Collaborations in Creativity & the Law

Gibson Guitar Facing 15 Trademark Opposers

Posted in Articles, Audio, Genericide, Loss of Rights, Non-Traditional Trademarks, Product Configurations, Sight, Trademarks, TTAB, USPTO

A brand owner’s non-traditional trademark application will sometimes gain the critical attention of multiple direct competitors. Gibson Guitar’s unlucky number is apparently fifteen.

Last Thursday, Gibson’s guitar configuration application shown to the right and below was opposed by far more competitors than it has strings on the above ebony Gibson ES-339 Studio Electric Guitar:

  • U.S. Music Corporation
  • ESP Shibuya Enterprises, Inc.
  • Cordoba Music Group, Inc.
  • Collings Guitars, Inc.
  • Ed Roman Enterprises, Inc.
  • Armadillo Enterprises, Inc.
  • Schecter Guitar Research, Inc.
  • Westheimer Corporation
  • Peavey Electronics Corporation
  • Warwick GmbH & Co. Music Equipment KG
  • James Trussart Guitars, Inc.
  • JS Technologies, Inc.
  • Premier Builders Guild, LLC
  • Sadowsky Guitars, Ltd.
  • John Hornby Skewes & Co., Ltd.

The opposers contend that the shape of the guitar is either generic or lacking in distinctiveness as a result of the “rampant” use of identical or substantially similar designs by a multitude of third parties over the past half a century. They name names, decade by decade.

So, stay tuned as we follow this interesting trademark chord, anxiously awaiting to hear whether Gibson is able to play something more than a classic blues riff, perhaps on something like this 15 string bad boy:

It appears that the opposers have spent some time doing their homework; if even half of what they say can be proven, they’ll be strumming Gibson’s pain with their fingers, and killing the trademark application (not so) softly.

UPDATE: It appears we have officially reached the point where I can’t keep track of all our content, I’m reminded that Dan Kelly had a great post from 2010 dealing with the guitar head issue, enjoy:


Amy, Whatcha Wanna Do (About this TM)?

Posted in Articles, Branding, Infringement, Law Suits, Marketing, Trademarks, TTAB, USPTO

As we start to think about welcoming in the weekend, why don’t we all hum this Pure Prairie League tune, while viewing this image and reading this very brief blog post:

As this image (that I snapped this morning) shows, the skyway in downtown Minneapolis is sporting a relatively new snack shop called Amy’s. I’m not sure whether it is related to this one, only a block away. The branding and signage appears pretty different, but who knows?

I’m also not sure whether either of them are related to the pair of Amy’s that have suspended their present dispute at the TTAB of the USPTO, in order to have the federal district court in Austin, Texas decide not only the right to register, but the right to use. Sound familiar?

Anyway, within the last several days, the federal court in Austin, Texas, ruled that a trial will be necessary to decide the disputed issues of fact regarding whether likelihood of confusion exists as between the different Amy’s.

So, it’s probably fair to say, the dispute will be going “for a while, maybe longer.”

If my name is Amy, and I’m wanting to start a small business, and I’m seeing this trademark mess, I’m falling out of love pretty quickly with my personal name as my business name!

If your name is Amy, what you wanna do?

Converse: Stomping Out Counterfeits through Int’l Trade Commission Proceedings

Posted in Articles, Counterfeits, Famous Marks, Fashion, Infringement, Law Suits, Non-Traditional Trademarks, Product Configurations, Trademarks, TTAB, USPTO

Earlier this week, Converse launched an all-out offensive to combat what it considers counterfeit and knock-off versions of its Chuck Taylor All-Star line of sneakers. Reports peg the number as at least 22 separate lawsuits against more than 30 companies, both in district court and at the International Trade Commission (the “ITC”). The defendants read like a who’s who list in the fashion or retail world: Wal-Mart, Skechers, H&M, Ralph Lauren, Ed Hardy, Fila,  and others.  An image below, courtesy of the New York Times, shows the Converse All Star (left) next to the Fila version (middle) and Skechers (right):


And the view from the back, with a slight change in positioning from the front view

(From left to right: Converse, Skechers, Fila)

Halfway through one of the articles, I realized that even I had fallen victim to one of the defendants. I purchased these guys about a year and a half ago:

Making a direct comparison, there are certainly similarities. The white sole, the toe bumper, and the midsole cap all match up with the claimed mark in Converse’s registration. Other similarities include the placement of the brand name on the back sole as well as the contrasting use of a white sole with a solid colored top. However, there are no laces or other similarities with the toe box, mid-sole, or any portion other than the rubber sole.

