Surface Level Branding Runs Deep on This Athletic Field

Posted on December 14, 2009 by Steve Baird

Mark Image

To sports fans of this university, December has been a big month because their beloved team finished the 2009 regular football season undefeated (13-0) once again, winning yet another post-season BCS bowl game bid. Next month will be even bigger news if their WAC team happens to defeat TCU in the Tostitos Fiesta Bowl. To trademark types, however, the biggest news of all is what this university was able to accomplish last month at the U.S. Patent and Trademark Office.

You might be surprised to learn (I was) that the above image is the drawing associated with the single color trademark ("the mark consists of the color blue used on the artificial turf in the stadium") that this university was able to federally register in connection with: "Entertainment services, namely, the presentation of intercollegiate sporting events and sports exhibitions rendered in a stadium, and through the media of radio and television broadcasts and the global communications network." Hat tip to Brad Frazer of the Hawley Troxell firm, in Boise, Idaho.

Quick question, how does one render entertainment services in connection with a single-color trademark through the "media of radio broadcasts"? Does oral reference to the blue turf on the radio constitute use of the mark in commerce?

In any event, the identity of the university in question, is revealed below the jump, and it is, of course:

Boise State, a/k/a the Broncos, a/k/a The Blue, whose teams play on what some call Smurf Turf in Bronco Stadium (not to be confused with Invesco Field at Mile High, where the similarly-colored blue and orange Denver Broncos play their NFL football games on regular green, grass turf):

File:Bronco Stadium Blue Turf October 31 2009.JPG

As interesting as the registration of the blue turf trademark is, the timing of the decision to federally register is as well. Why? On September 9, 2008, the NCAA reported that Division II University of New Haven (located in Connecticut) "adorned their new blue field -- one of only two in the country -- at Ralph F. DellaCamera Jr. Stadium with a 50 x 30-foot Charger logo September 8 in preparation for the return of the UNH football program and membership in the Northeast-10 Conference." Two weeks later, on September 23, 2008, Boise State filed for federal registration of the blue-colored turf trademark, claiming over twenty years of continuous use. Given this timing, is there a battle of smurf turfs likely on the horizon?

If so, here's a question to ponder: Since Boise State didn't seek federal registration until after UNH commenced use of its own blue-colored athletic turf in West Haven, Connecticut, Boise State doesn't enjoy the substantial federal registration benefit of nationwide constructive until its later filing date, so the question becomes, does Boise State have enforceable prior common law rights in West Haven?

Boise State's Bronco Stadium apparently has sported blue-colored artificial turf since 1986, the first being blue-colored AstroTurf (1986-2001), then blue-colored AstroPlay turf (2002-2007), and finally, blue-colored FieldTurf (2008-present). So, might the answer depend on how many Boise State home games have been televised and/or viewed over the years in West Haven, Connecticut, or might it depend on whether The Humanitarian Bowl has been televised and/or viewed in a consistent enough manner in West Haven to acquire distinctiveness and establish prior common law rights there?

While it may be hard to imagine that Boise State home football games have been consistently and sufficiently aired or viewed in Connecticut to establish prior common law rights there, Boise State's Bronco Stadium also has been home to The Humanitarian Bowl since 1997, so there has been more than a decade of post-season bowl-game football played on Boise State's blue-colored turf. Now, how many of those games have been aired or viewed in West Haven, is beyond me.

With respect to validity, might there be a question of some yet-to-be-identified functionality, since one artificial turf manufacturer reports that "blue" is "probably the most popular" color choice for artificial turf? It would be interesting to explore the reason for this popularity.

On a broader note, will Boise State's success in the U.S. Trademark Office lead others to follow along this trademark path?

I, for one, would love to watch the beloved teams from my alma mater, The Iowa Hawkeyes, play football in Kinnick Stadium on a yellow-colored turf -- perhaps canary yellow, and 3M could sponsor a new post-season bowl game (not that we need another), let's call it The Post-It Bowl!

