Let’s revisit the topic of non-traditional "touch" trademarks today.
Of all the traditional five human senses (sight, hearing, taste, smell, and touch) and trademarks that can be perceived by one or more of those senses, touch, a/k/a tactile, a/k/a texture trademarks are just about as uncommon as any (taste, perhaps, being the least common). Indeed, back in 2006, Marty Schwimmer from The Trademark Blog correctly noted the dearth of recognized tactile marks. Moreover, despite a 2006 INTA Board of Directors’ Resolution supporting the protection of touch marks, few appear to have reached for or grabbed any such protection (putting aside Kimberly-Clark, already blogged about here).
As arguably one of the most intimate of the senses: ‘Touch is the first sense developed in the womb and the last sense used before death." Given that and given other unique characteristics of "touch" among the senses, it is a bit surprising that touch marks haven’t been pursued more by marketers looking to create intimate, emotional connections with a brand: "Another distinction of the sense of touch is that it is identified with the real. You can’t believe your eyes, nor your ears, and taste is personal and subjective, but touch is proof." By the way, since touch/tactile/texture marks are so uncommon, why can’t we agree on what to call them? For what its worth, my vote is to call them "touch" marks since that is the term that names the underlying basic human sense.
Anyway, with that background, as far as I can tell, the one industry that seems to show the most promise or, at least, interest in touch trademarks, is the alcoholic beverages industry, most particularly those companies that focus on selling distilled spirits or wine.
Now, fabric bags for holding bottles of distilled spirits and wine have been around for a while. In fact, Crown Royal’s iconic purple-colored velvet pouch bag apparently has been distributed in the U.S. since 1964, and the visual appearance of the bag without any wording was federally registered by Diageo as a non-traditional visual trademark in 2006, in the form depicted above on the right. Despite the fact that the U.S. Supreme Court has indicated in Wal-Mart v. Samara that product containers and packaging may be considered inherently distinctive, the Crown Royal purple pouch bag was only registered after Diageo made a compelling showing of "secondary meaning," i.e., acquired distinctiveness.
Although Diageo appears to have made no attempt yet to federally register or protect the velvet touch or feel of the Crown Royal pouch bag, American Wholesale Wine & Spirits, Inc., obtained a federal trademark registration toward the end of 2006 for a touch mark comprising "a velvet textured covering on the surface of a bottle of wine." Interestingly, the wine label on file with the Trademark Office shows Khvanchkara (apparently a favorite of former Soviet leader Joseph Stalin)as the related name brand to this touch mark, but the word mark is owned by someone else.
Anyway, during prosecution of the "velvet touch" trademark application for wine, the Trademark Office noted the sale of velvet bags for use in carrying wine and distilled spirit bottles, particularly the Crown Royal whiskey bottle example. However, convincing the Trademark Office that the "velvety touch" of the Khvanchkara wine bottle was so unique as to be inherently distinctive, American Wholesale successfully argued the difference between the "loose fitting bag" of Crown Royal and others as compared to how Khvanchkara’s "glass bottle is tightly encased within a velvety fabric," and perhaps most importantly, noted: " [T]he FEEL of a LIMP bag is quite different from the FEEL of a TURGID velvety surface attached to a wine bottle." Alrighty then, I suppose that argument ought to limit the scope of the resulting "velvet touch" registration, to tight fitting wine bottle covers confusingly similar to velvet fabric (silk, nylon, acetate, rayon, etc.), right?
Maybe not, at least, in uncontested registration refusals issued by the Trademark Office where the limp/turgid argument doesn’t appear on the face of the registration. I was more than a bit surprised to learn of the exceedingly broad scope this registration has enjoyed by at least one Examining Attorney with the U.S. Trademark Office. For example, the Khvanchkara "velvet touch" registration served to bar registration of another company’s leather touch mark for wine, describing the claimed mark as: "[A] leather-like textured covering on the surface of a bottle of wine, brandy or grappa." Here was the Trademark Office Examining Attorney’s analysis in refusing a leather touch based on the prior velvet touch: "Although the coverings are different materials, both are highly textured and closely cover the glass wine container. The marks are therefore highly similar in appearance . . . . The goods at issue are all wine. Purchasers could mistakenly believe that the goods come from a common source." (Putting aside the obvious tactile differences between leather and velvet, why is the Examining Attorney comparing the "appearance" of the touch marks, shouldn’t the "texture and feel" be the appropriate point of comparison?)
In addition, back to the prosecution of the "velvet touch" non-traditional trademark application, you might be interested to know that the Trademark Office warned how functional features of products cannot be protected or registered under any circumstances, and in response, American Wholesale represented "applicant’s velvety material has no utilitarian function," and it is "entirely non-functional": "There is no function for applicant’s velvety feel of its wine bottles other than to distinguish them from all other wine bottles, which lack a similar feel, and to indicate the source of the wine, from applicant."
Actually, one might wonder about the validity of the "velvet touch" registration for Khvanchkara wine and whether the claimed "velvet touch" functions more to communicate information about a "velvety" characteristic of the wine instead of single source, trademark information, since "velvety" is a known "wine tasting term used to describe the texture of tannin in some red wines." Indeed, online retailer BestinWine.com says this about the very Khvanchkara red wine in question: "The taste is velvety with a blend of vintage flavours." Aaron Linderman’s From the Cradle of Wine Blog says this about Khvanchkara red wine too: "The taste is harmonious and velvety with a raspberry flavor and subtle oak tones resulting from the fermentation process." Isn’t this somewhat analogous to treating the color yellow as functional and part of the public domain for yellow-colored safety products? If so, to avoid providing one with an unfair competitive advantage over another, shouldn’t "velvet touch" wine bottle coverings be available for use in connection with any wine having a "velvety" quality, whether or not the covering is limp, loose, tight, or turgid?