There certainly will be a lot of digital ink spilled on this lawsuit as there are a number of interesting legal issues. But one item that isn’t discussed as frequently in the trademark is the role that the ITC can play as part of a robust intellectual property enforcement strategy.

As noted above, Converse filed a complaint (small ‘c’ complaint) with the ITC, alleging similar facts as those in the district court complaints. The relevant statutory provision is 19 U.S.C. Sec. 1337 (aka Section 337 of the U.S. Tariff Act). The ITC provides a distinct forum with unique advantages for certain situations. The ITC Trial Lawyers Association has a helpful FAQ here. One of the primary differences of an ITC proceeding is that it utilizes in rem jurisdiction based upon the presence of imported goods. The ITC will consider claims of trademark, patent, and copyright infringement, as well as trade secret misappropriation and a limited number of other business torts. Once an investigation is instituted, it is conducted similar to a Trademark Trial and Appeal Board or district court proceeding. There is an Administrative Law Judge, discovery, motion practice, and a trial. A major difference, though, is that an ITC staff attorney can participate throughout the process in order to ensure that the public interest is protected (also, no jury). Decisions of the ITC can be appealed to the U.S. Court of Appeals for the Federal Circuit and the decisions  (decisions are also subject to official “disapproval” by the President, but this rarely occurs).

If the plaintiff is successful, the ITC can issue permanent exclusion orders or cease and desist orders. Exclusion orders prevent the importation of the articles at issue in the proceeding (and potentially those of third-parties). The cease and desist order can enjoin defendants from certain activities within the United States. There are no damages available at the ITC.

Proceedings at the ITC may not always be available or a cost effective means of trademark enforcement. The ITC is most appropriate for consumer goods. And because money damages are not available, the volume of imported infringing goods must be large enough to justify the cost and expense of an ITC proceeding. The proceedings are also helpful where a trademark is unregistered and therefore cannot be recorded with the U.S. Customs and Border Protection division of the Dept. of Homeland Security.

There are a number of potential benefits to an ITC proceeding:

  • The process has a compressed schedule and often is concluded within a year;
  • Although damages aren’t available to the plaintiff, violations of an exclusion order carry up to a $100,000 fine per violation;
  • The ITC can enforce unregistered trademark rights as well as copyright, patent, trade secret, and general unfair competition claims; and
  • The ITC can issue exclusion orders that are not subject to the “irreparable harm” standard for traditional injunctive relief.

The last bit is worth highlighting. In light of the Supreme Court decisions in eBay v. MercExchange, 547 U.S. 388 (2006), and Winter v. Natural Resources Defense Council, 555 U.S. 7 (2008), district courts and appellate courts have begun raising the bar for plaintiffs to obtain injunctive relief for trademark infringement. For decades, most jurisdictions provided a presumption of irreparable harm upon a successful showing of a likelihood of confusion in a trademark infringement action. The Ninth Circuit reversed this long-standing case law in Herb Reed Enterprises, LLC v. Florida Entertainment Management, Inc. Although the plaintiffs appealed, the Supreme Court denied cert on October 6, 2014.

Depending on the fate of the presumption of irreparable harm in trademark cases, practitioners may want to take note of the remedies available at the ITC as the ease of obtaining an injunction upon a successful showing of likelihood of confusion may change the calculus as to whether an ITC proceeding would be worthwhile. Although the ITC isn’t as well-known as the other players in the game, if the other circuits follow the Herb Reed lead, the ITC may soon become an all-star in the minds of trademark lawyers around the country.

Targeting an Old Liquor Store

Posted in Branding, Famous Marks, Marketing, Trademarks

When I moved from Minnesota to Wisconsin to go to college, among the local customs that I had to get acclimated to were the revulsion against the word “pop” for carbonated beverages named “soda;” hearing classmates say “I just need to find the time machine” when they meant an ATM branded with Tyme; and the foreign concept of adults of legal age being able to purchase liquor in the checkout lane at the grocery store.  Minnesota, in case you’re not familiar, has some rather Puritan restrictions regarding liquor sales, including:  no Sunday sales, no sales in grocery stores, and most liquor stores close before 9 pm.

