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Touch Trademarks and Tactile Brands With Mojo: Feeling the Strength of a Velvet, Turgid, Touch Mark?

Posted in Advertising, Branding, Food, Look-For Ads, Marketing, Non-Traditional Trademarks, Product Packaging, Sight, Smell, Sound, Taste, Touch, Trademarks

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?

  • Meg Langley

    In Canada Diageo North America, Inc. owns a pending trade mark application for the iconic purple bag (advertised July 1, 2009) – but I don’t believe registration was sought for the bag’s velvety feel. I would be interested to see how this trend develops in the US.

  • http://www.linkedin.com/pub/bruce-horowitz/5/70/101 Bruce Horowitz

    Your article is one of the few articles that discuss a real case.
    When one expects competitors to copy a non-utilitarian texture that identifies or could identify the source of a product, then it makes sense to register that texture.
    In 2004, we registered what appears to be the first tactile mark (the OLD PARR Crinkle Glass Bottle Surface Texture). It made sense, since someone in this first-to-file jurisdiction, had copied not only the (already-registered) OLD PARR Bottle Get-up, but also the crinkled texture of the bottle’s surface. We were able to provide the Trademark office with an embossed page for publication in the Trademark Gazette so that potential opponents could both see and feel the texture of the bottle’s surface. The issue of secondary meaning did not arise in this case. However, the crinkle glass texture had been used by the proprietor for many decades, and was identified with the OLD PARR product and it would not have been difficult to prove secondary meaning in this market.
    Regarding the registration of velvet textured covers for velvety textured spirits, there is some elemental analogy to yellow for safety equipment, but the counter argument is that a velvet textured cover can at most be evocative (never descriptive) of a velvety textured beverage. Here we would have to turn to the brain physiologists for enlightenment as to how velvet texture on our fingertips relates to the velvety texture on our tongues to the velvety sound of Mel Torme’s voice.

  • http://www.linkedin.com/pub/steve-louie-iida/0/240/561 Steve Louie,IIDA

    I think this would be a fascinating development for trademarking, and legal argument, but one that may have merits. If you watch people in any shopping experience, they’re first inclination is to touch whatever they are looking at. Doesnt matter what it may be. Its as if there is a need to confirm what the eye may be seeing. The industry that could have a case for the “touch” is the apparel. How many times have we heard someone invite us to “feel the softness of this fabric, or the texture of this silk, or the distinct feel of kid leather or the Italian lamb skin of a jacket. Recently, the term “Egyptian Cotten” is starting to loose its origin as manufactures apply this term as marketing ploy to suggest its superior quality, even though the actual cotten may be grown from within the States. Howvever, it is the touch and feel of this fabric that will reveal its authentiency from the “fakes”. The more Epyptian cotten is washed, the softer it seems to become. A case for Touch if ever there was one.

  • http://grpjrlaw.com Gerald R Prettyman

    I’m in favor of registering anything (compatible with public policy) that can put the public on reasonable notice that the thing is used a trademark. By reasonable notice, I mean there is consistent reproducibility in the product or service and adequacy of the description in the registration.
    As a former manufacturing engineer, I am familiar with the problems of reproducible manufacturability and in reliable measurement (description). Fortunately, technology has reduced both to essentially ‘no problem’ for many fields of manufacture.
    As such, the question of reasonable notice now shifts to adequacy of the description for public notice. While an embossed sample apparently sufficed for OLD PARR (Ecuador?), current electronic searches (via TESS, the Internet, etc.) require a textual description with a reasonable pictorial facsimile for non-word visual marks. This is not to prohibit embossed masters for registration, but the public needs reasonable notice without having to seek and buy every competitive product in the field. Some tactile marks could meet the textual description with a reasonable pictorial facsimile criterion. More complicated tactile marks might require dimensional (surface finish) descriptions, the measurement of which is now standardized and is therefore adequate for putting the public on notice. Holography would also be a good descriptive viewer with proper technology (but not on my monitor as yet).
    Moving on to scent, non-functional single description scents have had minor success for registration as a trademark, but a description as a mix of scents failed (http://www.caslon.com.au/trademarkprofile11.htm). From an engineering and forensic point of view, a description based on gas-liquid chromatography results would likely have reproducibility, adequacy of the description, and be electronically searchable. Multiple blends of scents might be registered if the GLC description truly described the scent as reproduced with pure chemicals. Even if there were some difficulty to electronic searches, the difficulty would likely not be more than patent lawyers (like me) currently work with for prior art searches (and yes, it leaves a lot to be desired).
    This leaves the fifth sense, taste, but taste analysis sufficient for reproducible manufacturing is still a skilled talent outside of an engineered metric. As evident by the description of fruit flavor and oak tone in wine, taste relies considerably on smell. The wide range of genetic ability to taste various compounds combined with age and culture related considerations makes an adequate description likely impossible at any stage of technology.
    CHEERS!

  • Olle Benner

    Does anyone know where I can get hold of a photo of the wine bottle of KHVANCHKARA wine with a velvety touch?

  • Sylvia Moritz

    Does anyone have a photo of the velvet wine bottle in question? The discussion is interesting and would be enhanced by an image. Please let me know.
    thanks

  • http://www.duetsblog.com/steve-baird.html Steve Baird

    Sylvia, I agree that an image would enhance the discussion, but I don’t have a good one to share. Theblack/white specimen photo that the applicant submitted to the Trademark Office doesn’t reproduce well. If I come across one, or someone else sends me one, I’ll definately post it.
    Thanks, Steve