Collaborations in Creativity & the Law

Brand Valuation

Posted in Almost Advice

Regulators in the U.S. are set to change the concept of “materiality,” or the determination of what information is necessary for companies to disclose publicly. While sales and earnings figures are important, Baruch Lev, an accounting professor at New York University’s Stern School of Business who analyzed financial reports and quarterly conference calls at some 3,000 companies over the past 50 years, found that financial analysts have all but stopped asking about these figures. Mr Lev said “the usefulness of financial information to investors decreased tremendously over the last 20 to 30 years,” and that companies do not say enough about intangible assets, such as brands, that can drive their business. Indeed, large accounting firms like EY are putting out research pieces on Integrated Reporting, which focuses on disclosing more than just numbers.

Recognizing this change in reporting was coming, the International Organization for Standardization (“ISO”) passed ISO Standard 10668 on Brand Valuation. ISO Standard 10668 recognizes that financial considerations are only one leg of the stool that make up a brand’s value. Legal and Consumer Behavior considerations also play a critical part in determining the value of the brand. Despite the soundness of ISO 10668, it has not been adopted as a rule by FASB; thus, its usefulness has been undermined because most brand valuations are performed by outside accounting firms who continue to rely on the traditional valuation methods, the:  (1) Cost Approach; (2) Market Approach; and (3) Income Approach.

However, even these traditional valuation approaches implicitly require a legal strength analysis of a mark. The cost approach is essentially calculated as a replacement cost for the brand. This requires a consideration of all the costs invested in a brand (e.g., the cost for acquiring, supporting, and maintaining the brand). Supporting and maintaining a brand necessarily involves an assessment of the conceptual and commercial legal strength of brand to assess what it would cost to replicate the same level of legal strength.

The market approach is a comparison of similarly situated brands. This requires comparing brands with similar traits (e.g., legal strength). Finally, the Income Method incudes six different approaches but they all generally rely on the premise that a company can get a higher price on a product with a known brand than for a generic product without a brand. Again, whether a mark has achieved fame requires a legal opinion of the overall strength of a mark.

Whether ISO 10668 is eventually adopted as a rule or not, current brand valuation companies could improve the accuracy of their valuations by including and working together with experienced trademark counsel. And if accounting firms or other brand valuation companies are reluctant to include experienced trademark counsel in the valuation process, any company having its brand valued should insist on getting experienced trademark counsel involved.



It’s Not Delivery, It’s Infringement.

Posted in Fair Use, Famous Marks, First Amendment, Goodwill, Infringement, Social Media, Trademarks


We’re not talking pizza, we’re talking burgers. Not just any burgers, either, we’re talking In-N-Out burgers. As any California transplant will tell you, no other burger from any other restaurant comes close. In-N-Out has more than just burgers; it also has French fries, shakes, and drinks. They also have a drive-thru if you don’t want to get out of your car. However, In-N-Out does not have a delivery service. And a trademark infringement lawsuit filed yesterday seeks to keep it that way.

As a result of consumer demand and advancements in technology, a smorgasbord of food delivery services have emerged to make it easier for consumers to eat out while staying in. Here in Minneapolis, we have at least four options: Bite Squad, GrubHub, PostMates and the more recent entry, DoorDash.

It is our new Minnesotan friend DoorDash that was on the receiving end of In-N-Out’s lawsuit. In-N-Out asserts that it has repeatedly requested that DoorDash stop delivering In-N-Out food, and stop displaying the In-N-Out trademarks (including the In-N-Out logo) from DoorDash’s website. According to the complaint, DoorDash complied with In-N-Out’s request for a short period, but then resumed its delivery services.

But wait, isn’t DoorDash just giving consumers what they want and, along the way, increasing sales to In-N-Out? Where’s the beef? According to In-N-Out, they’ve got a Double-Double’s worth:

Defendant’s use of Plaintiff’s famous trademarks implies that Defendant not only delivers In-N-Out products to its customers, but that the quality and services offered by Defendant is the same as if consumers had made purchases directly from Plaintiff. Upon information and belief, the quality of services offered by Defendant does not at all comport with the standards that consumers expect from Plaintiff’s goods and services. Further, Plaintiff has no control over the time it takes Defendant to deliver Plaintiff’s goods to consumers, or over the temperature at which the goods are kept during delivery, nor over the food handling and safety practices of Defendant’s delivery drivers. While Plaintiff adheres to the Food Code, on information and belief, Defendant does not adhere to such regulations, including with regard to compliance with required food safety and handling practices.