Even with these restrictions, that great Minnesota retail institution known as Target (say it with a French accent and it sounds even more noble) has come into the mix here locally.  Likely wanting a piece of the growing market for craft beer, wine and spirits, Target began opening liquor stores in the state over the last few weeks, first in Ostego and a second planned in St. Louis Park.   While this seemed like huge news to me, I guess it really only applies to Minnesota.  As Tim informs me, you can generally purchase liquor at Target in almost any other state (or at least the one that matters, Iowa).

Upon reading that news, this St. Paul girl immediately thought of this iconic sign at Snelling Ave. & University Avenue in St. Paul.


Snelling Ave. Fine Wines is a liquor store located about 6 blocks from the nearest Target and 4 miles down Snelling Avenue from the first Target store in the U.S in 1962.  Until writing this post, I did not realize this store actually had a name; I’ve always referred to it based on the sign.

Target Brands owns a registration for the “Target” bullseye symbol, originally registered for a “retail liquor store,” but that portion was cancelled sometime earlier than 1993 (it’s difficult to tell exactly when from the available record in the USPTO online database).  They have some more recent intent-to-use based filings for the brand’s smaller concept retail outlet, Target Express, that feature the bullseye symbol and include liquor store services as part of the identification of goods.

Now, I couldn’t locate much regarding the history behind this sign or whether Target and the owner of the liquor store have ever battled over this sign in the past. My sense though is that the sign is related to Target’s past use of the mark in the liquor store industry.  If any readers out there have any information regarding the sign, I would be interested in its history.  I’m sure local architectural historian Larry Millett or my uncle Tommy would have something to add.

Given Target’s entry – or re-entry after almost four decades – into the Minnesota liquor store market, is there a possibility of consumer confusion between Snelling Ave.’s signage and Target’s use?  I suspect that there might be some, but Target’s use to date has only been as a cordoned off section of a much larger retail location where you can purchase everything you need.  Consumers are not generally conditioned to a small, Target branded store offering products in only one segment.  Even with this new smaller Target Express, products will be sold in multiple segments.  And certainly in Minnesota, consumers know that they can only buy liquor in liquor stores or through a separate entry at a grocery store.  Could Target enjoin Snelling Ave. Fine Wines from using the sign?  Probably not, given the likely availability of a laches defense (an unreasonable delay in bringing a lawsuit that prejudices the other party) and the City of St. Paul’s interest in preserving its historic landmarks, buildings, and signage.

This signage makes me think of another Minnesota institution, although these are franchised locations:


Based on the growing interest in nostalgia and heritage branding, one would think that Target might want the sign back.

Right to Use/Register TMs: Webinar Friday!

Posted in Branding, Infringement, Law Suits, Trademarks, TTAB, USPTO

We have spent quite a bit of time here discussing the critical difference between a brand owner’s right to register a trademark, as compared to a brand owner’s right to use a trademark.

We have noted that these are distinct rights — they are not coextensive rights. Just because a brand owner is denied the right to register based on likelihood of confusion doesn’t necessarily mean that the brand owner has infringed the trademark rights of another with prior rights.

We also have expressed concern, but remain hopeful that the U.S. Supreme Court will recognize this important distinction when it hears oral argument in the B&B Hardware case this December.

Now is your chance to learn more about this important topic, and engage on this topic in an upcoming live webinar sponsored by West LegalEdcenter, details can be found here.

I’m looking forward to a lively discussion with Patrick Gallagher of the Norton Rose Fulbright firm and Draeke Weseman of the Weseman Law Office. We hope you’ll join us!

Bottega Veneta Unties a Trademark Knot

Posted in Advertising, Articles, Branding, Fashion, International, Look-For Ads, Marketing, Non-Traditional Trademarks, Product Configurations, Sight, Trademarks, USPTO

It is easy for some to get all tied up in knots at the USPTO when facing challenging grounds for refusal against federal registration of a claimed non-traditional trademark. Not Bottega Veneta.

Last week the Swiss-owned fashion house and luxury brand was able to persuade the USPTO to approve for publication the three dimensional knot (shown to the right) as a non-verbal trademark for “handbags, shoulder bags, ladies’ handbags, clutch bags and purses”:

The mark is described this way: “[It] consists of a configuration, namely a three-dimensional knot with caps at each end, affixed to a clasp on the goods.” Registration was initially refused registration as a non-distinctive product design under Sections 1, 2, and 45 of the Lanham Act.

