Duets Blog : Creativity and the Law: DuetsBlog

As we have previously written, one way to acquire trademark rights in a non-traditional trademark, especially a product configuration trademark, is to use "look for" advertising.  Here's an example, although not a very prominent use of the "look for" slogan (here in context):

You don’t have to cross the Pacific to enjoy the sweet taste of a Hawaiian original. King’s Hawaiian Sweet Bread can be found throughout the mainland at your local market.  Look for our distinctive “Island Orange” packaging in your service deli or hot bakery section. Take a moment to escape to paradise with King’s Hawaiian!

The real trick, though, is to have your ads and marketing materials convey "look for" without saying "look for."  You have to know when to hit the consumer over the head, and when not to. 

Here's a commercial for Glaxo Group's ADVAIR product that, in my opinion, does that perfectly (sorry, couldn't find a better copy). 

Not surprisingly, Glaxo has a pending application to register the configuration of the ADVAIR "Diskus" as a trademark.  Despite the colorless image, the application does claim the colors purple and white as part of the mark.  Although I have not reviewed the application in detail, Glaxo seems to have positioned this product well to succeed with this registration.

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With more than a little help from Betty White and Abe Vigoda, Mars topped USA Today's AdMeter for 2010 Super Bowl television advertisements.

For anyone out there who thought Abe Vigoda had passed on, and Mars' ad was just another technological resurrection of a dead actor to sell products, like me, you're operating on old and incorrect information, really old and incorrect information.

People magazine apparently jumped the gun back in 1982, and I never caught the correction or the many running jokes that followed his premature obituary. OK, so I apparently missed every one of his film and television appearances since then too.

While we're on the subject of missing information, for those of you who never caught my previous post about whether Mars could pursue the cross-section of a Snickers candy bar -- as a trademark -- here you go. For those of you who never caught Dan's post about Snickers apparent efforts to establish non-traditional trademark rights, here you go.

Note the prominent candy bar cross-section in the final scene of the Snickers commercial?

Mars, us hungry trademark types are waiting. . . . 

UPDATE: AdvertisingAge reports that Snickers ad tops Nielsen IAG Ad Ratings too.

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A lot can be learned from the easily searched trademark registrations existing on the United States Patent and Trademark Office's online database. For example, Examining Attorneys at the USPTO will refuse registration based on prior confusingly similar registered marks, so responsible trademark owners will conduct the necessary searching and due diligence prior to adoption and first use. In addition, because searching the USPTO's database can yield readily available evidence on a number of substantive issues important to trademark types and brand owners, third-party trademark registrations are a very tempting tool to use to try to prove a point.

As frustrating as it can be to trademark types and the brand owners they represent, third-party registrations cannot be used as legal precedent to try and compel a certain result. Such attempts easily are rebuffed at the USPTO since each application must be decided on its own merits and one Examining Attorney is not bound by the "mistakes" that may have been made by other Examining Attorneys at the USPTO. As a result, although consistency is a goal at the USPTO, it can be rather elusive at times. Having said that, third-party trademark registration evidence can have evidentiary value, if used properly, and the valid and acceptable use of third-party registration evidence has grown over time.

Third-party registrations have been considered relevant and probative in establishing a number of different and important trademark issues, including at least:

1. The likely meaning of a mark to consumers. Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915 (CCPA 1976). 
2. That goods or services are of a type that consumers may believe emanate from a single source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993).
3. The likely meaning of a mark to consumers, i.e., whether it is merely descriptive or suggestive. Plus Products v. Star-Kist Foods, Inc., 220 USPQ 541 (TTAB 1983).
4. That a mark is relatively weak and that consumers will rely on other matter to distinguish between marks. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369 (CAFC 2005).
5. The existence of a relevant industry practice. Stuart Spector Designs, Ltd. et al. v. Fender Musical Instrument Corporation, 2009 WL 804142 (TTAB March 25, 2009) (finding the third-party registrations for guitar body designs supported the applicant's position that the USPTO recognizes guitar body designs as capable of indicating source and the industry's practice of registering guitar body designs); In re The Black & Decker Corp., 81 USPQ2d 1841 (TTAB 2006) (finding industry practice to use key head design as source indicator).