If Vegas put odds on “what legal defense is DoorDash likely to assert,” the good money would be on “Nominative Fair Use” (sorry American Pharoah). We’ve discussed nominative fair use a few times at DuetsBlog, but the basic issue is whether the defendant is using the mark to identify the actual products or services of the plaintiff. A defense is likely established where:

  1. The product cannot be readily identified without using the trademark;
  2. Only so much of the trademark is used as is necessary for the identification; and
  3. No sponsorship or endorsement of the trademark owner is suggested by the use.

The issue in this case will be whether DoorDash’s use suggests that In-N-Out has sponsored or endorsed DoorDash as a delivery service. Third-party food delivery services have not been around for very long. Do consumers expect a delivery service to be endorsed by individual restaurants? Or do consumers consider a delivery service to be a neutral third-party that simply takes the travel out of “carry-out” service

Having used delivery services before, my instinct says In-N-Out may be out of line. On the one hand, if my Pizza Hut delivery guy delivers cold pizza to me, I would complain to Pizza Hut. But if I had a local pizzeria delivered via DoorDash, my reaction has been “that pizza doesn’t travel well, looks like I need to eat in.” Complicating the matter is the fact that DoorDash has entered into partnerships with other companies, including Taco Bell and 7-11.

Will that be enough to create an association in the minds of consumers? If DoorDash loses, it’s hard to see how any of the other food delivery services can survive, unless they reach individual deals with each and every restaurant they utilize. Such a requirement would add some significant business cost to this model, with little benefit to consumers. Here’s to hoping the issue is resolved quickly, especially for everyone who had planned on getting In-N-Out delivered for Thanksgiving.


GREENLIGHTing Trademark Protection for Social Movements

Posted in Trademarks, USPTO

Today is Veterans Day, and we all owe veterans (and their families) a debt of gratitude for their service and their sacrifices to ensure our freedom.  Veterans are our friends, our family, our neighbors, our co-workers, and probably even the person ahead of you in line at Starbucks today grabbing a red cup of coffee.  Thanks to all our veterans for their courage and their efforts to keep us safe.

There are many symbols used to show support for veterans and active military, including yellow ribbons and service flags.  Now a group wants to make green lights another one of these symbols.  I was touched by the message and sentiment behind this ad that I recently saw for the Greenlight a Vet program.  The idea is to turn on a green light at your home to show support for veterans.  At the end of the ad,  it mentions that it’s “supported by Walmart.”

Last month, four applications were filed for the GREENLIGHT A VET word mark, a black & white version of the logo, a green version of the logo, and a black & white version of the lightbulb alone.

Mark Image

The applied-for services in each are identified as “promoting public awareness of social issues, namely, supporting and hiring of veterans of the armed forces.”  And, all four of the applications were filed by Wal-Mart Stores, Inc.  Based on the ad, I expected some veterans organization to own the marks, not the #1 company on the Fortune 500 list.  But this seems to be part of Wal-Mart’s larger initiative to hire 250,000 veterans by 2020.

Social movements seem to be growing, especially as participation in social media has increased rapidly.  However, a search for active applications and registrations on the USPTO’s website reveals only 21 applications or registrations with a description including “promoting public awareness of social issues.”  Aside from the four for the Greenlight a Vet marks, the rest were filed by individuals or small entities.

Trademark protection provides a trademark owner with an exclusive right to use a trademark when use of the mark by another is likely to confuse consumers.  Should corporations like Wal-Mart be granted an exclusive right to use a trademark not for lightbulbs or retail store services or veterans services, but rather for a trademark for promoting public awareness of a social issue?

Peeple who need people

Posted in Branding, Guest Bloggers, Idea Protection, Infringement, Mixed Bag of Nuts, Squirrelly Thoughts, Trademarks

Laurel Sutton, Senior Strategist & Linguist at Catchword Brand Name Development

In late September of 2015, tech media worked itself into a frenzy about the launch of an app called Peeple, which was supposed to give everyone the opportunity to rate and review every person you know. “People do so much research when they buy a car or make those kinds of decisions,” said Julia Cordray, one of the app’s founders. “Why not do the same kind of research on other aspects of your life?

