Duets Blog : Creativity and the Law: DuetsBlog

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?

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. 

Do Other Single Letter Chewing Gum Brands Exist, or is it Just B S?

Well, apparently it's not just B S, even for Cadbury Adams, who has actually registered a stylized letter "C" for chewing gum, apparently to reinforce the first letter in the long-lasting Chiclets brand, here and here. Having said that, the specimens on record at the Trademark Office don't appear to scream "C" -- at least to me. Unlike the B and S brands, where these single letters appear front and center, standing alone, the stylized "C" trademark appears quite intertwined with the design elements of the packaging, making it difficult to discern the claimed "C" as a separate trademark.

In case you were wondering, Cadbury's major competitor Wrigley's (now part of Mars) currently appears more interested in putting single number brands (namely, the single numeral 5) front and center instead of single letter brands, although it apparently has flirted with more subtle use of a stylized W on the surface of certain gum sticks (consisting of "one or more 'W' designs substantially as shown in the drawing" below on the left):

Honestly, I always wondered what those "tire tracks" were on Juicy Fruit gum sticks.

Anyway, soon we may see how broadly Wrigley's views its scope of rights in "W" since the Walgreens' stylized W mark (shown above on the right) is set to publish for opposition next month, and within the long list of intended goods and services is "breath freshener . . . gum" and "smoking cessation . . . chewing gum". So, stay tuned here for more on this point.

Yet, others seem to prefer the combination of a single numeral and a single letter: N-2 and N-4. Indeed, if V-8 vegetable juice ever considers a brand extension into chewing gum (how likely is that?), it will have to contend with the already-registered V6 brand.

Wrigley's also owns a stylized "O" trademark used in connection with its Orbit brand gum, so, Oprah might have to think twice about launching a chewing gum brand sporting her brand of O anytime soon.

Legal Ramifications of Single Letter Brands?

There are a few legal take-aways for single letter brands worth mentioning here:

1. Don't assume you can truncate an existing brand down to a single letter without conducting the necessary trademark due diligence;
2. Designing a highly stylized first letter in a brand name (that is styled differently from the remaining letters in the name) may permit the owner to obtain a separate federal trademark registration covering the highly stylized single letter by itself (as Cadbury Adams did with the stylized B in Bubblicious some five years ago), even though -- at the time -- it is only used as the first letter in the brand name (as was the case for Bubblicious);
3. Utilizing the strategy in (2) above may help facilitate and protect the possibility of later pursuing a migration of the single letter from the brand name (as Cadbury Adams did with B Bursts years after filing for B), and then to a stand alone, front and center, fully-truncated single letter brand, as depicted above;
4. Taking a more gradual approach toward truncation and migration might help reduce risk of a conflict, especially in a crowded field, assuming it is pursued along with the design and registration strategy in (2) above; and 
5. The scope of rights in a single letter brand will be impacted by third party uses of the same letter: The more crowded the field, the narrower the scope.

So, to illustrate the due diligence concern stated above in (1), if Trident decides to truncate itself to T, it may have to contend with this T and that T (stylized). And, if Gatorade Gum returns to the scene, it may have to consider G & Design, G-1, at least, before assuming it automatically may truncate to G for chewing gum.

With respect to scope of rights, apparently, Cadbury Adam's Bubblicious beat Bubble Yum, Big League Chew, and Bazooka in truncating to B, but Cadbury Adam's B, nevertheless, coexists with B-FRESH, and may soon coexist with Grupo Bimbo's B logo too.

It remains to be seen how many more single letter chewing and bubble gum brands "pop up" and whether any confectioners "expanding" in this direction will "blow it" by migrating or truncating their brands to single letters without doing -- in advance -- the necessary due diligence. Of course, the timing of the due diligence may unwrap the difference between a successful "no-face-sticking bubble gum" brand from one that leaves a rather sticky mess on your face when it finally bursts.

Before closing, and back to the title of this post for a moment, for anyone wondering whether the use of B S in the title of this post might be a tad too racy, first of all, it is an acronym with many possible meanings, so you're responsible for the one you decide to apply, but perhaps more importantly, I have confirmed that the Trademark Office readily registers marks consisting of or comprising B.S., so long as it is not spelled out in full as a "profane" or "scandalous" term (as Red Bull apparently attempted to do, here): (1) BS is federally-registered for jewelry and leather goods, (2) I.T. WITHOUT THE B.S. is federally-registered for maintenance and repair of computer networks, (3) BS EVER & Design is federally-registered for steel-wire, (4) BS (stylized) is federally registered for certification services, (5) NO B.S. is federally-registered for a marketing newsletter, (6) B S & Design is federally-registered for a swimming pool drain cover, (7) BS & Design is federally-registered for insurance services,  (8) B:S is federally-registered for footwear, (9) NO B.S. was federally-registered for telephone calling card services, (10) B.S. METER was federally-registered for a toy talking telephone, (11) CAN THE B.S. was federally-registered for printed message cards, and (12) a mark consisting of "a stitched letter 'B' on the left back pocket and a stitched letter 'S' on the right back pocket of a garmet" was approved by the Trademark Office.

Just so you know, even a mark having the words "NO B.S. MORTGAGE, LLC," and depicting a "bull with blue eyes and a gold nose ring holding a roll of white toilet paper and sitting on a white toilet," was not refused registration under Section 2(a) of the Lanham Act, despite that provision's prohibition on the registration of marks that consist of or comprise scandalous and immoral matter.

Last thought, for now, concerning non-verbal logos, really:

Don't brand owners need to "name" their non-verbal logos, especially those that "stand alone," otherwise how can anyone spread the word, so to speak?

For example, Nike seems to have figured this out, owning federal trademark registrations for the word SWOOSH (in connection with footwear and clothing items), separate and apart from what is known as the "Swoosh" Logo. 

McDonalds similarly owns a federal registration for the words THE GOLDEN ARCHES for restaurant services.

I'm not sure there is a suitable, brief and unique name for the Wenger logo shown above, perhaps that is part of the reason for the "FROM THE MAKER OF THE GENUINE SWISS ARMY KNIFE" tag line?

Wenger describes their non-verbal logo in recent trademark filings this way: "The mark consists of a chrome colored cross on a red square with rounded edges, outlined by a chrome colored square with rounded edges."

I think this just proved my point.