The problem is, of course, in January, and even December, Kinnick Stadium is likely to look rather white no matter what the underlying turf color may be.  
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Does Your Eye Spy A Canary?

Posted on November 2, 2009 by Steve Baird

A couple of weeks ago I posted an Accountemps billboard advertisement that prominently features what appears to be a 3M Post-it brand removable adhesive note, and I asked whether it constitutes fair use, and whether 3M's permission is necessary to run the advertisement, since 3M owns a federal trademark registration for the color "canary yellow" in connection with these notes.

As the comments to that post reveal, some recognize the billboard image as a 3M Post-it note, and believe permission should be required to run the ad, others were unaware that 3M has a trademark on the color canary yellow, others believe that yellow adhesive notes are generic, and several apparently believe that even if the billboard depicts a 3M canary yellow Post-it note, no permission should be required. In fact, several pointed out that yellow adhesive notes can be obtained from a variety of sources, raising the question of how close those shades of yellow are to 3M's trademarked canary yellow?

So, just for you, I collected six different pads of yellow-colored adhesive notes and fixed them to a dark green background for a little follow-up quiz. Can you identify any "canary yellow" and name the sources of the six different yellow adhesive notes shown below (answers below the jump)?

(A) Unknown (unmarked yellow-colored removable adhesive note);

(B) 3M's Post-it brand "Pop-up Notes" (packaging states: The color "Canary Yellow" is a trademark of 3M);

(C) Target's Work.org brand "self-stick removable notes" (no reference to color or trademark);

(D) 3M's Post-it brand "Recycled Notes" (packaging makes no reference to canary yellow color or trademarks);

(E) Highland brand "Self-Stick Removable Notes" (packaging refers to Highland as being a trademark of "Minnesota Mining and Manufacturing" -- no reference to 3M, and no reference to "canary yellow" or color trademarks); and

(F) Office Max's "Self-stick Pop-up Notes" (no reference to color or trademark).

All of this raises a few more questions worth asking:

(1) Since (B) and (D) appear to both be 3M's Canary Yellow, why doesn't 3M mention the trademarked color on packaging for its Recycled Notes? Are the Recylced Notes not Canary Yellow?

(2) Since (A), (C), and (F) closely resemble the yellow shade of 3M's Highland brand (E), does that mean 3M views the Highland color and these others to fall outside the legal scope of protection for the Canary Yellow trademark?

(3) Where should a court draw the line in comparing color shades for purposes of determining likelihood of confusion? How should this be measured, by wavelength, colorimeter device, Pantone matching system? Doesn't a note's clear cellophane wrapper affect one's visual perception of color? What about in-store lighting differences, won't they affect one's visual perception too? How about when outside on billboard advertising, could infringement depend on the daily weather? Sunny days infringing, cloudy days non-infringing? Lastly, what about on-line uses of color? I found that I perceived the above collage of six different color squares differently depending on which computer and monitor I viewed them from.

Has any of this changed your view one way or the other about whether Accountemps needs 3M's permission to run the billboard ad?
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Fair Use of 3M's Post-It Note?

Posted on October 19, 2009 by Steve Baird

This billboard ad has appeared in various locations around the Twin Cities for some time now. 

Each time I saw it, I wondered whether it would be the last, given how vigilant 3M is in protecting its various trademarks and other intellectual property. This time, I had a camera handy to capture it.

Now it's time for some questions.

Is there any question that this Accountemps billboard advertisement prominently features a Post-It brand note?

After all, 3M owns a non-traditional single-color trademark and federal trademark registration for the color canary yellow "used over the entire surface" of "stationery notes containing adhesive on one side for attachment to surfaces." In case you're wondering, at least one dictionary defines "canary yellow" as "a light yellow." Other 3M trademark registrations related to the Post-It brand refer more broadly to "yellow," and are not limited to "canary yellow," here, here, here.

This billboard ad appears to be yet another example of a well-known, if not famous, non-traditional trademark being used in another's advertising, not for comparison purposes, but as a prop to help sell goods or services totally unrelated to those of the non-traditional trademark owner. Is the use necessary? Is it appropriate? Should it be considered a fair use, if made without permission? Why didn't Accountemps make the stationery note prop appear in a color that is not trademarked?