Peeple1Two aspects of the app that were most troubling were the inability in opt out (once someone put your name in, you couldn’t remove it) along with the inability to delete bad reviews. Remember, these are features, not bugs. At the time, the backlash was public and intense; just recently, Cordray relaunched the app idea with an opt-out option and a way to immediately remove negative comments. So what’s left? Another self-promotion site that will rely on the time-honored tradition of logrolling to generate positive reviews. Does anyone need this app?

What’s more interesting to me are the possible legal challenges to the brand name Peeple – and whether the whole Peeple story could be a hoax.

When the Peeple story blew up, a lot of the bad social media reaction spilled over on to an already existing Peeple app – one that makes an Internet-enabled peephole that lets you see who’s at the door, on your phone. Chris Chuter, the founder, was dismayed that his company’s progress (winning a competition in the UK, taking second place at a TechCrunch event) was stalled by the confusion between Peeple-the-nonexistent-app and Peeple-the-actual-product. “Our branding is in tatters,” he told Wired.  Chuter’s company has filed for a trademark in the US (A Notice of Allowance was issued on September 8th) and without opposition, it’s likely to go through.

Peeple2If and when Peeple-the-nonexistant-app launches, Chuter may have reason to go after them for potential confusion, which has resulted in damage to his brand. But if he doesn’t, Chuter’s Peeple mark could coexist with Peeple-the-nonexistent-app, as the goods and services descriptions read very differently: they’re both apps, but for completely unrelated purposes. The story gets more interesting with a look at Peeple-the-nonexistent-app’s TM filings (two, one in class 9 and one in 35), which are currently suspended because of a previous filing by yet another Peeppl – one which the USPTO apparently finds too close for comfort. Peeppl’s application is for internet-based social networking; their app is currently in beta, and they say they are “a fan-directed network that creates new social media experiences via exclusive video content”.

Peeppl3 Like Peeple, Peepple’s mark is currently suspended pending more information on their Canadian TM filing (which appears to be on its way to registration). Looking at the Canadian database brings up even more questions about Peeple-the-nonexistent-app, however: they’ve filed for two marks in Canada under the name Peep Inc., with a Calgary address, the same one used for the USPTO filings. One mark was quickly abandoned, leaving them with one active application (now classified as “searched”). But, curiously, there’s another active application for the mark Peeple by a guy named Paul Toth,, at a different address from Peep Inc., with the same goods and services description. Some Googling revealed that Paul Toth is apparently a Canadian videographer who owns the domain editsuite.ca. His relationship to Peep Inc. and Julia Cordray is a mystery. But…

Back to the hoax theory, ably expounded upon at Snopes.com. Snopes cites the confusing and ill-thought-out nature of the app, the fact that the founders (Cordray and her partner Nicole McCullough) have no experience in app development, and that McCullough had “no online footprint of which to speak before Peeple went viral”. And then there’s this: Cordray was, according to the Washington Post, publishing on YouTube a reality series about the process of launching the app. Most of those videos are gone now; the only videos on Peeple’s official YouTube channel are webisodes 11 and 12. But they’ve been mirrored at a different YouTube account called Peeple App which seems more interested in documenting the Peeple debacle.

So: A web series about launching an app. A trademark application by a videographer, filed in late 2014, before the Peeple hype was started (and before the website even had a landing page). Founders with no experience in app development. And a distinct lack of transparency around the whole thing. Hoax? Social experiment? Punked?

And what will happen if Peep Inc.’s mark for Peeple is rejected? Will they change the name? Or will it dispel the mystery surrounding Peeple? Perhaps the next move will be a movie announcement. But either way, I want to know who Paul Toth is. I hope he gets his money’s worth for that Canadian trademark filing.

What’s in Your Tagline, a Strong Trademark?

Posted in Advertising, Articles, Branding, Marketing, Television, Trademark Bullying, Trademarks

GarnerWhatsinYourWalletLast year, in my post entitled What’s in Your Wallet, a Cafe?, I had this to say about the iconic Capital One tagline:

“Since 2000, Capital One Financial — the nation’s largest direct bank — has been promoting its credit card services by asking What’s in Your Wallet? Three years later it began promoting banking and other financial services using the same iconic tagline, slogan, and question. By 2011, it had achieved so much traction that What’s in Your Wallet? was inducted into the Advertising Walk of Fame as one of the 16 Greatest Slogans in History.”

