As the father of a three year old boy, I spend… more time than I would like in public bathrooms. When you’re three, public bathrooms are a real place of wonder. Questions abound: Is there a “stand-up potty?” Is the paper towel machine automatic? What about the sink and soap dispenser, are they automatic too? And why can’t you touch anything in the stall? (Because people are disgusting, that’s why.)

A Legal Curiosity

On my fifth trip to the Riverside Park boys’ bathroom over the 4th of July weekend, the automatic soap dispenser caught my eye. It said “Healthy Soap®” on it, which seemed odd to me. Here’s why.

Merely Descriptive

First and foremost, “merely descriptive” parts of a potential trademark cannot be protected. The policy behind that rule makes sense—one cannot have a monopoly on words used to describe attributes of a product or service. For example, in the hypothetical trademark “Dewey Cheatem & Howe Law Firm,” the words “Law Firm” are merely descriptive of the legal services provided and cannot be protected. Attys. Dewey, Cheatem, or Howe cannot mount a trademark infringement lawsuit against another law firm for using the term “Law Firm” in their name.

Turning to “Healthy Soap,” I thought to myself, “Isn’t soap inherently healthy? Doesn’t it make you healthier? Isn’t ‘healthy soap’ just merely descriptive of an attribute of soap?” (Yes, this was a real thought I had. I can’t turn it off.)

The answer is yes. At least one Examining Attorney at the United States Patent and Trademark Office (USPTO) agreed with me that “Healthy Soap” is merely descriptive of an attribute of soap and cannot be protected as a registered trademark.

The Mystery of the Circle (R)

Now, let’s talk about the circle (R) that appeared next to the words “Healthy Soap” on the dispenser. The circle (R) means “Registered Trademark,” indicating that the USPTO has granted the trademark federal protection, and it is “registered” with the government. Circle (R) does not mean “in the process of being registered.” There is no “patent pending” equivalent when it comes to trademarks that is sanctioned by the government. Simply put, you can’t use (R) next to your trademark unless the mark is actually registered.

The Conundrum

If “Healthy Soap” is merely descriptive and therefore could never be registered as a trademark with the USPTO, Circle (R) should probably not appear next to it.

Thanks for reading. Now go wash your hands!