DuetsBlog Collaborations in Creativity & the Law

Category Archives: Non-Traditional Trademarks

Subscribe to Non-Traditional Trademarks RSS Feed

Scandalous and Disparaging Marks: The Race to the Trademark Office Is On

Posted in Advertising, Branding, Idea Protection, Infringement, Loss of Rights, Non-Traditional Trademarks, Squirrelly Thoughts, Television, Trademarks, TTAB, USPTO

Owners of scandalous, immoral, or disparaging marks are on notice: now is the time to place your $275 bet with the USPTO. And soon, the Trademark Office database may be “NSFW.” Last Thursday, the USPTO issued Examination Guide 01-16 to address the impact of recent federal court decisions on Section 2(a) of the Trademark Act. That section prohibits registration of… Continue Reading

Shape Marks: Coca-Cola Fails to Find Secret Ingredient

Posted in Advertising, Branding, Guest Bloggers, Law Suits, Marketing, Non-Traditional Trademarks, Product Configurations, Product Packaging, Sight, Trademarks

–Dave Holt, Solicitor & Alex Watt, Partner, Browne Jacobson LLP In the European Union, Coca-Cola has recently followed in the stumbling footsteps of fellow global super-brand Nestlé, falling at the final hurdle in its attempt to register the three-dimensional shape of its iconic ‘Coke bottle’ in classes 6, 21 and 32. You can read the… Continue Reading

Yes, No, and the Ever Confusing Maybe . . .

Posted in Articles, Branding, Genericide, Loss of Rights, Marketing, Non-Traditional Trademarks, Product Configurations, SoapBox, Squirrelly Thoughts, Trademarks

Yes and no are at opposite ends of the spectrum. North Pole, South Pole. Night and day. Win, loss. Black, white. Available, unavailable. Protectable, unprotectable. Infringing, non-infringing. They represent a binary proposition, like a traditional light switch with two settings: on and off. My daughter loves the yes end of the spectrum; no, not so… Continue Reading

Are Registrations for Product Configuration Trademarks for Suckers?

Posted in Fair Use, Famous Marks, Food, Idea Protection, Infringement, Non-Traditional Trademarks, Product Configurations, Trademarks, USPTO

As a kid, I loved candy. But as an adult, who happens to be an intellectual property attorney, I still love candy. So you can bet your sweet tooth that I was feeling a sugar rush when I came across a pending application to register the claimed mark shown below: The application was filed by… Continue Reading

Energizer Bunny to Drain Duracell’s Battery?

Posted in Advertising, Agreements, Articles, Branding, Contracts, Dilution, Famous Marks, Goodwill, Infringement, Law Suits, Marketing, Non-Traditional Trademarks, Trademarks

When I first heard last week about a trademark infringement lawsuit between Energizer and Duracell over pink bunny icons, my first thought was, Duracell is The Copper Top battery brand, what would motivate Duracell and how could Duracell possibly believe it had the legal right to use a pink bunny character in advertising and on… Continue Reading

Nominative Fair Use, as Illustrated by Colorful Balls

Posted in Advertising, Branding, Fair Use, False Advertising, Infringement, Marketing, Non-Traditional Trademarks, Sight, Television, Trademarks

If you watch any amount of T.V. or happened to catch either of the AFC or NFC Championship games last weekend, you’ve probably seen one of the recent cell phone carrier ball commercials. Initially, Verizon created this commercial, wherein a series of colorful balls rolling down a ramp are used to describe Verizon’s apparently superior… Continue Reading

Negative Look-For Advertising Statements

Posted in Advertising, Almost Advice, Articles, Branding, Look-For Ads, Loss of Rights, Marketing, Non-Traditional Trademarks, Patents, Product Configurations, Sight, Technology, Trademarks

Loyal readers know how important look-for advertising can be in making the difference between establishing trademark ownership in the shape or configuration of a product, and being left with nothing but a goose egg (as opposed to a Big Green Egg). That’s not to say, the clunky words “look-for” are required, yet something equivalent and… Continue Reading

Self-Inflicted Cuts That Can Kill a Trademark?

