More On The Fordless Blue Oval

Posted on December 5, 2009 by Steve Baird

What do you think, is Overstock.com selling bling with the Fordless blue oval logo?

Enamel Turquoise with Blue Ovals Bangle Bracelet

As you may recall from my post back in September, Ford Motor Company is attempting to register the below shown non-verbal logo as a trademark for a variety of goods in Int'l Class 12:

Mark Image

And, as you may recall from Dan's I See Blue Ovals post back in August, there are far more than a handful of blue oval logos out there besides this one:

 

The pending Fordless blue oval intent-to-use trademark application recently was examined by the U.S. Patent and Trademark Office (PTO), and on October 23, 2009, the PTO found no substantive bases for refusal, but instead it issued an initial refusal noting only a couple of purely procedural or technical deficiencies, concerning the wording in the lengthy description of goods and the need for Ford to submit a claim of ownership to some related registrations (here, here, and here).

So, once these minor details are satisfied the above non-verbal Fordless logo will be published for opposition, and assuming no Amendment to Allege Use is filed prior to the approval for publication and assuming no third party files a Notice of Opposition, then a Notice of Allowance will issue, which will start the clock for Ford to put in evidence of use through a Statement of Use.

What remains to be seen (until Ford submits a specimen of use) is whether Ford really will use the above blue oval design without the Ford name brand superimposed, as shown in the drawing submitted to the PTO. If Ford ends up submitting evidence of use with the Ford brand name superimposed on the blue oval logo, then it appears unavoidable that Ford will have additional refusals issued, for the reasons previously articulated.

But, if Ford actually puts in use of the Fordless blue oval logo -- as shown in the drawing without the Ford brand name superimposed -- does the PTO's recent failure to challenge inherent distinctiveness mean that no evidence of acquired distinctiveness or secondary meaning will be required for registration?

If so, given the prevalence and popularity of blue oval logos, how can the Fordless blue oval be considered unique enough to be inherently distinctive?

Stay tuned for more on this as we learn more.
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Supreme Court Declines to Hear Redskins Trademark Case

Posted on November 16, 2009 by Steve Baird

Today, the U.S. Supreme Court declined to hear the requested appeal of Harjo v. Pro-Football, Inc., the nearly two-decade old trademark case seeking cancellation of the U.S. Trademark Registrations owned by the NFL franchise in the Nation's Capitol. In doing so, the highest Court in the land, has permitted the laches ruling to stand. Basically, permitting dismissal of the action given a perceived "unreasonable delay" by the Native American Petitioners in bringing the trademark challenge, despite clear language in the Trademark Act permitting such challenges outside the typical five year statute of limitations, and specifically indicating they can be filed "at any time."

My prior involvement in filing the case back in 1992, the victory we all enjoyed in 1999, and my admittedly rather critical coverage of the dismissal of this historic and ground-breaking case may be found here (9/17/09) and here (May 21, 2009).

Although many ironies may be highlighted from this odd conclusion to the Harjo case, certainly one of the most striking ironies is that it took far longer for this case to wind its way through our legal system than the accused delay by Mateo Romero, the youngest of the original Native American Petitioners, led by Suzan Shown Harjo.

Be that as it may, the torch has been passed to a brand new generation of Native American Petitioners, eager to have the case decided on the merits. The "new" case filed by Amanda Blackhorse and others, more than three years ago, was promptly suspended, pending the final outcome in the Harjo case. Now that the Harjo case has concluded, the Blackhorse case will proceed before the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office, the same admininstrative body that found in favor of Harjo's disparagement claim in 1999.

Moreover, the TTAB appears to have read the news accounts and just today issued an order, indicating that if the parties to the Blackhorse proceeding don't advise it of the status of the Harjo case within thirty days, it will automatically resume the Blackhorse proceeding and issue a new scheduling order to move the case forward, so stay tuned.

OK, here is my prediction. Some day, I don't know when, justice will prevail, and some talented branding guru will make a tidy sum re-naming and re-branding this offensive NFL franchise name that could have and should have been re-named long ago.

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Blue Oval, But Look Mom, No Words!

Posted on September 22, 2009 by Steve Baird

What does this image signify to you?

Mark Image

For full credit, please answer the question before peeking back at Dan's popular post called "I See Blue Ovals."

I suspect that Ford Motor Company would be happy if your response is: Mark Image

On July 29, 2009, Ford filed a federal intent-to-use trademark application for the blue oval background design without the word Ford, describing the wordless claimed design mark as "concentric ovals, the outermost oval being a thin blue oval followed by a slightly thicker white oval inside the first blue oval, inside the aforementioned white oval is a completely filled in blue oval" for various motor vehicles and various automotive parts and components.

Curious that Ford didn't file the wordless blue oval design as a trademark already in use, given how long it has been in use with Ford superimposed on the design, and given Section 1202.11 of the Patent and Trademark Office's "Trademark Manual of Examining Procedure" (TMEP), which sets forth the applicable test for registration under these circumstances:

“A background design which is always used in connection with word marks must create a commercial impression on buyers separate and apart from the word marks for the design to be protectible as a separate mark. In deciding whether the design background of a word mark may be separately registered, the essential question is whether or not the background material is or is not inherently distinctive.... If the background portion is inherently distinctive, no proof of secondary meaning need be introduced; if not, such proof is essential.”

"Common geometric shapes, when used as vehicles for the display of word marks, are not regarded as indicators of origin absent evidence of distinctiveness of the design alone."

"Additionally, . . .  color can never be inherently distinctive."

Will Ford be able to prove the wordless blue oval background design is inherently distinctive under this standard? If not, proof of acquired distinctiveness or secondary meaning will be essential for success. Will Ford be able to establish secondary meaning in the blue oval design as a stand alone mark even though it apparently hasn't been used alone yet?

We'll keep a close eye on this one and let you know how the Ford application progresses. 

While we're on the subject of whether a background design creates a commercial impression on buyers separate and apart from the matter omitted for registration purposes, can you name the source of this background design?

Mark ImageFYI, this claimed mark appears poised to be approved by the Trademark Office and published for opposition as a stand-alone mark, even though it doesn't appear to be literally, physically, or actually standing alone, i.e., without the prancing horse design or brand name. 
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