Color Trademarks, Red Knobs, and Secondary Meaning

Posted on February 22, 2010 by Steve Baird

More on single color trademarks today. Eighteen months ago, Wolf Appliance obtained a federal trademark registration in connection with "a red knob or knobs" of "domestic gas and electric cooking appliances, namely, ranges, dual-fuel ranges, cooktops, and barbeque grills."

Wolf put its registration to the test a couple of weeks ago in a federal trademark infringement action, venued in the Western District of Wisconsin, in which it asked the court for immediate injunctive relief to stop arch-rival Viking Range from offering a Red Knob Kit as an accessory for its competing high-end residential cooking ranges (typically equipped with standard black knobs).

Here is a pdf of the decision, granting Wolf's request for a preliminary injunction. The Wisconsin State Journal reported on the decision. Last December, ApplianceAdvisor.com shared a rather cynical view of Wolf's single color claim of exclusivity when the lawsuit was first filed.

So, how did Wolf pull it off? Well, here's the short answer:

  1. Before bringing the lawsuit, Wolf obtained a federal trademark registration for the knobs, entitling it to a presumption of validity when the time came to enforce exclusive rights;
  2. To demonstrate secondary meaning in its red knobs, Wolf made good use of "look for advertising" on its website: "Choose black knobs, or let everyone know it's a Wolf with our distinctive red knobs;" in catalogs: "Knob appeal. This is, perhaps, the first thing one notices about a Wolf product. The red knobs serve as a reminder of its distinctive nature"; and in advertising: touting the red knobs as "distinctive" and an "exclusive Wolf feature";
  3. Viking apparently stopped selling a range with red knobs back in 1993, and since 2000, Wolf had made "substantially exclusive" use of red knobs on domestic cooking ranges; and
  4. Greatly assisting its secondary meaning claim to the red knobs, Wolf enjoyed the benefit of significant media attention and stories, specifically mentioning Wolf's "distinctive," "iconic," "classic," "recognizable," "status symbol," "trademark," and "signature" red knobs.

Trademark types, doesn't the court's recognition and reliance on this very helpful media attention evidence make you want to collaborate with your favorite PR type the next time your client is pursuing a single color trademark or some other form of non-traditional trademark rights?

With respect to the question of likelihood of confusion, the Court was moved that there could be initial interest confusion through this hypothetical scenario:

"Suppose a potential range customer is at a dinner party and the hostess tells the potential customer how much the hostess enjoys her range. The range happens to be a Wolf range with red knobs. Several weeks or months later, when the potential customer enters a retail store to browse ranges, he or she sees a stainless steel Viking range displayed with red knobs that looks similar to the red-knob range he or she has seen in the past. There are no other ranges displayed with red knobs. The customer does not remember the brand of the hostess' range, but the customer knows that Viking is a well-known manufacturer in the high-end range market. The red knobs look familiar, so the customer thinks this is the range to which the hostess spoke so highly. . . . Such a situation could qualify as 'initial interest' confusion, because defendant would be reaping the benefit of the goodwill that the plaintiff has developed in its mark."

Are you concerned? Do you find this hypothetical scenario plausible?

What remains to be seen is whether the case continues to conclusion for the entry of a permanent injunction after a full trial. While it is true that the grant or denial of a preliminary injunction often results in an amicable settlement of the lawsuit, this case may not end that way.

Even though Viking lost the first round in this bout, it has brought a counterclaim to cancel the red knob trademark registration issued by the U.S. Trademark Office in 2008. Moreover, if Viking determines that it has a commercial and competitive need to offer the Red Knob Kit, it would be rather easy to resume distribution of the kits at a later time, provided it is able to either invalidate the registration or win on the ultimate issue of whether there is a likelihood of confusion in the marketplace for residential cooking ranges. 

To the extent Viking Range decides to continue its defense and counterclaim to invalidate Wolf's red knob registration, I predict that discovery will vigorously probe functionality as a possible basis for invalidation. A win on functionality would be complete, it would knock out the registration, and make it unnecessary to even consider the likelihood of confusion question of infringement.

In case you're wondering about scope, it would appear that both commercial ovens and toy ovens having red knobs are outside the scope of Wolf's registered trademark.

Stay tuned for more on this interesting case.

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An Increasingly Intense Ellipsis? dot, doT, dOT, DOT!

Posted on November 9, 2009 by Steve Baird

Mark Image

As you may recall, last month, we had some fun trying to solve the mystery of a non-traditional and non-verbal trademark owned by Amazon.com, here.

This time the non-traditional and non-verbal mystery mark shown above is described in trademark filings as consisting of "four circles that increase in size from left to right." I call it an "increasingly intense ellipsis." What would you call it, if you had to give it a name?

More importantly, have you seen it before? Do you recognize it? Are you surprised to know it is registered and protected as a trademark? Do you know what goods and services are associated with it? Do you know who owns it?