Posted in Advertising, Almost Advice, Articles, Branding, Guest Bloggers, Look-For Ads, Loss of Rights, Marketing, Non-Traditional Trademarks, Product Configurations, Sight, Trademarks

We have some razor sharp readers and guest bloggers. We’re deeply thankful and especially grateful when our readers and guest bloggers send us real life illustrations of marketing pitfalls we’ve identified, sliced and diced here on DuetsBlog. They provide more great teaching tools. Hat tip to our own James Mahoney of Razor’s Edge Communications for… Continue Reading

Watch the Informational Refusals, Please!

Posted in Advertising, Articles, Audio, Branding, Look-For Ads, Marketing, Non-Traditional Trademarks, Sound, Trademarks, USPTO

Let’s suppose you conduct sightseeing tours using a tram car, maybe on the boardwalk in New Jersey. Maybe even a famous tram car service you’ve operated since 1949? Let’s further suppose your passengers may get on or off anywhere along the route, as it travels along Wildwoods Boardwalk. Would you think you could own a… Continue Reading

Patent System is not the Fire that Hoverboards Need to Put Out

Posted in Articles, Branding, Idea Protection, Infringement, Law Suits, Marketing, Non-Traditional Trademarks, Patents, Product Configurations, Trademarks

One of the hottest toys during the 2015 holiday season was the hoverboard, and doesn’t that seem about right for this year.   I saw my first hoverboard earlier this summer — a guy was walking and holding hands with his girlfriend, as she glided alongside him on the hoverboard.  If I were to make a… Continue Reading

Jelly Belly Seeks Registration of Candy Shape

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

Last week Jelly Belly Candy Company filed a non-traditional trademark application with the USPTO to federally register the shape of its Jelly Belly candies. The claimed mark is drawn like this: And, described like this: “The mark consists of a candy having a rounded squat kidney-like shape, with one longer side being a continuous arc… Continue Reading

Another Cliche Color Trademark Calamity?

Posted in Advertising, Articles, Branding, Fashion, Goodwill, Infringement, International, Law Suits, Marketing, Non-Traditional Trademarks, Product Packaging, Sight, Technology, Trademark Bullying, Trademarks, USPTO

Techdirt is crying foul (again) and this time, wrapping the “trademark bully” mantle around the magenta-colored neck of the T-Mobile brand for enforcing its color trademark against OXY. While I certainly don’t have the details of the dispute (and it appears Techdirt doesn’t either), and OXY hasn’t produced the actual demand correspondence, given the distinctiveness… Continue Reading

Samsung Seeks an Edge in Smart Phone Wars through Federal Registration

Posted in Infringement, Non-Traditional Trademarks, Product Configurations, Technology, Trademarks, USPTO

For years, Samsung and Apple have battled over intellectual property rights associated with each party’s smart phones. Apple sued Samsung in 2011 and the jury found that Samsung had infringed Apple’s trade dress, design patents, and utility patents. On May 15, 2015, the Federal Circuit upheld the findings regarding infringement of design and utility patents,… Continue Reading

PATRÓN Tequila Bottle Design Enforcement?

Posted in Advertising, Articles, Branding, Dilution, Famous Marks, Infringement, Marketing, Non-Traditional Trademarks, Product Packaging, Sight, Trademarks, TTAB, USPTO

When we write about non-traditional trademark enforcement here on DuetsBlog, we almost always are referring to the protection of non-traditional marks like product configurations, product containers, product packaging, color marks, scent marks, tactile marks, and other non-verbal indications of source for a product or service. But, today we’re adding a little twist to our normal… Continue Reading

Imitating MILANO Cookies? Pepperidge Farm Remembers.

Posted in Articles, Branding, Dilution, Fair Use, Famous Marks, Food, Infringement, Look-For Ads, Marketing, Non-Traditional Trademarks, Product Configurations, Product Packaging, Taste, Trademarks, USPTO

When a company puts “DISTINCTIVE” on its own packaging, its usually a sign that it highly values its trade dress and product configuration rights. That’s certainly the case for Pepperidge Farm and its Milano cookies. The commercial bakery giant has taken aim at Trader Joe’s, the popular grocery chain, for selling house-branded “Crispy Cookies” that… Continue Reading

Forget the 6s, is the iPhone 3d coming soon?

