Duets Blog : Creativity and the Law: DuetsBlog

By way of example, perhaps you will recall my prior post about the Furminator and the lost intellectual property opportunities there?

In all fairness, the above-described marketing style may or may not portray the Bawls® Guarana energy drink brand, I can't know for sure, but seeing some of the brand's marketing statements -- after being drawn in by the brand -- has raised enough questions and goose bumps for me to at least wonder out loud.

Let's face it, the packaging is visually striking and begs to be handled like no other. Judging from reactions I have seen others have to the bottle, there is something about it that makes people want to touch it, feel it, or hold it, even if they don't end up consuming the contents.

What an amazing opportunity to engage multiple human senses and cement the bond of loyalty between consumer and brand. Indeed, the bottle design almost seems inspired by the teaching of famed Martin Lindstrom in his pioneer work on "sensory branding," entitled BRAND sense, but it appears to predate Lindstrom's 2005 masterpiece by almost a decade.

Although Bawls® brand owner Hobarama, LLC, has obtained a federal trademark registration for a number of visual elements combined together to form a specific trade dress concerning the bottle configuration, owning a purely tactile or touch trademark in the arrangement of the "bumps" element itself appears impossible now (and may even raise questions about the validity of the "bumps" aspect of the trade dress), given admissions already made in marketing materials: "The 'bumps' on the bottle are there to provide a grip so that it does not slip out of your hand when it is wet. And we think it looks cool." Cool looks are fine to tout, but not "non-slip" features, if trademark protection is desired.

Moreover, the statement "Our famous glass bottles are bumped to give BAWLS drinkers a non-slip-grip" seems commercially unnecessary, if not a subtle diversion for another possible explanation of the "bumps" given the risque' and double-entendre-laden brand name, but either way, the "non-slip" reference condemns any hope of a pure touch trademark based on the admitted functionality.

Why commercially unnecessary? Really, can you name another energy beverage brand that needs non-slip-grips in order to compete with Red Bull®?

I can't.

Product configurations, such as the product shape shown above, may be owned, registered and protected as unconventional or non-traditional trademarks, but only if the claimed design is non-functional and it is proven to have secondary meaning a/k/a acquired distinctiveness. Our friend John Welch of the TTABlog published a nice piece on this topic a few years back.

One cannot recover from a trademark functionality refusal when one's own marketing materials and advertising touts the utility or the functional advantages of the very applied-for design features. Although it doesn't appear that the assigned Examining Attorney at the Trademark Office used advertising of the Applicant, FURminator Inc., to support the functionality refusal, as they are quite happy to do when they can, it appears there was more than ample "touting" material available.

An Applicant's website is where most Examining Attorneys start, and in this case, one of the touted "features and benefits" of the FURminator® deShedding Tool found on its website is the "Ergonomic handle" also known as the "Ergonomic rubber comfort grip." In fact, on the Applicant's About Us page it says even more: "Little by little they experimented with different, more-ergonomic handle designs and more-effective edges. After many modifications they arrived at their most successful design and had it patented." Ouch, deshedding with statements like this hurts your ability to secure trademark protection in non-traditional trademarks, including product configurations and trade dress. Moreover, Online retailers and others in the media tend to quickly take the lead of the manufacturer and repeat the same kind of unhelpful statements, making it virtually impossible to clean up all the dander mess after the fact.

Obviously, early strategic collaboration between legal and marketing types can lead to success in avoiding the creation of marketing materials and advertising that make it impossible to ever protect the configuration of a product using the trademark laws. It is also important not to forget to include engineering or other technical types in early conversations about the possibility of securing legal protection -- even before the final product design is completed.

How do you know when engineers or other technical types in an organization are driving the company sales bus without trademark and marketing licenses? One sign might be when advertising and marketing materials tout utilitarian advantages of product features that the company would like to own forever as a trademark (long after any design and utility patents expire). Another sign can be when trademark applications and registrations employ complicated, detailed, patent-like, narrow descriptions such as "pet brush, namely, a grooming device for fur bearing animals in the nature of a brushlike instrument for removal of the animals' loose or shedding hair," instead of straightforward, broad, and pre-approved trademark-like descriptions such as "brushes for pets". Kind of reminds me of the trouble Rollerblade got into by using "boots equipped with longitudinally aligned rollers used for skating and skiing" instead of "in-line skates" during its first decade of business, as you may recall from my prior blog post, here.

Finally, it appears that FURminator Inc. has not yet given up on a related, but different pair of non-traditional trademark applications for the so-called "trade dress" of the FURminator® grooming tool, of course, minus the product shape or configuration, leaving only a combination of colors as they are applied to the product: "[T]he color black of the hand-grip portion of the handle of the tool in combination with the color blue [or yellow] making up the portion of the handle that attaches the hand grip portion to the pet-engageable portion of the tool." Earlier this year both applications were initially refused registration on lack of distinctiveness grounds, here and here, and responses are due in about a week, so we'll know soon whether these applications will continue to be petted and combed or if they'll simply be shed from the company's trademark portfolio.