But, the recent 586-page submission, touting more than $18 million in sales over the past decade, more than $5 million in advertising since 2003, favorable declarations from a few fashion industry experts, and a good deal of unsolicited media attention and mentions of the iconic knot design, carried the burden of showing acquired distinctiveness under Section 2(f) of the Lanham Act (as the USPTO was not persuaded that the knot design could be considered inherently distinctive). The knot design is a feature of the configuration of the goods, so Supreme Court precedent would appear to make impossible a successful inherently distinctive trademark claim.

I was left wondering about whether look-for advertising played a role in Bottega Veneta’s success, but it appears not. Although none was required for the showing of acquired distinctiveness, there was no specific mention of look-for advertising in the Bottega Veneta submission to the USPTO, despite the existence of a few helpful references on the Bottega Veneta website:

The knot design is not limited to appearing on bags and purses, it appears. Just last month, Bottega Veneta’s same knot design trademark was published for opposition, as an inherently distinctive intent-to-use trademark for various personal care products in Int’l Class 3, but as the image below reveals, the mark already appears to be in use at least with women’s fragrances:

To the extent you’re wondering why the knot design for personal care products could be approved for publication with no showing of acquired distinctiveness — unlike the knot design as applied to bags and purses — the answer is: fragrances and personal care products don’t have configurations. So, unlike the knot design that forms a portion of the bag or purse, when it comes to fragrances and personal care products, the knot design forms a portion of the packaging for those products. As we have noted previously, the Supreme Court has indicated inherently distinctive product configurations are not possible, but inherently distinctive product packaging or containers are possible.

Having said that, the Examining Attorney at the USPTO appears to be reserving the right to refuse registration without a showing of acquired distinctiveness — even for the knot design in connection with fragrances — once Bottega Veneta submits evidence of use in connection with the claimed personal care products. In fact, it advised Bottega Veneta “that, upon consideration of an allegation of use, registration may be refused on the ground that the applied-for mark, as used on the specimen of record, is a nondistinctive configuration of packaging for the goods that is not registrable on the Principal Register without sufficient proof of acquired distinctiveness.”

I’m thinking that if such a refusal is issued after evidence of use is submitted, Bottega Veneta will be able to untie that knot as well, do you agree?

Last, I love the way Bottega Veneta has given the non-traditional knot design a name, not surprisingly it’s KNOT — and the luxury brand owner is seeking federal registration of the word too. What is surprising, however, is the USPTO’s initial registration refusal based on mere descriptiveness for Int’l Class 18 goods, such as purses and bags:

“Registration is refused because the applied-for mark merely describes a feature of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.  TMEP §1209.01(b); see, e.g., DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).

The term KNOT means “an interlacement of the parts of one or more flexible bodies forming a lump or knob (as for fastening or tying together).”  Please see the attached definition from the Merriam-Webster Online Dictionary.

As shown by the attached evidence from AStitchAHalf.com and PatternPile.com, the term merely describes bags and purses that are closed by tying a knot with the straps.  As such, the mark merely describes a feature of the applicant’s goods in Class 18.

Accordingly, because the applicant’s mark is merely descriptive under Section 2(e)(1) of the Trademark Act, registration is refused.”

I’d call that a pretty loose knot, wouldn’t you?

Star Wars: Redefining Trademark and Copyright Law Since A Long Time Ago

Posted in Advertising, Branding, Copyrights, Famous Marks, Goodwill, Non-Traditional Trademarks, Social Media, Sound, Television, Trademarks, USPTO

The Star Wars series is truly an exceptional franchise, having broken box office records, creating legions of fans, and bringing the idea of collateral merchandise licensing to an unprecedented level. Also, how many other films are top hits at the box office in three different decades, even when all you’ve done is add a few minutes of extra scenes and made the explosions better?

Star Wars also made headlines in 2012 after the franchise was acquired by Disney, who promptly announced that they would begin work on the third and final trilogy of the nine episode story.

Although Episode 7 is not slated for release until December of 2015, there is new Star Wars content out for mass consumption. Just yesterday, LucasFilms released a trailer for Empire Strikes Back: Uncut through the website Mashable.com. The full film will be released today.