It seems as though, whenever a brand owner comes up with a truly inventive tagline or slogan, it is almost predictable and inevitable there will be others who follow along, looking for a short cut, those willing to take a free ride on the underlying creative branding concept.

For example, when the Got Milk? campaign came along and enjoyed the vast success it did for so many years, even years later, it has almost become cliche for others to replace milk for whatever they happen to be selling, while using the remainder of the inventive branding concept:

gitmilklogoSo, there was Got Wine? Got Water? And, there was and is a multitude more Got [Whatever]? marks, far too many to prevent or stop, I’m sure, but what about setting some realistic scope to the rights and drawing some reasonable trademark lines in the sand?

For example, when Otis Spunkmeyer registered Got Cookies? as a trademark for cookies, it never apparently thought twice about the relatedness and complementary nature of cookies to milk, and the California Milk Processor Board surprisingly never objected. Instead, it simply registered its Got Milk? slogan for the very same goods and now coexists.

Putting legality aside for a moment, is one sign of a successful tagline the spawning of others that copy the underlying creative concept and adapt it to their particular business?

Perhaps. Following Capital One’s introduction of What’s in Your Wallet? came What’s in Your Tortilla?, followed by What’s in Your Bowl?, and then What’s in Your Bag?, What’s in Your Backpack?, What’s in Your Cup?, What’s in Your Garage?, What’s in Your Attic?, What’s in Your Toolbox?, What’s in Your Water?, What’s in Your Beef?, What’s in Your Purse?, and What’s in Your Jacket?, among a multitude of others.

It’s fascinating to me that as much as Capital One must spend on its ad budget, and celebrity endorsements (Jennifer Garner and Samuel Jackson), it appears to view its trademark rights as razor thin, as it is almost completely absent from any TTAB enforcement activities, at least as a plaintiff, with none involving the What’s in Your Wallet? tagline and trademark, except this extension of time to oppose What’s in Your Jewelry Box?, but is now registered, for “providing monetary exchange services, namely, exchanging precious metals of others for money,” and this extension of time to oppose registration of What’s in Your Vacation? for “customer loyalty reward program featuring the accumulation of points by the program members and the subsequent redemption of points towards gifts and discounts in air travel, hotel lodging, restaurants, home appliances, and other services and products.”

So, no surprise now that Capital One has taken no apparent action against Rosland Capital’s trademark registration for the tagline What’s in Your Safe? for “telephone ordering services in the field of precious metal ingots and numismatic coins” — the first registration it obtained was not stated in the form of a question (What’s in Your Safe) for “retail store services featuring precious metal ingots and numismatic coins; on-line retail store services featuring precious metal ingots and numismatic coins; retail catalog ordering services via telephone featuring precious metal ingots and numismatic coins.” Capital One didn’t even put in an extension of time to oppose either of those or What’s in Your Pocket? for a credit card holder, leaving me to wonder will any mark other than an identical one get Capital One’s serious attention?

Apparently not, given this one (pun intended): What’s Not in Your Wallet? for “on-line retail store services featuring clothing, gifts and videos.”

Of course, this is not what I expected to find when a Rosland Capital commercial caught my eye this weekend and prompted me to dig for some trademark and blogging gold ingots. I didn’t realize when I heard celebrity William Devane ask What’s in Your Safe? at the end of a Rosland Capital commercial (in a way that reminded me of the nearly identical final question Jennifer Garner keeps asking in her Capital One commercials), I had no idea that the creativity in the concept of the Capital One tagline was like the cow already out of the barn, down the road, and far away from the dairy farm.

Speaking of cows, why did Chick-fil-A think it could stop Bo Muller-Moore’s Eat More Kale? based upon its rights in the distinctive, but very different, Eat Mor Chikin campaign and mark?

Back to Capital One, for our creative types out there, what is the rationale for doing nothing about the multitude of taglines that What’s in Your Wallet? has spawned, especially those in the financial services field and those for complementary products?

Trademark types, do these recent Capital One intent-to-use filings (What’s in Your Tablet? What’s in Your Phone? What in Your Pocket? What’s in Your Digital Wallet? What’s in Your Smart Wallet? signal the possibility of enforcing the tagline rights more broadly?