Anyone else think they may have a bit of hair on them?

Now, fabric bags for holding bottles of distilled spirits and wine have been around for a while. In fact, Crown Royal's iconic purple-colored velvet pouch bag apparently has been distributed in the U.S. since 1964, and the visual appearance of the bag without any wording was federally registered by Diageo as a non-traditional visual trademark in 2006, in the form depicted above on the right. Despite the fact that the U.S. Supreme Court has indicated in Wal-Mart v. Samara that product containers and packaging may be considered inherently distinctive, the Crown Royal purple pouch bag was only registered after Diageo made a compelling showing of "secondary meaning," i.e., acquired distinctiveness.

Although Diageo appears to have made no attempt yet to federally register or protect the velvet touch or feel of the Crown Royal pouch bag, American Wholesale Wine & Spirits, Inc., obtained a federal trademark registration toward the end of 2006 for a touch mark comprising "a velvet textured covering on the surface of a bottle of wine." Interestingly, the wine label on file with the Trademark Office shows Khvanchkara (apparently a favorite of former Soviet leader Joseph Stalin)as the related name brand to this touch mark, but the word mark is owned by someone else.

Anyway, during prosecution of the "velvet touch" trademark application for wine, the Trademark Office noted the sale of velvet bags for use in carrying wine and distilled spirit bottles, particularly the Crown Royal whiskey bottle example. However, convincing the Trademark Office that the "velvety touch" of the Khvanchkara wine bottle was so unique as to be inherently distinctive, American Wholesale successfully argued the difference between the "loose fitting bag" of Crown Royal and others as compared to how Khvanchkara's "glass bottle is tightly encased within a velvety fabric," and perhaps most importantly, noted: " [T]he FEEL of a LIMP bag is quite different from the FEEL of a TURGID velvety surface attached to a wine bottle." Alrighty then, I suppose that argument ought to limit the scope of the resulting "velvet touch" registration, to tight fitting wine bottle covers confusingly similar to velvet fabric (silk, nylon, acetate, rayon, etc.), right?

Maybe not, at least, in uncontested registration refusals issued by the Trademark Office where the limp/turgid argument doesn't appear on the face of the registration. I was more than a bit surprised to learn of the exceedingly broad scope this registration has enjoyed by at least one Examining Attorney with the U.S. Trademark Office. For example, the Khvanchkara "velvet touch" registration served to bar registration of another company's leather touch mark for wine, describing the claimed mark as: "[A] leather-like textured covering on the surface of a bottle of wine, brandy or grappa." Here was the Trademark Office Examining Attorney's analysis in refusing a leather touch based on the prior velvet touch: "Although the coverings are different materials, both are highly textured and closely cover the glass wine container. The marks are therefore highly similar in appearance . . . . The goods at issue are all wine. Purchasers could mistakenly believe that the goods come from a common source." (Putting aside the obvious tactile differences between leather and velvet, why is the Examining Attorney comparing the "appearance" of the touch marks, shouldn't the "texture and feel" be the appropriate point of comparison?)

In addition, back to the prosecution of the "velvet touch" non-traditional trademark application, you might be interested to know that the Trademark Office warned how functional features of products cannot be protected or registered under any circumstances, and in response, American Wholesale represented "applicant's velvety material has no utilitarian function," and it is "entirely non-functional": "There is no function for applicant's velvety feel of its wine bottles other than to distinguish them from all other wine bottles, which lack a similar feel, and to indicate the source of the wine, from applicant."

Actually, one might wonder about the validity of the "velvet touch" registration for Khvanchkara wine and whether the claimed "velvet touch" functions more to communicate information about a "velvety" characteristic of the wine instead of single source, trademark information, since "velvety" is a known "wine tasting term used to describe the texture of tannin in some red wines." Indeed, online retailer BestinWine.com says this about the very Khvanchkara red wine in question: "The taste is velvety with a blend of vintage flavours." Aaron Linderman's From the Cradle of Wine Blog says this about Khvanchkara red wine too: "The taste is harmonious and velvety with a raspberry flavor and subtle oak tones resulting from the fermentation process." Isn't this somewhat analogous to treating the color yellow as functional and part of the public domain for yellow-colored safety products? If so, to avoid providing one with an unfair competitive advantage over another, shouldn't "velvet touch" wine bottle coverings be available for use in connection with any wine having a "velvety" quality, whether or not the covering is limp, loose, tight, or turgid?

Simple sign, simple question, simple answer, right? I thought so, at first, but apparently not. Well after the fact, my rather informal survey yielded four different answers from four different people:

1. $3.50
2. $6.50
3. $11.00
4. $14.50

So, what is your answer? One of the above, or none of the above? I chose Door No. 2.

OK, because I entered the lot before 5pm and was ready to leave the lot after 5pm, I offered to pay $6.50, for spending 1-2 hours in the lot, but was told I had to pay the $11.00 "Weekend Night Rate" to exit the lot, unless I wanted to call the police and convince them otherwise. Really.