Posted in Branding, Non-Traditional Trademarks, Product Configurations, Product Packaging, Technology, Trademarks, USPTO

When the iPhone 6s was announced, the 3D touch was a heavily touted feature.  The touch screen can now sense how hard you’re pushing. Functionally, it’s a great improvement that gives users new ways to interact with programs. But a new trademark application filed by Apple on August 18, 2015 suggests that this may not… Continue Reading

Is Ronald McDonald Lovin’ This Fryday?

Posted in Articles, Branding, Food, Infringement, Marketing, Non-Traditional Trademarks, Trademarks

When I recently snapped the above image of a t-shirt on display at a large retailer in the Twin Cities, it made me want to ask the same question many survey experts will ask of respondents to determine whether a likelihood of confusion exists in the marketplace: Who put this out? What percentage of respondents… Continue Reading

Will Purple Reign, as a Color Trademark?

Posted in Advertising, Articles, Branding, Counterfeits, Dilution, False Advertising, Famous Marks, FDA Approval, International, Law Suits, Look-For Ads, Marketing, Non-Traditional Trademarks, Sight, Trademarks

Today, we’re not talking about that Purple Rain, that Color Purple, or those Purple People Eaters, and we’re especially not talking today about Purple Gloves, Purple Bags, Purple Jackets, Purple Candy Wrappers, or Purple Tags, no today, we’re talking about “The Purple Pill,” a/k/a Today’s Purple Pill — AstraZeneca’s blockbuster Nexium brand acid reflux medication…. Continue Reading

A Few Weekend Views and Brand Sighting(s)

Posted in Articles, Branding, Fashion, Marketing, Non-Traditional Trademarks, SoapBox, Trademarks

My daughter captured some artsy pics from our beautiful Fall weekend, can you guess where we were? I’ll give you three visual hints: Those clues weren’t all that helpful, I suppose, so how about these souvenirs and brand sighting? But, what brand sighting is this really, are there actually two here, one overlaid on the… Continue Reading

Ads Touting Function Shoot Down Trademark

Posted in Advertising, Almost Advice, Articles, Branding, Loss of Rights, Marketing, Non-Traditional Trademarks, Patents, Product Configurations, Trademarks, TTAB, USPTO

This isn’t the first time we’ve written about brand owners who shoot themselves in the foot with their advertising. And, I’m sure it won’t be the last. As we’ve discussed before, touting the function of a product design feature can kill any hope of owning non-traditional trademark protection in that feature. The latest example from… Continue Reading

When Brands Get Personal, Do They Lose Their Identity?

Posted in Advertising, Branding, Famous Marks, Marketing, Non-Traditional Trademarks, Product Packaging, Trademarks

Marketing has always been an exercise in getting consumers to make a connection with a brand.  As our friend Seth Godin once said “Marketing is no longer about the stuff that you make, but the story that you tell.”   With the widespread use of social media like Twitter, Facebook, and Instagram, those stories are… Continue Reading

Game, Stripes, Match…No Love Between Skechers & Adidas

Posted in Advertising, Fashion, Non-Traditional Trademarks, Product Configurations, Trademarks

Maybe I haven’t quite accepted the fact that the US Open and New York Fashion Week are over and September almost is too, but stories on tennis and fashion always get my attention, especially when they include a little intellectual property infringement flair. The Stan Smith shoe is a legendary shoe design from Adidas named… Continue Reading

Apple Takes Us Back to PENCIL and PAPER

Posted in Branding, Infringement, Law Suits, Marketing, Non-Traditional Trademarks, Patents, Product Configurations, Social Media, Squirrelly Thoughts, Technology, Trademarks, USPTO

If you are a member of the Cult of Apple, like tech, or even just watch the news, you’re probably aware that yesterday was Apple’s big fall event where they announce new product launches and updates.  The event showcased a new iPhone with enhanced photo features (as this Wired article aptly puts it “Because selfies.”),… Continue Reading

Lego Adds a “Brick” to its Enforcement Strategy

Posted in Fair Use, Infringement, Non-Traditional Trademarks, Product Configurations, Product Packaging, Trademark Bullying, TTAB

The Danish Lego Group is no stranger to trademark disputes. Understandably, Lego enforces its rights in the LEGO mark against third-parties who use LEGO without their permission. Lego also claims trade dress rights in product shape and configuration of its blocks and enforces those rights against other building block manufacturers. Some competitors claim that these… Continue Reading