Orwellian Enforcement of Orwellian Copyright?

Posted in Advertising, Copyrights, False Advertising, Infringement, Marketing, Squirrelly Thoughts, Technology

George Orwell’s famous novel 1984 would describe this situation as “doubleplusungood.”

Josh Hadley, an internet radio host and a self-described “harsh film critic with no sense of subtlety or tact,” recently met the ire of Orwell’s estate when he used CafePress to create a t-shirt design with the text “1984 Is Already Here” emblazoned over tattered movie posters. Without comment on the artistic merits of the design, it appears below:

T Shirt Design

While Hadley reportedly did not sell any actual products bearing the design, the London-based “literary executor” of the Orwell estate summarily contacted CafePress to request a takedown of the designs, contacting CafePress’s Intellectual Property Rights Agent and reporting the designs for containing “George Orwell quotes.” CafePress then informed Hadley, who ultimately took the content down, but not before the press took note of the apparent irony of Orwell’s estate using government-enforced IP rights to stifle ostensibly free expression.

Many of the articles focus on the veracity of the estate’s copyright claims. Published in 1949, Orwell’s novel will remain under U.S. copyright protection until 2044, barring further changes to the maximum copyright term from Congress. But copyright protection explicitly does not extend to names, titles, or short phrases, as stated in this circular from the U.S. Copyright Office:

Copyright law does not protect names, titles, or short phrases or expressions. Even if a name, title, or short phrase is novel or distinctive or lends itself to a play on words, it cannot be protected by copyright.

So unless Hadley’s design contains excerpts from Orwell’s novel (that do not otherwise qualify as fair use), then there is little substance to support the estate’s claim that the merchandise was “in clear breach of copyright.” Internet commenters intuitively agree, joking “I remember that 12 month period in the mid 80’s where no one was allowed to print calendars” and “I feel bad for anyone who’s 31″ (i.e., with a birth year of 1984).

A running definition of “Orwellian” refers to a “situation, idea, or societal condition that George Orwell identified as being destructive to the welfare of a free and open society.” This situation may not quite rise to that level – but perhaps some “re-education” is in order.


Posted in Famous Marks, First Amendment, Law Suits, Loss of Rights, Mixed Bag of Nuts, Trademarks, TTAB

TJ Root/Getty Images


In appealing the cancellation of six trademarks, the Washington Redskins filed their opening brief in the Fourth Circuit this week.  Cancellation of the team’s REDSKINS trademarks was upheld by a federal district court in July.  The marks were deemed “disparaging” under Section 2(a) of the Lanham Act, which denies trademark protection to marks that are scandalous or disparaging.

The team is now appealing the district court’s decision.  A primary argument presented in the team’s opening appeal brief is the First Amendment argument.  Essentially, the Washington team argues that cancellation of its trademarks under Section 2(a) violates free speech rights, because the marks are a form of expressive speech.  Of course even without a federal trademark registration, a mark may still be used.  The team can still call themselves the Redskins and sell Redskins merchandise, but cancellation of the marks means they will not enjoy the protections and benefits that accompany federal registration.  The team argues that by denying those protections and benefits of the federal trademark registration, the government is infringing on the team’s free speech rights.

The lower court held that Section 2(a) does not violate the First Amendment, in part, because federal registration of a trademark represents a form of government speech, rather than private speech.  That is, the government may freely choose which marks it wishes to include as part of its federal trademark registration program.

In an effort to thwart this argument and show that federal trademark registration is not a form of government speech, the Washington team made the bold choice to include in its brief a long list of—colorful—marks that have been successfully registered.  The list seems primarily compiled from the adult entertainment industry, and includes, among many, many others, TAKE YO PANTIES OFF clothing, SLUTSSEEKER dating services, and MILFSDOPORN.COM pornography.  A footnote in the brief actually states that “word limits” prevented the team from adding even more to their offending list.

While the purported purpose was to address whether trademark registration represents government speech, the sheer length of the list leaves the distinct impression of an underlying argument: Well if these dirty words can be trademarked, why can’t we just trademark our team name?

At first blush, it may seem like a fair argument.  As presented in the brief, the list of clearly offensive marks makes one wonder why these too were not cancelled or denied registration.

