Texas Toasted? How to Slice the Trademark Spectrum of Distinctiveness

Posted on March 13, 2010 by Steve Baird

  v.     

Texas Toast is the generic name for a type of bread, you know, the big thick double-cut slices. Anyone can call their bread Texas Toast if that is what they are selling, and, by the way, it doesn't have to be toasted for the name to fit.

But, what if you're selling a product made from bread, say, croutons? Can Texas Toast be owned and registered as a trademark for croutons? What if they are big, thick croutons, with a "Texas Toast" cut? And, if you market your croutons as "New York " brand, "The Original Texas Toast" croutons, does that not imply, if not admit, that others are free to compete by selling their own brand of, perhaps, non-original "Texas Toast" croutons? What if you didn't start using a TM designation until after you noticed your competition selling Texas Toast croutons? Interesting questions, no doubt.

Well, ten days ago, a federal district judge in Ohio denied cross-motions for summary judgment in a trademark infringement case over an Ohio company's claimed common law unregistered rights in "Texas Toast" for croutons and a Grand Rapids, Michigan company's claimed descriptive fair use of "Texas Toast" also in connection with croutons. As an aside, having spent two years in school there, when I think of Grand Rapids, Michigan, and bread, sorry, all that comes to mind for me, are the wonderfully and perfectly steamed hot dog buns at the world famous Yesterdog.

In any event, back to Texas Toast, here is a pdf of the decision in T. Marzetti Co. v. Roskam Baking Co. , indicating that it is too early to decide the Texas Toast trademark infringement case because there are several disputed issues of fact, including, among others, the meaning and the term's placement on the all-important Spectrum of Distinctiveness, i.e., whether "Texas Toast" is generic, descriptive, or suggestive for croutons.

Now, since the case wasn't cut short and decided on summary judgment with a limited record, we'll have to wait and see how the evidence shapes up and whose claim ends up being, eh, toasted, but  I'll have to say, at this point, "Texas Toast" sounds to me like a category of croutons -- those cut from texas toast style bread; like Lite and Light is to beer, and Brick Oven is to pizza -- each are generic terms that are not own-able for those goods, because they designate a category of goods, not the origin or source of the goods. By the way, it doesn't matter if you're the first to use a generic term, if found generic, it is available for use by all, even direct competitors.

So, this is probably one of those trademark cases where who wins will come down to the proper placement of the claimed mark on the Spectrum of Distinctiveness. If generic, case over, defendant wins. If suggestive, plaintiff acquired rights based on its first use, two years prior to defendant's use, and will likely win, provided a likelihood of confusion can be shown. If descriptive, plaintiff will be in the difficult position of proving that it acquired distinctiveness in "Texas Toast" prior to defendant's first use, so within a short two-year period of time. If so, good luck with that.

No doubt, when it comes time for trial (or perhaps another summary judgment motion prior to trial), the plaintiff will make the most of the fact that the Trademark Office did not issue a descriptiveness or a genericness refusal on TEXAS TOAST for croutons, see the USPTO details here. Seems like an oversight to me, at least with respect to descriptiveness, after all, the plaintiff has the number one selling brand of texas toast style garlic bread, and it now has expanded that use into the field of croutons.

Ironically, to put its TEXAS TOAST trademark application in condition for publication by the U.S. Trademark Office Marzetti had to argue, and did so successfully, that it wasn't likely to be confused with the prior federally-registered TEXTOAST trademark for bakery products. In doing so, it narrowed its description of goods from "croutons" to "croutons sold in a salad toppings section of grocery stores and supermarkets." Given that Marzetti's mark will now be published for opposition, it is probably safe to assume that Roskam Baking will now oppose registration of Marzetti's claimed TEXAS TOAST mark for croutons, so it doesn't become registered prior to trial, but we'll see.

So, what do you think about the critical Spectrum of Distinctiveness questions?

  1. Is Texas Toast generic for a category of croutons made from texas toast style cuts of bread?
  2. Is Texas Toast merely descriptive of croutons because it immediately describes a feature, characteristic, or attribute of croutons? or
  3. Is Texas Toast suggestive of croutons, because, a consumer's imagination is required to understand the connection between the mark and the goods, or as plaintiff argues, "everything is bigger in Texas."  

Is plaintiff Marzetti's suggestiveness argument all hat and no cattle?

Now, vote again, after reading plaintiff's own description of its croutons below the jump.

We think croutons should be big and bold -- big in size and bold in flavor. That's why we've developed New York Brand Texas Toast Croutons with the Texas Toast cut. They're made with the same commitment to great taste that's made New York Brand Texas Toast America's top-selling frozen garlic bread.

We start with home-baked French bread, generously seasoned for optimal taste satisfaction, and then we cut the loaves into big Texas-sized bites. Bigger bites and bolder flavor -- that's what makes New York Brand Texas Toast Croutons so delicious!

Does this explanation help or hurt the plaintiff's case?

Does it remind you of the SmashBurger fiasco from not too long ago?
Tags: , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , ,
Request Info

See our or enter your information below to send us a quick message and we'll reply in one business day or less.

Your privacy is ensured. We will never sell, disclose, or trade contact information.