OK, need more information?

You don't need the products bearing this "increasingly intense ellipsis" mark or the services associated with it to shop online at Amazon.com or any other online retailer. Did that help?

No? Here's another hint: It is used in close association with this service mark: Tap & Go.

Still not enough? Alright, enough suspense?

The visual answer and more discussion is below the jump.

 Boots to trial contactless payment 0

Yes, MasterCard is the owner of this "increasingly intense ellipsis" (my words) mark, for financial services in Int'l Class 36, and smart cards in Int'l Class 9. The non-traditional mark is used in close association with MasterCard's PayPass and Tap & Go marks at the physical -- not virtual -- point of retail sale.

Now, given that a trademark and service mark must (1) identify goods or services, (2) distinguish them from those of others, and (3) indicate the source of the goods or services, do you agree that the "increasingly intense ellipsis" performs each of these critical trademark functions?

If so, does it do so standing alone, without the closely associated MasterCard housemark or PayPass secondary mark?

Isn't this the kind of mark where "look-for advertising" would help consumers know this actually is a trademark instead of simply non-distinctive ornamentation?
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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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Simply a Miscellaneous Design?

Posted on October 8, 2009 by Steve Baird

Mark Image

In case you're wondering, this design is a federally-registered non-verbal trademark.

The owner identified it as a "Miscellaneous Design," without further detail or description (since it predated the more rigorous rules on supplying the Trademark Office with an accurate and detailed description of the mark).

The U.S. Trademark Office assigned to this design mark Design Code 24.15.25 ("other arrows") and in some cases 26.17.09 ("bands, curved; bars, curved; curved lines, bands or bars; lines, curved.").

So, now that you're armed with all this valuable information, certainly you can answer three simple questions: (1) Who owns it? (2) What is it? and (3) What goods or services are identified and distinguished by this non-verbal design mark?

(1) Does this help answer my first question?

Mark Image

(2) As to what it is, most individuals at the Trademark Office who have coded the design connecting the "a" to "z" see an arrow, but some see a curved line too.

I see a smile (perhaps my positive outlook on life), but I'm aware of at least one other optimist, here. Actually, Graphic Design Blog identifies the Amazon.com logo as one of 25 logos with "hidden messages," one being the apparent smile. In addition, if you were to pay close attention to a previously used animated version of the Amazon.com logo, I am informed you might be able to see another more unwholesome and unintended perspective of the design, apparently an animated version from the year 2000 where the arrow grows from left to right, as described here.

(3) Now, as to what goods or services are identified and distinguished by this "miscellaneous" design mark, it is only federally-registered in the U.S. within Int'l Class 39 for "packaging of articles for transport for others." Amazon.com sought registration of the "miscellaneous" design in Int'l Classes 35, 36, 38, 41, and 42, but each of those applications eventually was abandoned. 

Having said that, the "miscellaneous" design appears as part of the Amazon.com composite logo shown above and is federally-registered in that composite form for a variety of services falling in the same Int'l Classes that were abandoned for the stand-alone non-verbal logo, namely, 35, 36, 38, 41, and 42.

Lessons to be Learned?

  • The "miscellaneous" description won't cut it anymore, more detail is now required;
  • Sometimes designs can communicate multiple meanings and commercial impressions;
  • Ultimately, the meaning of a non-verbal design is based on the impression actually created in the minds of consumers, not what may have been intended by the trademark owner or assigned by the Trademark Office; 
  • The assignment of U.S. Trademark Office Design Codes is rather subjective and quite imperfect; and
  • Searching to clear non-verbal logos can be quite difficult and is more art than science.
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Don't Underestimate the Power of a Logo and Other Distinguishable Matter

Posted on September 30, 2009 by Brad Walz

Yesterday, Under Consideration's Brand New Blog discussed the redesign of the Nickelodeon trademark. Nickelodeon has decided to drop the well known splat design that encapsulated the NICKELODEON term. As reported by Under Consideration, Nickelodeon’s “splat” has existed in one form or another for over 15 years. Although the orange “splat” has evolved over the years, it was a recognizable symbol of a Nickelodeon product. 

This leads to an important issue, designs are important branding tools. Trademark law argues that the words are the most dominant portion of a trademark because it is the element that consumers use to ask for the goods or services. However, this is not always true. Often times, the word portion of a mark is subordinate to the design component and consumers rely on the design or other matter to identify the source of the goods or services. Good examples include the Nike swoosh or the Under Armour “UA” design. But a design or non-traditional trademark does not need to reach the status of Nike of Under Armour to have a significant market affect. A good example is Christian Louboutin women's shoes. Most people do not know the brand of any women’s shoe at first blush, but most people recognize the red sole. Well, Christian Louboutin has federally registered the red sole of these shoes. Therefore, it is important not to overlook or discount the branding power a design can have and it is worth considering the highest level of protection for this element of a trademark.

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