One reason may be that potentially scandalous and disparaging marks are viewed in the context of the goods or services and the market with which they will be associated.  Consider that the goods and market of the porn industry are very different than the goods and market of an NFL team.  MILFSDOPORN.COM may not be scandalous or disparaging in the context of providing adult entertainment.

Another reason may be that most of the unsavory marks listed in the team’s brief are unlikely “disparaging,” and would more likely fall into the “scandalous” category of Section 2(a).  Section 2(a) excludes from registration marks that are scandalous and marks that are disparaging.  The test for scandalous marks is different from that for disparaging marks.

Disparagement relates to a particular person or group.  Some marks that have been denied as disparaging are HEEB and SQUAW for clothing.  To determine whether a mark is disparaging, the test looks to whether a substantial composite of the group referenced by the potentially disparaging mark would find the mark disparaging in the context of the particular goods or services.

In contrast, potentially scandalous marks are viewed with respect to the broader public’s opinions.  Marks such as COCAINE for soft drinks have been denied registration as scandalous.  The test for determining whether a mark is scandalous looks to whether a substantial composite of the general public would find the mark scandalous in the context of the particular goods or services.  Each test looks to a group of people to determine whether something is offensive, but the scandalous test looks to a larger and broader group, the general public.

TAKE YO PANTIES OFF, SLUTSSEEKER, MILFSDOPORN.COM, and many others on the team’s list would seem to fall under the more general “scandalous” category, because the terms do not seem to target a particular person or group in the way that a mark like REDSKINS does.  (Surely MILFS are not an identifiable group.)  Given that the scandalous test looks to the broad opinions of general public, rather than of a particular group, it may be an easier task to register a potentially scandalous mark than a potentially disparaging mark.  Just ask The Slants.

And the Oscar goes to . . .

Posted in Domain Names, Law Suits, Trademarks

The Academy of Motion Picture Arts and Sciences is planning to appeal a September judgment finding that GoDaddy did not violate anti-cybersquatting laws. Part of the Academy’s claim centered around the common practice of having “parked pages” which are basically placeholders sites. The practice allows a domain owner to reserve a domain until it finds hosting or completes the website.

The Academy claimed that GoDaddy improperly profited from the use of its OSCAR mark by allowing the registration of domains that included the OSCAR mark, and sharing in the proceeds of ad revenue on parked pages.

The Court found that the Academy had failed to prove that GoDaddy had the bad faith intent to profit required for the claim and also that GoDaddy had met its burden on its affirmative defense that it acted with a good faith belief that the use was lawful.

It didn’t help the Academy’s case that GoDaddy took a number of proactive steps to limit potential infringement and acted quickly whenever infringement was brought to its attention.

The case, lasting five years, highlights the policy tension among intellectual property laws and the internet economy. The Court cited the automated process of registering domains and the high cost of manually reviewing each new registration to ensure that no infringement occurs in its findings regarding bad faith.

Traditionally, the burden of policing a trademark falls to the mark holder. The Digital Millenium Copyright Act provided some additional tools for job in the internet age and attempted to strike a balance between the benefits of the internet and the burden on intellectual property holders. Here, the Academy seemed to make an attempt to pass the burden of policing its mark on to providers like GoDaddy. The Court stated towards the end of its ruling that the Academy’s “ACPA claim would impose upon GoDaddy (and presumably any other company offering parking, hosting, or other basic internet services) the unprecedented duty to act as the internet’s trademark police.”

It’s not yet clear exactly what the Academy plans to attack in its appeal. We’ll have to wait to see if the Appeals Court thinks that GoDaddy should act as the internet’s trademark police.

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.

Just last week, AstraZeneca brought a federal district court action in the District of Delaware, to relieve its heartburn and other forms of damage over Dr. Reddy’s competing generic version of Nexium that is also sold in purple colored capsules.


The Purple Pill Complaint is loaded with references to and colorful examples of “look for” advertising, something we have covered a lot here (don’t forget the Purple Host Jackets at the Phoenix Sky Harbor International Airport):

“To reinforce the brand significance of the color purple, in addition to its ‘purple’ websites, [AstraZeneca]’s advertising and promotional efforts from as early as 2000 to present have consistently focused on educating the public to associate the color purple as applied to capsules for treatment of gastrointestinal (“GI”) diseases and the phrase ‘The Purple Pill®’ (collectively, the “Purple Marks”) with its . . . products, first with Prilosec® and then Nexium®. The express purpose of this ‘look for’ advertising was to establish the purple color and the phrase ‘The Purple Pill®’ as symbols of origin and quality of GI drugs that emanate only from [AstraZeneca], i.e., as brands of [AstraZeneca]. [AstraZeneca] has devoted significant resources over the years to advertise and promote its Prilosec® and then Nexium® purple pills using this ‘look for’ purple advertising.”

