Duets Blog : Creativity and the Law: DuetsBlog

Boise State, a/k/a the Broncos, a/k/a The Blue, whose teams play on what some call Smurf Turf in Bronco Stadium (not to be confused with Invesco Field at Mile High, where the similarly-colored blue and orange Denver Broncos play their NFL football games on regular green, grass turf):

As interesting as the registration of the blue turf trademark is, the timing of the decision to federally register is as well. Why? On September 9, 2008, the NCAA reported that Division II University of New Haven (located in Connecticut) "adorned their new blue field -- one of only two in the country -- at Ralph F. DellaCamera Jr. Stadium with a 50 x 30-foot Charger logo September 8 in preparation for the return of the UNH football program and membership in the Northeast-10 Conference." Two weeks later, on September 23, 2008, Boise State filed for federal registration of the blue-colored turf trademark, claiming over twenty years of continuous use. Given this timing, is there a battle of smurf turfs likely on the horizon?

If so, here's a question to ponder: Since Boise State didn't seek federal registration until after UNH commenced use of its own blue-colored athletic turf in West Haven, Connecticut, Boise State doesn't enjoy the substantial federal registration benefit of nationwide constructive until its later filing date, so the question becomes, does Boise State have enforceable prior common law rights in West Haven?

Boise State's Bronco Stadium apparently has sported blue-colored artificial turf since 1986, the first being blue-colored AstroTurf (1986-2001), then blue-colored AstroPlay turf (2002-2007), and finally, blue-colored FieldTurf (2008-present). So, might the answer depend on how many Boise State home games have been televised and/or viewed over the years in West Haven, Connecticut, or might it depend on whether The Humanitarian Bowl has been televised and/or viewed in a consistent enough manner in West Haven to acquire distinctiveness and establish prior common law rights there?

While it may be hard to imagine that Boise State home football games have been consistently and sufficiently aired or viewed in Connecticut to establish prior common law rights there, Boise State's Bronco Stadium also has been home to The Humanitarian Bowl since 1997, so there has been more than a decade of post-season bowl-game football played on Boise State's blue-colored turf. Now, how many of those games have been aired or viewed in West Haven, is beyond me.

With respect to validity, might there be a question of some yet-to-be-identified functionality, since one artificial turf manufacturer reports that "blue" is "probably the most popular" color choice for artificial turf? It would be interesting to explore the reason for this popularity.

On a broader note, will Boise State's success in the U.S. Trademark Office lead others to follow along this trademark path?

I, for one, would love to watch the beloved teams from my alma mater, The Iowa Hawkeyes, play football in Kinnick Stadium on a yellow-colored turf -- perhaps canary yellow, and 3M could sponsor a new post-season bowl game (not that we need another), let's call it The Post-It Bowl!

The problem is, of course, in January, and even December, Kinnick Stadium is likely to look rather white no matter what the underlying turf color may be.  

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.

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?

Apparently quite a few: (1) A combined question mark and exclamation point, (2) another combined exclamation point and question mark, (3) a combined exclamation point and human eye, (4) a combined exclamation point and dollar sign, (5) exclamation point resembling a footprint, (6) a circle with an exclamation point, (7) another exclamation point within a circle, (8) yet another stylized exclamation point in a circle, (9) circle design with exclamation point inside, (10) exclamation point inside triangle inside circle, (11) stylized exclamation point inside rectangle, (12) blue circle with off-centered cut out of exclamation point, (13) red-colored exclamation point, (14) exclamation point within a green octagon, (15) a fanciful exclamation point, (16) exclamation point within a shield, (17) the point on an exclamation is a crescent, (18) a stylized exclamation point, (19) exclamation point within a light bulb, (20) the point on an exclamation is a star, (21)exclamation point within quotation marks, (22) an unremarkable exclamation point, (23) exclamation point in middle of flower, (24) exclamation point on center of bottle cap design, (25) oval and an exclamation point, (26) another stylized exclamation point, and (27) another, and (28) another.

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?

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

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?

FYI, 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. 

