Duets Blog : Creativity and the Law: DuetsBlog

Noticeably absent in the complaint are side-by-side comparisons of the MiraLAX product with the Kroger and CVS store brand versions. Instead, as you will see, Schering-Plough includes a photograph depicting the family of MiraLAX products together, then pages later in the complaint it shows a photograph of the family of CVS' PURELAX products together, and then later a photograph of the family of Kroger's GentleLax products. Why? Perhaps the many differences in the appearance and overall trade dress becomes more apparent when the national brand and competitive store brand products are placed side-by-side. However, as we have discussed before, while side-by-side comparisons are generally not appropriate for determining likelihood of confusion, they appear to be not only appropriate here, but necessary in this case, since the national brand MiraLAX and the various competitive store brands most likely are confronted by consumers side-by-side on the retail store shelves.

As Mark Prus, DuetsBlog GuestBlogger, recently depicted in his Naming the Store Brand post, typically there will be similarities in the appearance or "look and feel" of store brands as compared to their national brand counterparts. Perrigo's website reveals essentially the same point, here. What do you think, are the CVS and Kroger store brand laxative trade dresses close enough to the MiraLAX trade dress that consumers are likely to be confused? How many similarities will consumers merely understand to convey a comparable competitive product, before the line is crossed, and a likelihood of confusion results?

No design patent or bottle configuration trademark claims are included in the complaint, but one unique aspect of this OTC pharmaceutical trade dress packaging case, is Schering-Plough's inclusion of federal copyright infringement claims. Schering-Plough has applied for (but not yet received) copyright registrations on the shape of the "double-neck bottle" -- as a "sculptural work" -- and also on the artwork appearing on the MiraLAX product label. It will be interesting to see whether the Copyright Office refuses registration on the bottle shape, under the useful article exception to copyright.

Although no federal dilution claim has been asserted by Schering-Plough, it has asserted a Delaware State Dilution claim, probably because there is no requirement of "fame" under Delaware State law, as compared to the far more stringent Federal Trademark Dilution Act (FTDA) and Trademark Dilution Revision Act (TDRA).

Stay tuned on DuetsBlog for more thoughts and developments as this case progresses.

By way of example, perhaps you will recall my prior post about the Furminator and the lost intellectual property opportunities there?

In all fairness, the above-described marketing style may or may not portray the Bawls® Guarana energy drink brand, I can't know for sure, but seeing some of the brand's marketing statements -- after being drawn in by the brand -- has raised enough questions and goose bumps for me to at least wonder out loud.

Let's face it, the packaging is visually striking and begs to be handled like no other. Judging from reactions I have seen others have to the bottle, there is something about it that makes people want to touch it, feel it, or hold it, even if they don't end up consuming the contents.

What an amazing opportunity to engage multiple human senses and cement the bond of loyalty between consumer and brand. Indeed, the bottle design almost seems inspired by the teaching of famed Martin Lindstrom in his pioneer work on "sensory branding," entitled BRAND sense, but it appears to predate Lindstrom's 2005 masterpiece by almost a decade.

Although Bawls® brand owner Hobarama, LLC, has obtained a federal trademark registration for a number of visual elements combined together to form a specific trade dress concerning the bottle configuration, owning a purely tactile or touch trademark in the arrangement of the "bumps" element itself appears impossible now (and may even raise questions about the validity of the "bumps" aspect of the trade dress), given admissions already made in marketing materials: "The 'bumps' on the bottle are there to provide a grip so that it does not slip out of your hand when it is wet. And we think it looks cool." Cool looks are fine to tout, but not "non-slip" features, if trademark protection is desired.

Moreover, the statement "Our famous glass bottles are bumped to give BAWLS drinkers a non-slip-grip" seems commercially unnecessary, if not a subtle diversion for another possible explanation of the "bumps" given the risque' and double-entendre-laden brand name, but either way, the "non-slip" reference condemns any hope of a pure touch trademark based on the admitted functionality.

Why commercially unnecessary? Really, can you name another energy beverage brand that needs non-slip-grips in order to compete with Red Bull®?

I can't.

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?

This is how Holiday Inn describes the claimed green lighting trademark:

"The mark consists of green lighting formed by four light fixtures placed in a symmetrical fashion near the entryway of the building. The lower set of two green lights are evenly placed on columns to the right and left of the entry way and direct the green lighting downward, while the upper set of two green lights are evenly placed on the building wall above the entry way and direct the green lighting upwards."

It took the Trademark Office only three weeks to issue registration refusals (green lighting refusal in pdf here).

Surprisingly, the Trademark Office did not issue an initial functional refusal as it typically does when trade dress and single color marks are claimed, which would put the burden on the applicant to establish non-functionality, but it nevertheless refused registration for the following reasons:

• Non-distinctive three-dimensional configuration
• Mere decoration or ornamentation
• Acquired distinctiveness not shown
• Customary in hotel industry to have lighting near entrances for illumination/security

Having said all that, the concept of protecting a lighting scheme as a trademark, even a colored one, even in the hospitality industry, is certainly do-able with early and close collaboration between trademark and marketing types.

They are not common, however, as evidenced by the Trademark Office's inability to locate a prior registration to bar approval of the Holiday Inn applications on likelihood of confusion grounds. Indeed, the only federally-registered non-traditional lighting mark in the hospitality industry that I'm aware of, despite some admittedly modest searching, is one I obtained for Mystic Lake Casino & Hotel more than ten years ago, covering "a formation of light beams resembling the conical framework of a tipi emanating from a circular source of light."

My humble prediction is that a strong showing of look-for advertising is what it will take for Holiday Inn to avoid having their green and blue lights simply burn out at the Trademark Office.

Holiday Inn has until November to respond to the initial registration refusals, so stay tuned here on DuetsBlog for further developments.