: Federal Registration : Duets Blog

Branding Exclamations!

Posted on November 29, 2009 by Steve Baird

Mark Image

Can you name the owner of this exclamation mark branding signal?

You may be surprised to learn it is federally-registered in the U.S. as a stand-alone non-verbal trademark.

You may be even more surprised to learn, it was federally-registered without a showing of secondary meaning or acquired distinctiveness, because it was viewed as an inherently distinctive non-verbal trademark.

This is no ordinary exclamation mark, however, the trademark owner claims it in a 3D appearance, does that help?

Here's another clue: In Latin American countries, the brand name associated with this particular punctuation mark is Pepitos!

Last clue: Would it help to know the goods associated with this registered trademark are chocolate chip cookies?

Answer below the jump.

Here is the answer, and here is the link to the trademark information.

By the way, have you ever noticed this trademark on Kraft's or Nabisco's Chips Ahoy packaging, at least before now?

Me neither, despite being a trademark geek, and despite encountering (and assisting in the consumption of) more than a few packages over many years.

How many ways are there to dress up an exclamation mark (without words) as a trademark anyway?

And, the award for the most disguised exclamation goes to . . . "an exclamation mark within a wolf head design interwoven with a serpant design."

At this point, I'm thinking that the Chips Ahoy exclamation is starting to look a little ordinary.

Now, if adding an exclamation mark (what the USPTO calls "common punctuation") to the end of a series of descriptive words (e.g., America's Favorite Popcorn!) is not adding enough to avoid mere descriptiveness (TMEP 1209.03(u)), how is it that an exclamation mark can immediately function as an inherently disctinctive trademark all by itself?

With respect to International protection for exclamation marks, recently, German clothing and fragrance designer Joop! apparently lost its bid to register an exclamation mark as a trademark in the European Union, report here. Basically, the EU was not going to assume distinctiveness, Joop! had to prove it, and apparently failed.

What do you suppose the USPTO knows about registering common punctuation marks as inherently distinctive trademarks that the EU doesn't?

When Bucking A Trend Makes Sense

Posted on August 1, 2009 by Brad Walz

Under Consideration's Brand New Blog has on two recent occasions commented about the trend in using white as the color for product packaging of consumable goods. Wal-Mart was the first to use this color packaging for its private label brand and the European community appears to be following suit. Using a white background has its marketing appeal, but consumers are unlikely to rely on the color white to distinguish between two different consumable goods. Additionally, it is unlikely that the user of a white background will be able to obtain a federal trademark registration for this color. However, product packaging backgrounds can be another way for companies to distinguish their products from their competitors, and it is possible to obtain a federal trademark registration for the product packaging background.

Background designs can be registered as trademarks even if they are to an extent ornamental and aesthetically pleasing. The key is whether a background design creates a commercial impression separate and apart from the other elements that appear on the product packaging. If the background design creates a separate commercial impression, it can be registered as a trademark. In fact, a background design can be inherently distinctive. In other words, consumers can immediately rely on the background design to distinguish between two sources of goods.

Unless business reasons dictate using an ordinary background, why waste an opportunity to connect with your consumer. Therefore, keep in mind that the background design of your product packaging can function as a trademark and help you further distinguish your goods from those of your competitors.

Tags: Advertising, Almost Advice, Background, Branding, Design, Federal Registration, Federal Trademark Registration, Marketing, Packaging, Product Packaging, Trademarks, Wal-Mart

Kimberly-Clark and The Color Purple: Keeping Trademark Scope Current and Consistent with Business Scope

Posted on June 15, 2009 by Steve Baird

Kimberly-Clark® is no stranger to securing federal registrations for its various non-traditional trademarks. No doubt, these unconventional trademark assets are of great commercial value and an important part of K-C's evolving business strategy and intellectual property portfolio.

My previous post about the oval-shaped facial tissue container K-C was able to federally register in November 2007 is linked here. That post also discussed their current non-traditional trademark application covering a "textured alternating dot pattern appearing on the surface of the carton of disposable paper hand-towels." By way of update, it was initially refused registration in April, but the application remains pending, as can be seen here, with no response due until October 2009.

Kimberly-Clark® has non-traditional, single color trademarks too:

Kimberly Clark Safeskin Purple Nitrile Exam Gloves SAFESKIN® Purple Nitrile Exam Gloves, Beaded Cuff, Small, Purple. Box of 100

In fact, I recently came across a pair of their federal trademark registrations for "the color purple," one obtained in 2002 and the other in 2006. The differences in the description of goods between these two "color purple" registrations help make a point that is quite important to both marketing and trademark types, namely, the importance of keeping registered trademark scope current and consistent with the underlying and evolving business scope.

In considering this pair of color registrations, the more recent 2006 "purple" registration broadly covers "disposable nitrile gloves for general use." The phrase "for general use" is a big deal -- and worth the additional registration -- because it adds significant scope to the narrower federally-registered rights K-C obtained back in 2002 for the same color mark in connection with the far more limited laboratory, medical and surgical uses.

It is often argued that customers from the more narrowly defined laboratory, medical and surgical consuming groups are more "sophisticated" and less prone to trademark confusion than those in the general public, so when marketing channels grow and sales begin to expand from these more "sophisticated" purchasers to also include those in the general public, it is important to make sure the registered rights extend protection to this more vulnerable and larger customer base too.

Moral of the Story: Trademark types, make sure to keep pace with the business and marketing types.

Tags: Articles, Branding, Disposable Nitrile Gloves, Federal Registration, Federal Trademark Registration, Intellectual Property, Kimberly-Clark, Non-Traditional Trademarks, Product Packaging, Purple, SafeSkin, Sight, Single Color Trademark, Touch, Trademarks, Unconventional Trademark Assets

The Power of Federal Trademark Registration Remains Strong in Tough Economic Times

Posted on May 14, 2009 by Steve Baird

The question of whether federal trademark registration should be pursued is a frequent question of those in the marketing world, especially during difficult economic times. I wrote a short piece for Create Magazine a couple of years ago, and you can read it, here. As you will see, there are many benefits to registration and some significant risks in foregoing this valuable protection, making the relatively small investment well worth it.

Just so you know, nothing (including current economic conditions) has changed or rendered my thoughts on the subject moot, in fact, during these tough and challenging economic times, businesses and non-profits would do well to not cut this important cost or corner.

Now, some realize the importance of the protection, but in an effort to save or defer cost, they have considered holding off on filing a federal trademark application -- to see how the product does -- before making a final decision on the filing. If you or someone you know falls into this category, while I sympathize with your and their efforts to manage a tight budget, understand another risk that goes a step further than the risks already covered in the above-linked Create Magazine article.

To do so, after you have conducted the appropriate due diligence to clear use of the new name and mark, ask yourself how long it will take to get your product with the new name and brand in the stream of commerce and in the marketplace. Without the important benefit of constructive use relating back to the filing date of the federal trademark application, it is important to realize that your investment in preparing for the product launch may be lost altogether if another person or company files an intent-to-use trademark application, for a confusingly similar mark, even one day before you get to market with your newly named product. If this happens you and they may very well "see how the product does" with another name.