Intellectual Property Law

"First-Class Mail" is a Protectable (and Registered) Trademark?

By Michael Atkins

I ordered some photos online, which were delivered to me last week. The envelope was marked “USPS FIRST-CLASS MAIL.” That was expected, because I asked that the photos be sent by first-class mail. What wasn’t expected was the statement at the bottom of the mailing label that “FIRST-CLASS MAIL IS A REGISTERED TRADEMARK OF THE UNITED STATES POSTAL SERVICE.”

Well, that’s true; I looked it up. In 1978, the U.S. Postal Service obtained a federal registration for FIRST-CLASS MAIL in connection with “delivery services — namely, delivery of letters and goods by mail,” with the word “mail” disclaimed as generic. (Interestingly, the claimed first-use date is July 1, 1863.)

But FIRST-CLASS MAIL is a protectable trademark?

It seems awfully generic to me. Not that I had much choice in the class of mail service I ordered, but if I had, I would have requested that the photos be delivered “first-class” because they presumably would be delivered faster than second class, third class, book rate, or whatever other classes of service that exist. I also would think that “first-class” delivery would be cheaper (though slower) than overnight delivery. In other words, by specifying delivery by “first-class mail,” I used the words that denoted the specified class of service I desired. A first-class job is a job that someone performs at the highest level. A first-class seat is a seat that comes with the best service. How could I communicate the service I wanted without using the words “first-class”? That would seem to make the mark generic.

Now, the U.S. Postal Service would say that FIRST-CLASS MAIL only means one thing — a particular service that you can get from the U.S. Postal Service. In other words, the mark isn’t generic because it identifies the source of the service. But for me, the portion of the mark that conveys that information is the portion the U.S. Postal Service disclaimed: “mail.” To my mind, Federal Express and United Parcel Service deliver letters and packages, but they don’t deliver “mail.” In any case, I don’t see why private delivery companies shouldn’t be able to denote a certain level of service as being “first class.” I suppose if it’s a descriptive mark, and the U.S. Postal Service has had its registration since the ’70s, it would be well-nigh incontestable, cutting off an attack on grounds of descriptiveness. But I still think “first-class mail” denotes the service rather than the provider of the service. And if not, it’s the disclaimed portion of the mark that conveys that distinction — the word the U.S. Postal Service says isn’t capable of doing so.

In the end, it seems silly to me that an online photo printer feels the need to clarify that by arranging to have the photos I ordered delivered in the manner I specified, it’s not infringing the U.S. Postal Service’s trademark.

Isn’t that obvious?

Full post as published by Seattle Trademark Lawyer on December 20, 2010 (boomark / email).