throwing it). The material of which the ball is composed can properly be called ooze. “Ooze” is a word from Old English which in ancient times referred to the muddy silt characteristically found in the beds of rivers or other bodies of water. From the Old English noun developed the same word as a verb, denoting the action characteristic of such muddy silt; the verb has in [*16] turn influenced the meaning of the noun which has come to include “that which oozes.” See I Compact Edition of the Oxford English Dictionary 1993 (1971). Thus a thick viscous liquid that flows slowly (or oozes) is Ooze.
A strong argument may be made that when this mark is used for this product, it is generic and therefore unprotectible, see Abercrombie & Fitch, 537 F.2d at 9; Restatement § 15; “Ooz Ball” is used in connection with a product that is a ball of ooze, or an ooze ball. As to the dropping of the silent “e,” such HN4Go to this Headnote in the case.spelling changes that do not affect pronunciation ordinarily will not save a generic mark. See, e.g., Leon Finker, Inc. v. Schlussel, 469 F. Supp. 674, 678 (S.D.N.Y.), aff’d, 614 F.2d 1288 (2d Cir. 1979); Restatement, § 14, Comment (a) and § 15, Comment (a); see generally 1 J. Thomas McCarthy, Trademarks and Unfair Competition § 12:12 at 555 – 556 (2d Ed. 1984).
The argument that the mark is generic is strongly supported by the text on the Ooz Ball packaging which, immediately under the trademark Ooz Ball, adds a descriptive line describing the product as a pod of “Intergalactic Ooze.” Also, the instructions on the package advise that if the product dries up, drops of water may be added to restore its “ooz-ability.” The inference is further reinforced by the fact that two other manufacturers of similar products, in addition to Ritam, have used the word ooze as part of the mark and/or description of their product: Dinosaur Ooze and Teenage Mutant Ninja Turtles Retromutagen Ooze.
At the very best, this mark sits at the low end of the “descriptive” category. As a descriptive mark, it is not entitled to protection without having achieved secondary meaning in the marketplace. See Abercrombie & Fitch, 537 F.2d at 10.
Monarch has made a very skimpy, conclusory and inadequate showing of secondary meaning. If the mark escapes the generic unprotectible category and is properly considered descriptive, it is, nonetheless, in all probability unprotectible because of inadequate proof of secondary meaning.
Recall that TMNT was cited before in a NinjaLaw case about soda and the cola wars because they made a “cowabunga cooler” product. While this “ooze” case is a more unusual product, it seems there were a lot of these oozes (and Ghostbusters slime) on the market and I think perhaps judges and law clerks like the “ninja turtles” and love the opportunity to mention it as we will see in many future cases as we continue to into NinjaLaw.