Is the use likely to cause confusion, keeping in mind that actionable confusion is not limited solely to confusion about origin or source, but also protects consumers against likely confusion about affiliation, connection, association, sponsorship, or approval?

Is the look of 3M's Post-It note a famous trademark? If so, it is entitled to dilution protection too. Section 43(c) of the Lanham Act protects against "dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury." If everyone started to depict a Post-It note in their ads would that tend to blur the distinctiveness of 3M's trademark or strenghten the brand? I'm thinking that trademark types and marketing types might have different takes on this question.

As you may recall, we previously have discussed the implications of using another's non-traditional trademark in advertising: Levi's Double Arcuate Design trademark and the shape of a Corvette from the 1960s.

So what do you think, does Accountemps need 3M's permission for this billboard advertisement?

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Medline Industries, Inc. v. 3M Company (False Advertising Complaint Attached)

Posted on August 31, 2009 by Steve Baird

[Item]: Sterillium Surgical Hand Scrub, 1000mL [Additional Info]: STERILLIUM SURGICAL HAND SCRUB, WATERLESS, SCRUBLESS,, COMPARE TO AVAGARD AND TRISEPTIN. STERILIUM IS NON-STICKY, DRIES FASTER AND PROTECTS HANDS. VERY COMPETITIVE. BEST SELLER IN EUROPEv.               3m Avagard Surgical Scrub 16 Oz

                        (Medline Sterillium Rub)                                          (3M Avagard Surgical Scrub)

In a very recent false advertising lawsuit, Medline Industries is all lathered up, alleging that 3M Company is playing dirty in the surgical hand antiseptic marketplace by making false and misleading statements in advertising about 3M's Avagard brand surgical scrub and Medline's competing Sterillium Rub brand surgical hand antiseptic.

Here is a copy of the complaint filed in U.S. District Court for the Northern District of Ohio. As you will see, Medline alleges that 3M has made the following false and/or misleading statements of fact in advertising, in violation of Section 43(a)(1)(B) of the Lanham Act:

  1. Sterillium Rub lacks approvals and/or benefits that it should have;
  2. Sterillium Rub is of a lesser standard, quality, or grade than what it is;
  3. Sterillium Rub does not meet FDA scrub test criteria;
  4. Sterillium Rub does not meet AORN recommendations;
  5. Sterillium Rub does not meet persistency requirements of the FDA;
  6. Sterillium Rub cannot meet FDA criteria for persistency or cumulative activity; and
  7. Avagard is the only waterless, brushless hand antiseptic that meets FDA persistency requirements. 

Paragraph 31 of Medline's false advertising complaint appears to be the most personally and potentially infectious:

During deposition testimony given in the related litigation styled GoJo Industries, Inc. v. 3M Company, United States District Court for the Northern District of Ohio, Eastern Division, Case No. 5:09-cv-1251-DDD, [the] Regulatory Affairs Manager in the Infection Prevention Division of 3M, admitted that statements contained in the marketing literature disseminated by 3M in which 3M compares Avagard to other surgical antiseptic hand scrub products, including Sterillium Rub, misrepresented the FDA scrub test criteria for surgical antiseptic hand scrubs. [She] confirmed this deposition testimony in her testimony before the Court at the preliminary injunction hearing during which the Court characterized her efforts to explain this testimony away as not at all persuasive (citations omitted).

Not only has Medline sued 3M for this alleged unlawful conduct, but it also has taken its claims directly to health care professionals and the surgical hand antiseptic marketplace, commencing a comparative advertising campaign of its own. Presumably, 3M will be closely scrubbing each of the literal and implied claims set forth in this advertising brochure distributed by Medline and BODE Chemie GmbH & Co.

So, stay tuned for developments concerning this interesting federal false advertising case.

Hopefully, we'll eventually be able to learn who comes to court with clean hands. 

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