In case you didn’t know, 2 years ago director Casey Pugh sent out an internet call to action to Star Wars fans: film your own version of any scene from Star Wars: A New Hope, and I’ll use it to make a fan-made version. The result is a full length feature film that is at times intentionally hilarious, actually impressive, or other times, so terrible it is hilarious. The full movie can be viewed on this officially sanctioned and licensed YouTube page.

Below is the official trailer for the new Empire Strikes Back: Uncut film

There are so many levels of derivative work and licensing issues involved that I think any release would require a flowchart and possibly a power point presentation. This isn’t the first time companies have embraced user-generated content, but it is certainly one of the more ambitious uses. But it is wonderful to see a major player in the entertainment industry embrace new technologies and fan participation. The underlying copyright issues may be difficult, but they’re not insurmountable and, for me, the result is worth it.

But Star Wars hasn’t been focused solely on copyright law, they’ve been making strides in trademark law too. Although there has been an increasing interest in the registration of sound marks, LucasFilms was a pioneer in the field, having obtained a trademark registration for the sound of Darth Vader breathing. The registration was issued in 2009 and covers “Halloween and masquerade costumes incorporating masks” and “costume masks, voice altering toys, toy computers, action figures, electronic games” and similar toys and figurines. You can listen to the sound mark here.

Although Darth Vader’s breathing is perhaps the most distinctive sound to emerge from the Star Wars series, it isn’t the only one that might be worthwhile protecting. R2-D2 has some distinctive noises as well as Chewbacca’s roar. It might be a bit harder to obtain, but the sound of a light saber might have a chance, too. And who knows what else may come out of the final three episodes?

While the last year has been relatively quiet on the Star Wars front, I think these new stories are just the beginning of what will surely be a 2015 filled with “sneak peeks,” fan complaints and, yes, legal issues surrounding the Star Wars franchise as we gear up for the first Disney-produced installment of the saga. Here’s hoping that the majority of these are fun stories like Star Wars Uncut in the coming year.

HOW To Support a Lawsuit in 140 Characters or Less

Posted in Advertising, Almost Advice, Branding, Infringement, Law Suits, Marketing, Social Media, Trademarks

It’s not too often that we see a trademark dispute that affects the marketing and advertising community directly (rather than just their clients), but the facts on this one read like answers to the Five W’s:

Who? Popular Greek yogurt manufacturer Chobani, its ad agency Droga5, and corporate leadership guru Dov Seidman.

What? A trademark infringement suit, covered nicely by Jonathan Mahler in the New York Times.

When? Filed in June.

Where? New York (particularly S.D.N.Y.), and also in the TTAB

Why?  Because Mr. Seidman owns registrations for HOW and Chobani uses the tagline HOW MATTERS, which they are trying to register. 


Yes, HOW.

Check out that quote as well.  Mr. Seidman owns registrations (here and here) for HOW for:

  • Publications, namely, hand-outs in the fields of law, ethics, business regulatory compliance, legal compliance, business conduct and governance;
  • Printed correspondence course materials in the field of law, ethics, business regulatory compliance, legal compliance, business conduct and governance;
  • Course materials in the fields of law, ethics, business regulatory compliance, legal compliance, business conduct and governance.
  • Educational services, namely, conducting classes, seminars, conferences and workshops in the fields of law, ethics, business regulatory compliance, legal compliance, business conduct and governance and distribution of course material in connection therewith;
  • Providing on-line training courses, seminars, workshops in the fields of law, ethics, business regulatory compliance, legal compliance, business conduct and governance
  • Communications, business and professional conduct by businesses, institutions, and government agencies, governance and leadership, corporate and social values, institutional behavior and culture, corporate governance, values-driven business and values-based business leadership, inspirational leadership, ethical leadership, organizational development, corporate culture, business cultural and social responsibility, and the management and operation of business in an environmentally responsible and environmentally sustainable manner

He also has allowed applications for HOW for board games, card games and software related to corporate culture.  He also has applications for HOW METRICS, THE HOW REPORT, and HOW IS THE ANSWER.  Nothing here looks like yogurt.

Chobani prides itself on being an ethically sourced, culturally responsible brand.  On its “Beliefs” page of its website, it states “We believe every food maker has a responsibility to provide people with better options, which is why we’re so proud of the way our food is made.”

As the New York Times piece rightly points out, there’s a little irony here.  “One company is accusing another of stealing its platform for ethical behavior.”