A couple of days ago I posted about a trademark specimen case, one where I was hoping the TTAB would expand the valid use of third-party registration evidence, but unfortunately, the TTAB did not acknowledge or address the third-party trademark registration evidence that was submitted (along with the specimens of use supporting those standard character word-only trademark registrations). Perhaps someone else can benefit from these thoughts in arguing for additional expanded use of third-party registrations in their trademark registration cases.

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A couple of months ago I saw in a convenience store a large Snickers point-of-sale floor-display depicting a prominent and attention-getting cross-section of a Snickers candy bar. Given Mars' apparent interest in owning and creating non-traditional trademark rights surrounding the Snickers brand (revisit Dan's post from earlier this year), it made me wonder whether Mars might view (and want consumers to view) the cross-section of the famous Snickers candy bar as a trademark too. After all, trademarks are one form of intellectual property that can last forever, so long as they continue to be used in commerce. In case you're wondering, I couldn't find any indication that Mars has sought to register any candy bar cross-sections as trademarks.

Now, keeping in mind, to be a non-traditional trademark, the symbol or device must (a) identify the goods, (b) distinguish the goods from those of others, and (c) indicate the source of the goods, there appears to be (at least) some potential for treating candy bar cross-sections as trademarks, provided the cross-sections actually are used as trademarks in commerce. In other words, it's not enough that the bars could be sliced to view their otherwise purely internal cross-sections; depictions of the cross-sections would have to appear on packaging or at least point-of-sale materials (advertising alone won't cut it).

So, to satisfy a court's hunger for the "use in commerce" requirement, and if depicting the candy bar cross-section on packaging leads to a creative buzz-kill, then a prominent cross-section on point-of-sale displays should suffice. Having said that, given the non-traditional nature of a cross-sectional trademark, perhaps some "look-for" advertising might be just what the candy man ordered to help create the cross-section as a delicious new non-traditional trademark. The Candyblog certainly enjoys showing cross-sections of candy bars in discussing the pros and cons of the various goodies they review.

What about functionality, you ask? Yes, if the depiction of the cross-section is determined to be functional, then it can never serve or be protected as a trademark. What do you think, is it functional? While the taste of the candy bar is clearly functional, the appearance of the cross-section is far less clearly functional. For example, presumably taste would remain unchanged so long as the ingredients remain constant, even with multiple variations on the internal configuration and layering of those ingredients.

There are actually some on-line quizzes you can take to test your visual sweet tooth skills, on Slashfood, here, and The Science Museum of Minnesota's Thinking Fountain, here. Some are easier than others. Now, to the extent consumers are able to "name" the candy bar associated with the shown cross-section, does that help satisfy all three trademark elements or only the first two? And, to avoid the leading nature of the question (as criticized in a U.K. trademark opposition brought against Mars involving candy bar appearance) would it make sense to first ask respondents whether they are able to determine who put out the candy bar in question by only seeing its cross-section?

On a related note, Mars is currently soliciting video content "starring" Snickers, so perhaps some creative type will accept the assignment, and in the process, author some powerful "look-for" advertising to help Mars acquire and build non-traditional trademark rights in the Snickers cross-section. If I were to accept the assignment, my submission would be to depict nothing but the cross-section of a Snickers candy bar within the non-traditional federally-registered parallelogram shape, but then, I'm a trademark type with only limited creative abilities.

So, can you identify a Snickers bar and distinguish it from others by the cross-section alone?

Do you believe consumers perceive the cross-section as a trademark pointing uniquely to one single brand?

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As we hit the ides of November, we are nearing the proverbial calm before the storm of the holidays. What you probably do not know is that we are but two, short days away from a little-known holiday before the Holidays, one that celebrates the preparation for the Holidays. This, of course, could only be National Bundt Day.

The first National Bundt Day was declared in 2006, the 60^th Anniversary of the founding of the company that is the source of the Bundt® pan: Nordic Ware. This family-owned company, legally incorporated as Northland Aluminum Products, Inc., is located on the outskirts of our own Minneapolis, Minnesota, and specializes in aluminum and other cookware. Nordic Ware has sold more than 60 million Bundt® pans, estimated to be enough to be in two out of three U.S. households. According to Nordic Ware, the word BUNDT, a coined term and registered trademark for cake pans, is derived from the German word “bund,” which means “a gathering of people.” Adding to the uniqueness of Nordic Ware, the company still manufactures in the United States (in Minneapolis), and openly states, "in the marketplace struggle between price and quality, quality wins every time."  Amen. 