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?
Tags: , , , , , , , , , , , , , , , , , , , , , , , , , , ,

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?

Tags: , , , , , , , , , , , , , , , , , , , , , , , , ,

Fair Use of the Google Name, Logo, and Distinctive Color Combination?

Posted on August 13, 2009 by Steve Baird

This unsolicited e-mail communication from the Caribbean Island of Nevis got trapped in our spam filter, but I thought I'd remove the link and bring it out under a short leash for some legal training and discussion:

Google Works

Trademark fair use, you ask?

My answer: No. You wonder, why?

I previously blogged about the trademark nominative fair use defense:

Some advertisers, on the other hand, think that nominative fair use will protect them in using just about anything they want to use in an ad. The nominative fair use defense is actually not as broad in scope as some might think, so now might be a good time to recite the necessary elements of a successful nominative fair use defense:

(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.

Unauthorized use of the Google script and distinctive color combination cannot satisfy elements (2) and (3) of the nominative fair use defense. Too much has been taken (more than the word itself) and what has been taken (logo and style unique to Google) suggests a sponsorship or endorsement, notwithstanding the barely visible and microscopic disclaimer on the bottom of the website the ad would take you to, were you to "Click Here Now," as the ad requests.

What about naming the product "Google Fortune kit"?

Section 33(b)(4) of the Lanham Act, a/k/a the statutory classic or descriptive fair use trademark defense, does not apply unless the use is "otherwise than as a mark," and the term used is "descriptive of" the accused's goods or services, and it is "used fairly and in good faith only to describe the goods or services" (emphasis added) of the one making the unauthorized use.

Naming the product "Google Fortune" fails the classic or descriptive fair use defense because, at a minimum, putting aside questions of good faith for now, the name "Google Fortune" is "used as a mark," and it doesn't "only" describe the offered kit, it also names it and indicates source.

Now, having had the benefit of analyzing the spam e-mail ad with respect to unauthorized use of the Google name, logo, and color combination, how would you analyze the above use of FORTUNE from both trademark fair use defense perspectives?
Tags: , , , , , , , , , , , , , , , , , , ,

Rapala's "More Hits Than Google" Billboard Update (Photo Included)

Posted on July 11, 2009 by Steve Baird

Finally, here is a photo of Rapala's "More Hits Than Google" billboard ad discussed previously in my Monday post entitled: "Rapala Fishing Lures: More Hits Than Google? Or, More Cats Than You Can Shake a Stick At? " Sorry for the delay folks.

Anyone notice the exceedingly small print located in the lower right corner of the billboard ad?

OK, leaving your microscopes at the lab, three guesses what it reads:

  1. How about, "If you're close enough to read these words, then you must be part of the work crew installing this sign, so please be sure to secure the corners to prevent the wind from turning the sign into a sailboat?" Cute, nope.

  2. What about "Wow, you climbed all the way up the ladder just to read this microscopic print, you're so dedicated, or perhaps just a lawyer obsessed with very fine print?" Yes, but no.

  3. Does it say, "Just say 'no' to Graffiti, or pay $500 fine?" Good idea, but again, no.

Drum roll, please, it reads: "Google™ is a registered trademark of Google Inc."

How do I know what it reads? Actually, it was an adventure. This sign is positioned to be visible to drivers and passengers heading West on Interstate 394 leaving Minneapolis, so I exited the Interstate and pulled on to the frontage road running parallel to the Interstate, then I parked in a business parking lot nearest the sign, then I got out of my car and walked toward the sign until I was probably 40 feet away to read it, and I was probably more than a couple hundred feet from the edge of the Interstate at that point. In case you're wondering, I still have 20/20 vision with the help of my glasses, and yes, I was wearing them.

Perhaps the print is so small because it only says what everyone already knows: Google owns the Google trademark. But, if Rapala knows that Google is a federally registered trademark, why use the ™ instead of the registration symbol: ®?

Also, anyone notice the small ™ superscript on the shoulder of the "e" in the "More hits than Google™" tagline or slogan? Is that there to indicate Rapala knows that Google is a trademark, to those who don't take the time to climb the billboard ladder? Or is it there to indicate that Rapala is claiming trademark rights in the slogan or tagline: More hits than Google.™? Does Rapala really think it can own a slogan or tagline that contains the famous Google® mark, perhaps to prevent Louisville Slugger or Country Music legend George Strait from adopting the very same tagline or slogan to tout the "hits" each has achieved with their own products and services?

If the small print is intended as a legal disclaimer, to help avoid liability, good luck. First of all, some courts have held that disclaimers often create more confusion than they are intended to lessen. Second, I can't imagine any court giving credence to a "disclaimer" that is not even legible. Third, the fact that the "disclaimer" doesn't say, "Used with Permission" or "Used Under License," seems to confirm that this use is not authorized by Google. If so and to be somewhat effective, shouldn't the disclaimer say that no permission to use is required because Rapala believes it constitutes fair use?

I'm simply fascinated by the fair use analysis that I assume Rapala considered before running this ad. So, more later on the "fair use" possibilities, stay tuned.
Tags: , , , , , , , , , , , , , , , , , , , ,