Although “look for” advertising is a helpful key to establish distinctiveness of a non-traditional trademark like a single color, the striking and dominant emphasis in AstraZeneca’s complaint seems more designed to help establish fame, and perhaps for fending off any potential aesthetic functionality defense that Dr. Reddy’s might raise, since acquired distinctiveness is not in question, given the incontestable registrations already in place. THE PURPLE PILL word mark, also federally-registered, is another effective form of “look for” advertising.

Oh, one more thing we’re not talking about today, Glaxo’s Purple Inhalers to dispense Advair brand medication for respiratory ailments, as opposed to gastrointestinal ailments. Perhaps this explains why AstraZeneca made this express point in its complaint:

“[AstraZeneca] is not aware of any third-party trademark registrations covering the mark purple applied to capsules or pills for the treatment of GI diseases. Moreover, [AstraZeneca] is not aware of any third parties that have promoted the color purple as a trademark for any pharmaceutical preparations for the treatment of GI diseases.”

So, does this signal that AstraZeneca’s rights in purple are limited to pharmaceuticals for the tummy, or what other types of ailments might need to be covered by a medication to upset their non-traditional trademark stomach?

Tissue Tussles at the Trademark Office

Posted in Advertising, Loss of Rights, Product Configurations, Product Packaging, USPTO

Each of the seasons has its own soundtrack to signal its transition. Spring is symbolized by the chirping of robins and sparrows. The sound of the grill and the splashing in the pool announces the arrival of Summer. Unfortunately for Winter, it got the short end of the stick. Nothing says Winter is on its way like the sound of you, your loved ones, and your co-workers, reaching for a tissue and blowing their nose.

Those in the know on matters of the nose will take note: you reach for a tissue and not necessarily a Kleenex®. The owner of the Kleenex® brand has fought hard to keep its trademark from becoming generic, even purchasing advertisements to educate consumers on this distinction, like the ad reproduced below reminding consumers that “‘Kleenex’ is a brand name and should always be followed by an ® and the word ‘Tissue.'”

Kleenex - Trademark Usage Ad

The effort is ongoing, but Kleenex® continues to be a valid registered trademark. Even if Wikipedia (currently) states otherwise.

But the Kleenex® brand has more than one legal battle on its hands. This battle is not with consumers but instead with the U.S. Trademark Office. In May, Kimberly Clark (the owner of the Kleenex® brand) filed a trademark application for a product packaging configuration for facial tissue. The mark is described as “the configuration of a folding container for facial tissues” and is displayed in the drawing below:

Kleenex - Drawing

The actual product packaging, closed and open, looks like this:

Kleenex - Specimen

The Examining Attorney has refused registration, finding that the claimed mark is functional. We’ve discussed the limits imposed by the functionality doctrine a number of times at Duets Blog, wondering aloud whether 2015 might be “the year of functionality refusals.” In short, a claimed mark is functional if it comprises matter that, on the whole, 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.

In support of the refusal, the Examining Attorney identified a number of utility patents owned by Kimberly Clark for facial tissue dispensers and packaging. Interestingly, none of the patents appear to cover this particular design, but instead address older versions of packaging, or a particular component that allows the packaging to dispense only one tissue at a time. The Examining Attorney also relied upon statements from advertisements for the goods, which claimed that the packaging is “slim, stylish and easily fit in a backpack or back pocket.”

The Examining Attorney’s evidence supports a prima facie case, but doesn’t appear bullet proof. Yet at first glance, the packaging appears to be nothing but functional. The packaging allows the tissues to be carried in a compact container, making it amenable to travel. The flat packaging is likely the most beneficial shape, making it easy to fit in pockets or bags. The folding feature is a simple and easy way to close the package, keeping contents from falling out, but still being readily accessible by the consumer. Overall, it looks like an uphill battle.

No response has been filed yet, but perhaps Kimberly Clark will find a way to overcome the refusal. Like the common cold, we’ll just have to wait it out.