Although Nordic Ware makes Bundt® pans in numerous shapes and sizes, and has even registered the shape of one of its unique pans as a trademark, it doesn’t appear that Nordic Ware has sought to register its “original” shape Bundt® pan as a trademark, but it probably could:

Indeed, the Bundt is iconic and enjoyed by peoples of all cultures and ethnicities.

For a brief third-party history of the Bundt® pan and a review of Bundt buying and baking, click here.

Happy baking!

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Luxo AS, a Norwegian light manufacturer and distributor, has sued Disney and Pixar et. al. asserting various trademark-related claims arising from Disney's and Pixar's use of the LUXO trademark.  In an always interesting case of trademark law/branding meets fair use, Luxo has alleged that Disney/Pixar's use of "Luxo Jr." to identify the "hopping lamp," which has been the corporate mascot of Pixar since 1986, has crossed into the realm of forbidden behavior.

Although Pixar has been using the mascot since 1986, according to the complaint, it was only recently that infringing goods or services were being sold under the allegedly infringing mark.  Specifically, Disney/Pixar is now selling a limited edition DVD copy of Up packaged with a working "Luxo Jr." collectible desk lamp.   Additionally, they are using Luxo Jr. to draw in visitors at Disney's Hollywood Studios.

This case raises some interesting trademark related questions: (1) Has Luxo relinquished some of its rights by not previously attempting to stop Pixar's use of the "hopping lamp?"  (2) Why didn't Luxo take action earlier? (3) Absent Disney/Pixar's expansion of its use to selling lamps, would Luxo have had a viable infringement case?

If I had to venture a guess, I would say that Luxo didn't really have a problem with Disney/Pixar's use until it got a little too real with the lamp sales.  Arguably, the animations enhanced the popularity of Luxo's products and lead to increased lamp sales.  Luxo apparently didn't have a problem until Disney/Pixar tried to monetize some of that popularity itself by packaging a lamp with a DVD.

Moreover, the viability of an infringement claim would have likely required an examination of the often cited, yet often elusive "fair use" analysis.    As demonstrated by the Spa'am muppet case, infringement isn't clear cut when someone is using your mark to say something besides "buy my goods." 

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Before the emergence of the Internet, there were two major conventional ways of doing intellectual property consumer surveys — mall intercept surveys and telephone surveys.   Mall intercepts work best for branded, consumer products where there is a visual element to be tested. They are moderately expensive and require some incentive. Telephone interviews are good for brand names, genericness studies or other types of research where the respondent does not need to view a visual. Most telephone research requires no incentives.

The Internet, in theory, combines the best of both worlds. Internet surveys not only permit the asking of verbal questions and recording verbatim answers, they also permit transmission of visual images such as products, labels, logos and packaging. Internet technology also permits sound transmission. Transmission costs are minimal with an e-mail blast of 5,000 names costing about $800 or $160 per thousand. (Typical mall costs are $30-$40 per interview). Unfortunately, there is no telephone book for e-mail addresses, and in order to use this medium you have to hook into a vendor that has large opt-in consumer panel data bases. By using opt-in panels, you will bypass all the SPAM filers and anti-SPAM on-line watchdogs. Moreover, you have an instant, real-time tabulation process.

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Airbrushing is a familiar technique among advertisers looking to avoid the risk of trademark infringement or dilution liability when branded props of others appear and would otherwise be recognizable. It can work well when removing a traditional visual trademark, i.e., a logo or word mark, because there can be no likelihood of confusion with (or dilution of) a visual mark when the claimed mark cannot be seen. 

But what about when a branded prop dominates the ad or the identifiable trademark is another's product container or package, a single color, trade dress, or perhaps the shape or configuration of the product or prop itself? What is critical for advertisers to appreciate is that when non-traditional trademarks are the subject of the ad and concern, the airbrush and any digital manipulation are less helpful and may be entirely ineffective in erasing trademark liability.

By way of a hypothetical example in the non-alcoholic beverage world, airbrushing the Coca-Cola word mark may not be sufficient to avoid liability, so long as the distinctive Coca-Cola bottle is left intact, say, in a Chevrolet ad. Likewise, by way of another hypothetical example, this time in the alcoholic beverage world, presumably the current owner of the Schlitz brand would object to another's commercial use of its distinctive Schlitz label even if the Schlitz word mark was airbrushed or otherwise removed.

Now, for a not so hypothetical example concerning Schlitz' ads, continue reading after the jump.

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