After a rather frustrating face-to-face discussion with the attendant and an even more frustrating telephone discussion with the night manager on duty (this guy seemed to be a Five Man Electrical Band fan with a heavy emphasis on the "can't you read the sign?" lyrics), I declined the offer to call 911, paid the $11.00, and took it up with parking lot management bright and early on Monday morning. After speaking with a total four different employees, I was left with the firm conviction that they "knew" I owed $11.00, because they "knew" what they meant the sign to say, yet my fine legal training told me otherwise because neither the "Night Rate" exception (enter after 5pm) nor the "Weekend Day Rate" exception (valid 5am-5pm) applied to my situation.

Anyway, this negative brand experience got me thinking about how important good, clear, and accurate signs are to building favorable and positive brand experiences. It also got me thinking about what makes a good sign, and putting aesthetics and design aside, because those topics are better left for our talented pool of Guest Bloggers, I came up with two key elements: (1) simplicity; and (2) accuracy. In fact, I submit that if either is lacking it can lead to a negative brand experience -- one where the sign and the brand the sign represents are out of sync or not on the same page, so to speak (assuming, of course, one promise of the brand is a favorable experience).

By way of dramatic contrast, the favorable brand experience I had at Fogo really reinforced and illustrated this point. Indeed, one of the "signs" that Fogo is known for is the two-sided disk -- one side red, the flip-side green. Everyone at the table gets one. The Fogo disk sign easily satisfies the simplicity portion of my two-part sign test:

"Each guest uses a two-sided disk to control the pace of their meal. The green side signals the Gaucho chefs to bring out skewers of sizzling fire-roasted meats to carve at the table. The red side indicates a stopping point. Turning back to green lets the Gaucho chefs know to start offering the meats again."

Not only is the Fogo disk sign simple, it is accurate too. The Gaucho chefs don't bother you when you desire a "stopping point," (perhaps to loosen your belt) unless someone sitting next to you plays a childhood prank by quietly flipping your disk back to green, as my giggling children learned quickly, and as the Gaucho chefs seem to have seen more than a few times before. So, the Fogo disk sign reinforces the Fogo brand and creates at least the opportunity for a positive brand experience because it is both simple and accurate.

As an aside, for you trademark types who enjoy riddles, no, it doesn't appear that Fogo views the two-sided disk as a trademark, at least it hasn't attempted to register it as one yet, despite owning two other rather interesting non-traditional trademarks, including five vertical skewers of meat surrounding a campfire, and a chimney design. I'm thinking that the above quote from Fogo's website would make it rather difficult to overcome a functionality refusal on the two-sided disk, at least as a non-conventional trademark.

Anyway, to wrap things up, back to the parking lot part of the story. The fourth person I spoke to, the person with whom "the buck stops," had a much different view of the parking lot brand than the previous three. So, not only can poor business signs get in the way of positive brand experiences, but obviously, employees who don't live up to the company's brand promises can too. I was eventually told "we want to keep you as a customer," despite what the others said. In fact, I was mailed a full refund (more than I asked for) and I cashed the check a couple of days ago, just in time to feel safe running with this blog post. And, in case you're wondering, I am also informed that the sign is being "re-done," so let's just consider this whole exercise a public service. 

This is how Holiday Inn describes the claimed green lighting trademark:

"The mark consists of green lighting formed by four light fixtures placed in a symmetrical fashion near the entryway of the building. The lower set of two green lights are evenly placed on columns to the right and left of the entry way and direct the green lighting downward, while the upper set of two green lights are evenly placed on the building wall above the entry way and direct the green lighting upwards."

It took the Trademark Office only three weeks to issue registration refusals (green lighting refusal in pdf here).

Surprisingly, the Trademark Office did not issue an initial functional refusal as it typically does when trade dress and single color marks are claimed, which would put the burden on the applicant to establish non-functionality, but it nevertheless refused registration for the following reasons:

• Non-distinctive three-dimensional configuration
• Mere decoration or ornamentation
• Acquired distinctiveness not shown
• Customary in hotel industry to have lighting near entrances for illumination/security

Having said all that, the concept of protecting a lighting scheme as a trademark, even a colored one, even in the hospitality industry, is certainly do-able with early and close collaboration between trademark and marketing types.

They are not common, however, as evidenced by the Trademark Office's inability to locate a prior registration to bar approval of the Holiday Inn applications on likelihood of confusion grounds. Indeed, the only federally-registered non-traditional lighting mark in the hospitality industry that I'm aware of, despite some admittedly modest searching, is one I obtained for Mystic Lake Casino & Hotel more than ten years ago, covering "a formation of light beams resembling the conical framework of a tipi emanating from a circular source of light."

My humble prediction is that a strong showing of look-for advertising is what it will take for Holiday Inn to avoid having their green and blue lights simply burn out at the Trademark Office.

Holiday Inn has until November to respond to the initial registration refusals, so stay tuned here on DuetsBlog for further developments.