What comes to mind when one hears the term Long Island iced tea? More than likely, it’s the cocktail of gin, tequila, vodka, rum, triple sec and mixers popularized in the 1970s.
The drink looks like tea but that’s where any similarity ends. But despite widespread understanding that the term refers to a cocktail, it’s been registered for a line of actual teas.
Last month, the Long Island Iced Tea Corp., based on Long Island in New York, succeeded in getting a trademark registration for “Long Island Iced Tea,” for “Beverages made of tea; Beverages with a tea base; Fruit teas; Tea-based beverages; Tea-based beverages with fruit flavoring.”
The upshot seems to be that Long Island iced tea can be a generic term for an alcoholic drink that contains no tea. But Long Island Iced Tea can be a registered trademark for a non-alcoholic drink that is made of tea or based on tea.
Presumably, the company can’t make an alcoholic version of its iced tea and then claim exclusive rights to call it “Long Island Iced Tea.” Or can it? The registration disclaims any exclusive right to use “Iced Tea” by itself but doesn’t say whether it can have exclusive rights in an alcoholic version of its tea drinks.
In any case, the fact that the term was registered at all might be surprising. Terms such as Long Island iced tea that are used generically are usually rejected as trademarks because they lack distinctiveness.
Nonetheless, the Patent and Trademark Office issued the registration April 19 in the Supplemental Register, which is where it puts trademarks whose owners haven’t yet proved they are sufficiently distinctive.
In order to be a trademark, a term must be distinctive in relation to the goods it’s associated with. If a term is descriptive it can’t be distinctive and generally can’t serve as an indicator of the goods’ origin.
But if a descriptive term is used long enough, it can become associated in the minds of consumers with a particular source or producer. In other words, relative to trademark law, it’s can acquire distinctiveness. Proof of acquired distinctiveness is called “secondary meaning.”
All that’s important for the iced tea company, because a registration on the Supplemental Register doesn’t offer the same degree of protection as a registration on the Principal Register. For instance, a trademark owner on the Principal Register would be afforded the presumption that his trademark is valid in court, something not extended to those on Supplemental Register.
The tea makers can gather evidence of secondary meaning over time, strengthening their case for distinctiveness and applying for the Principal Register. That’s not true for terms that are officially considered generic; they can never become distinctive. “Pencil,” for instance, is the generic term for pencils. And no amount of secondary meaning is going to ever make that distinctive for anybody.
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