Kool-Aid "is a brand of artificially-flavored drink mix owned by the Kraft Foods Company," coined by inventor Edwin Perkins as "Kool-Ade" back in 1927. After being correctly or incorrectly associated with the 1978 Jim Jones cult-driven mass suicide known as the Jonestown Massacre, Kool-Aid has spawned an additional and negative non-trademark meaning:

"The saying 'Do not drink the Kool-Aid' now commonly refers to the Jonestown tragedy, meaning 'Do not trust any group you find to be a little on the kooky side,' or 'Whatever they tell you, do not believe it too strongly.' Fox News commentator Bill O'Reilly is famous for using the term in this manner."

"Having 'drunk the Kool-Aid' also refers to being a strong or fervent believer in a particular philosophy or mission — wholeheartedly or blindly believing in its virtues." So, based on these alternate and negative meanings, blogs like www.dontdrinkthekoolaidblog.com exist. I suspect that these non-trademark meanings of Kool-Aid have frustrated more than a few Kraft brand managers, marketing types, and lawyers over the years.

Mickey Mouse, the creation of Walt Disney in 1928, has become a valuable brand and icon of The Walt Disney Company over the last several decades. However, there are also pejorative uses of the brand name that Disney apparently has learned to tolerate: "'Mickey Mouse' is a slang expression meaning small-time, amateurish or trivial. In the UK and Ireland, it also means poor quality or counterfeit." Mickey Mouse is also defined as informally meaning "useless, insignificant, or worthless," and "trivial or petty."

Spam is a well-known, probably famous, brand of canned and processed meat, owned by Minnesota-based Hormel Foods. It was the butt of jokes in a popular Monty Python sketch, first televised in 1970, and as a result, years later the Spam brand name (coined in 1937) acquired an alternate and negative meaning within the world of electronic communications, namely, junk, undesired, or unsolicited e-mail. Something most people with a computer and e-mail account despise. Probably the only types who don't despise this kind of spam are those who flood the world wide web with it and perhaps those who build businesses and software products to combat the serious problem of spam e-mail. This alternate and negative meaning of Spam is so prevalent that software manufacturers have developed their own brands containing the once single-meaning Spam brand name. For example, SPAMfighter is federally registered for "computer software for eliminating unsolicited commercial electronic mail."

Now, back to Twitter, and to what some call "Drinking the Twitter Kool-Aid."

A possible connection between these four brands (Twitter, Kool-Aid, Mickey Mouse, and Spam) came to me after watching a Kevin Spacey discussion on The Late Show with David Letterman, where Dave and the Academy Award-winning actor discussed Twitter for over four minutes, in which "K-Spa" starts the discussion by admitting that his "business partner" made him "drink the Kool-Aid," that is, Twitter Kool-Aid, implying that the use of Twitter is kooky, or at least promoted by kooks. After more than four minutes of discussing Twitter, and despite touting his "over 800,000 followers" on Twitter, a hilarious Spacey appeared unable to make a compelling case for the beneficial use of Twitter, leaving Letterman to end the conversation by stating, "You know what it reminds me of, oh yeah, a waste of time." Apparently, Dave had harsher words for Twitter back on April 24 when he referred to it as "stupid crap." Others have dubbed it "permission-based stalking."

It appears that Letterman is not the first to have come to the same conclusion about Twitter being "a waste of time." Others, including our own Dan Kelly, certainly have questioned time spent using Twitter. Indeed, a search on Google for "Twitter waste of time" is so popular that it appears as a ready-made search phrase option on Google after typing the character string "Twitter wa" -- and this search query actually yields 30,700,000 hits. The number one hit on Google using this search query agrees that it is, "unless you use it in a way that isn't." Given this growing negative dialogue, one has to wonder, will the public embrace a new meaning of Twitter, basically, a single word replacement for the clunkier three-word phrase "waste of time"? Instead of frittering one's time away, might you be accused of "twittering" your time away, even if you're no where near a computer, handheld device, or cellphone? Will these alternate and negative "time wasting" meanings begin to appear in dictionaries, opening the floodgates to additional undesired uses that may be difficult or impossible to control?

I submit that there are plenty of uses that the law is simply not prepared to stop. Knowing which are which is, of course, important. In addition, this is where the close collaboration of marketers, trademark types, and perhaps most importantly, PR gurus is necessary and critical, to help brand managers prevent their brands from spawning alternate and negative meanings that can distract from or undermine favorable brand development and management.

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?