On the “bad facts” for Chobani here, there’s clear knowledge of Dov Seidman’s use of HOW, as the ad agency handling the Chobani Twitter account allegedly tweeted:

@DovSeidman: Thanks for inspiring the world to care about ‘how.’ Can you help inspire the food industry, too?”

The standard for infringement of course is a likelihood of consumer confusion, involving an analysis of a number of factors including similarity of the marks, similarity of the goods and services, and similarity of the channels of trade.  Aside from the tweet and Chobani’s corporate values, I don’t think a court (or the TTAB) would find that a consumer would be confused as to source or sponsorship of the yogurt.  Survey evidence would likely show that consumers were not aware of Mr. Seidman’s mark, and even if they were, that they didn’t make the connection with the Chobani product.  If, however, Mr. Seidman had a certification mark related to ethical responsibility, that might create a stronger argument that there’s a likelihood of confusion that Chobani has been stamped for corporate culture responsibility.

But how strong could HOW be?  1237 active trademarks incorporate the term HOW, and thousands of business, corporate leadership, and management books that use HOW.  And what about the HOW Design Conference and the HOW Leadership Conference?  Even the title of this blog?  And how else can you reference the importance of corporate responsibility in their actions and processes than telling people ‘how’?

I don’t think that Mr. Seidman will win this one, but the most troubling thing here from my perspective is that this is the first time I have seen a tweet form the basis for a trademark infringement lawsuit.  The lesson here really is that just 140 characters can come back to bite.  If it weren’t for that tweet, there may be no support for the suit to be filed in the first place.

To be clear, I’m absolutely not suggesting that tweets should be cleared through legal – they shouldn’t.  But there should be a social media awareness that there’s a potential for creating an unintentional link to sponsorship of another’s brand, just like in a print ad.  You wouldn’t want Adidas to tweet something like “Buy these. JUST DO IT.” with a picture of their latest kicks.

More generally speaking, creative agencies should consider pairing up with good legal counsel to review taglines and potential pitfalls before they even get presented to the client.  I wouldn’t suggest replacing HOW MATTERS with THE BIG MOO.




iOS 8: Bigger, faster, but still not a valid trademark (yet)

Posted in Fair Use, Non-Traditional Trademarks, Product Configurations, Technology, Trademarks, USPTO

Although the iPhone 6 was the headliner, Apple’s release of iOS 8 was a respectable supporting act. Unfortunately though, the negative headlines keep coming in as poor performance reviews have kept more than half of Apple users from downloading the new operating system (your dear author included among them).

Apple received some additional bad news on October 2 when the U.S. Patent and Trademark Office issued Office Actions initially refusing registration of Apple’s three claimed trademarks set forth below (click the image for a link to the application):

We’ve previously discussed these applications here and here. Part of the discussion centered around whether the claimed mark actually functioned as a trademark. Specifically, the third application set forth the following description of the mark:

The mark consists of the configuration of a rectangular handheld mobile digital electronic device with rounded edges and an arrangement of twenty-two icons consisting of squares with rounded edges arranged in six rows on the screen of the device. The matter shown in broken lines is not part of the mark.

The Trademark Office has initially refused all three applications on the grounds that the claimed marks (1) are non-distinctive product designs, (2) require changes to the drawings and descriptions of the marks, and (3) the drawing has included functional elements. The Office Action did not identify the arrangement of square icons in rows as a functional element and also left open the possibility for establishing acquired distinctiveness for the marks. Consequently, it is certainly possible that Apple could overcome the refusals.

Under the Supreme Court’s TrafFix decision, a feature is functional if it is essential to the use or purpose of the product, if it affects the cost or quality of the product, or if it would put competitors at a significant non-reputation-related disadvantage. Generally, the ability to use square icons arranged in rows could affect the quality of the operating system. This arrangement efficiently uses the limited space available on a phone’s operating system. It also is a very common arrangement for icons on digital devices (computers, phones, and more). It is hard for me not to conclude that granting Apple the exclusive right to use the mark, as identified in the application, would not not put competitors at a disadvantage. As a result, I’m still not so sure the mark isn’t entirely functional.

Of course, based on the numerous issues that users are experiencing with iOS 8, would it be so bad for Apple if some part of iOS 8, even just the trademark, was determined to be “functional?”