Non-Traditional Trademarks Revisited: Feel Me, Touch Me

Posted on July 18, 2009 by Steve Baird

Tommy The Who.jpg

Tommy has a lot to offer in advancing the recognition of certain kinds of non-traditional trademarks, especially touch marks. Yes, The Who's tune from the Tommy Soundtrack "See Me, Feel Me / Listening to You" repeats these lyrics over and over: "See me, feel me, touch me, heal me."

We have discussed non-traditional trademarks a bit already, here, here, here, here, and here, for example, and in case you're interested, here is a link to a brief article I wrote on the subject that was published in Create Magazine a couple of years ago.

When I speak to marketers about the power of non-traditional trademarks I am quick to remind how any subject matter under the sun that can be perceived by humans has potential to serve and be protected as a trademark so long as it does three things: (1) identify goods and/or services; (2) distinguish those goods and/or services from those of others; and (3) indicate the source of those goods and/or services, even if that source is unknown. In short, IDS must exist: Identify, Distingish, and indicate Source.

Recognizing how courts and the Trademark Office are often skeptical of IDS with claimed non-traditional trademarks, we have already spent some time talking about how the equivalent of "look-for" advertising is the key to success in establishing most kinds of non-visual, non-traditional marks:

"As non-traditional trademarks proliferate, the brand new challenge of creativity will be in developing the legal equivalents of "look for" advertising when marks touching the other non-visual senses are involved. Using the admittedly clunky "look for" phrase won't even work when something other than a consumers eyes need to experience the claimed mark. The challenge there will be in coming up with creative and engaging ways to be overt about the intention of having consumers experience the subject matter in question as a trademark."

So, back to Tommy, my proposal is that some pharma company license the music from The Who's Tommy Soundrack and the "See me, feel me, touch me, heal me" lyrics to promote recognition of cold medicine product packaging having a distinctive texture and feel as a trademark for the cold medicine. I submit that doing so would help demonstrate the necessary IDS to establish non-traditional trademark rights that rely on the sense of touch. 

As a parting note, apparently "[t]here is no firm agreement among neurologists as to the number of senses because of differing definitions of what constitutes a sense."

We typically think of the five traditional human senses (sight, hearing, touch, smell, and taste) as covering the entire potential landscape for non-traditional trademarks, but as technology continues to advance at an ever rapid pace, even these very broad subject matter categories may be too limiting at some point in the future.

According to Wikipedia: In addition to Aristotle's five traditional senses, "[h]umans are considered to have at least five additional senses that include: nociception (pain), equilibrioception (balance), proprioception & kinesthesia (joint motion and acceleration), sense of time, thermoception (temperature differences), with possibly an additional weak magnetoception (direction), and six more if interoceptive senses are also considered."

Who will be the first to seek non-traditional trademark protection for a mark claiming to be perceived by one of these many non-traditional senses?

Any suggestions on suitable music and lyrics that could be licensed to promote recognition of a non-traditional trademark in one of these yet to be tapped non-traditional human sense categories?
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Touch Trademarks and Tactile Brands With Mojo: Feeling the Strength of a Velvet, Turgid, Touch Mark?

Posted on July 13, 2009 by Steve Baird

Let's revisit the topic of non-traditional "touch" trademarks today.

Of all the traditional five human senses (sight, hearing, taste, smell, and touch) and trademarks that can be perceived by one or more of those senses, touch, a/k/a tactile, a/k/a texture trademarks are just about as uncommon as any (taste, perhaps, being the least common). Indeed, back in 2006, Marty Schwimmer from The Trademark Blog correctly noted the dearth of recognized tactile marks. Moreover, despite a 2006 INTA Board of Directors' Resolution supporting the protection of touch marks, few appear to have reached for or grabbed any such protection (putting aside Kimberly-Clark, already blogged about here).

As arguably one of the most intimate of the senses: 'Touch is the first sense developed in the womb and the last sense used before death." Given that and given other unique characteristics of "touch" among the senses, it is a bit surprising that touch marks haven't been pursued more by marketers looking to create intimate, emotional connections with a brand: "Another distinction of the sense of touch is that it is identified with the real. You can't believe your eyes, nor your ears, and taste is personal and subjective, but touch is proof." By the way, since touch/tactile/texture marks are so uncommon, why can't we agree on what to call them? For what its worth, my vote is to call them "touch" marks since that is the term that names the underlying basic human sense.

Anyway, with that background, as far as I can tell, the one industry that seems to show the most promise or, at least, interest in touch trademarks, is the alcoholic beverages industry, most particularly those companies that focus on selling distilled spirits or wine.

                                                                 

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?
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