DuetsBlog Collaborations in Creativity & the Law

Tag Archives: Trade Dress

Protecting Non-Functional Product Design Features Through The Entire Life Cycle: From Conception to Grave

By on Posted in Branding, Contracts, Guest Bloggers, Idea Protection, Patents, USPTO

- Jeffrey Stone, Patent Attorney, Winthrop & Weinstine, P.A. IP protection for product designs is typically found in a combination of one or more of the following protective mechanisms: 1. Contracts which are typically used with employees and 3rd parties to prevent loss of novelty as well as provide notice of ownership. Contractual protections such… Continue Reading

McDonald’s Trade Dress? State Farm is There.

By on Posted in Advertising, Branding, Dilution, Famous Marks, Food, Infringement, Marketing, Non-Traditional Trademarks, Sight, Trademarks

Passing by a roadside billboard recently (below is a miniature version I found in the Minneapolis skyway system), my first thought was, wow, McDonald’s is getting into the juicy lucy business: Until more focus revealed that State Farm Insurance is the one behind the ad. Look familiar? No doubt burgers and car insurance are totally different lines of business and… Continue Reading

The Not-So-Happy Place of Genericness

By on Posted in Articles, Food, Genericide, Infringement, Law Suits, Loss of Rights, Non-Traditional Trademarks, Trademarks

Restaurant trade dress is possible to own when the claimed trade dress is distinctive and non-functional, think Taco Cabana. Restaurant trade dress can be so unique in the marketplace that distinctiveness is presumed with a finding of inherent distinctiveness. When not so obviously unique, distinctiveness also can be established with the more difficult proof of secondary meaning. Remember 1992? The… Continue Reading

Supreme Court Upholds Nike’s Promise to “Break the Wrist, and Walk Away”

By on Posted in Articles, Infringement, Law Suits, Trademarks

Not every day does the United States Supreme Court weigh in on a topic impacting the trademark world, but it did so yesterday in Already, LLC v. Nike, Inc., a case illustrating what can happen when a trademark plaintiff wants to pull the plug and end the lawsuit it started in a walkaway (or as martial arts instructor… Continue Reading

Inherently Distinctive Restaurant Interior?

By on Posted in Branding, Domain Names, Food, Marketing, Non-Traditional Trademarks, Sight, Trademarks

We recently focused our attention on a very unique-looking, dare I say distinctive, retail store exterior design; for a quick reminder, see here. The recent craze for self-serve frozen yogurt shops – where you pay by the ounce (or perhaps, by the pound), has us focused today on a pretty darn unique interior retail environment: This is… Continue Reading

Successful Evolution of an Unlicensed Business Model?

By on Posted in Agreements, Articles, Branding, Contracts, Fair Use, First Amendment, Infringement, Law Suits, Marketing, Non-Traditional Trademarks, Trademarks, Truncation

Brand owners and managers may wonder, is a trademark license required when another’s unregistered color scheme is used? Depending on the facts, it may very well be. About four years ago brand owners scored a major victory in LSU v. Smack Apparel, when the Fifth Circuit Court of Appeals agreed to the existence and successful enforcement of… Continue Reading

Lunesta and Stoogesta?

By on Posted in Advertising, Branding, Fair Use, First Amendment, Marketing, Trademarks

    It appears that Lunesta (eszopiclone) — apparently, the top prescribed branded sleep aid –  has a new fan, but as you’ll see, and hopefully for the Farrelly brothers, the newcomer won’t be anything close to a competitive medicinal product: Stoogesta (nimbiscus dumbphondenol). Stoogesta video on YouTube can be viewed here. We’ll have to wait until April… Continue Reading

Intellectual Property Plaintiff Admits to Being Ignorant?

By on Posted in Copyrights, Goodwill, Infringement, Law Suits, Non-Traditional Trademarks, Trademarks

About a week ago another interesting federal intellectual property case was filed in the District of Minnesota: Fantasy Flight Publishing, Inc. v. Puffin Software et al. Although the four count complaint includes a federal unfair competition claim, a Minnesota deceptive trade practices claim, and a common law unjust enrichment claim, the case really appears to be centered around the copyright infringement… Continue Reading

“We’re waiting for the rest of it . . . .”

By on Posted in Branding, Goodwill, Marketing, Search Engines, Trademarks

Sixteen pairs of experienced computer users are asked to beta test your on-line product and each of them just stare at the screen until they are asked "what’s wrong?" They reply almost in unison, "we’re waiting for the rest of it." Would you have been discouraged by their almost unanimous response? Kind of like the emperor,… Continue Reading

Taste Infringement?

By on Posted in Advertising, Branding, Food, Guest Bloggers, Infringement, Marketing, Non-Traditional Trademarks, Taste, Trademarks, TTAB

    We’ve spent some time here discussing the world-famous Coca-Cola brand. Most recently, David Mitchell wrote about the incredible consistency of the Coca-Cola brand over the past 125 years. A while back Dave Taylor wrote a nice Ode to the Brand of Brands, the King of Cola: Coke. And, let’s not forget my humble suggestion that… Continue Reading

Reese for Sheriff?

By on Posted in Advertising, Branding, Dilution, Fair Use, First Amendment, Food, Guest Bloggers, Product Packaging, Trademarks

Hat tip to Dave Taylor who provided this photo for some discussion: Looks like a fellow named Mark Reese, currenting Acting Sheriff, is running for Sheriff in Lancaster Country, Pennsylvania, right in Hershey’s backyard. Do you suppose this Hershey’s trade dress may have inspired the Acting Sheriff’s campaign?  Your thoughts on whether Hershey’s has a claim?… Continue Reading

iPhone-y Baloney

By on Posted in Law Suits

On April 15, Apple launched a massive suit against Samsung alleging various counts of patent and trademark infringement arising from Samsung’s Galaxy line of products. (The Complaint is here.) While the lawsuit involved claims of trade dress infringement and patent infringement, I was most interested in the trade dress aspects of the case.  Of particular interest to… Continue Reading

That Purple Cereal

By on Posted in Advertising, Branding, Fair Use, Food, Infringement, Marketing, Product Packaging, Sight

–Susan Perera, Attorney As you likely know, many of the Duets Blog bloggers were involved in a full day trademark CLE last week. One of the sessions focused on the issues facing private label brands and the line between identifying your competitor by using similar packaging and infringing on their trademark or trade dress. Along those… Continue Reading

Serving Lawsuits With Your Morning Orange Juice

By on Posted in Infringement, Law Suits

–Susan Perera, Attorney Do these containers seem similar to you? Confusingly similar? That is what Coca-Cola, owner of Simply Orange, is claiming.  In a recently filed trade dress and patent infringement suit Coca-Cola claims that its Simply Orange container is nonfunctional, contains a patented closure lid, and the new Trop50 packaging is likely to deceive and… Continue Reading

Provocative Uniforms, Protectable Trade Dress?

By on Posted in Law Suits

–Susan Perera, Attorney Move over Collar and Cuffs, a new trade dress suit has hit the Texas courts and it is set to rival the Chippendale headlines from earlier this fall. The Texas restaurant, Twin Peaks, recently filed suit against the owner of a new Arkansas restaurant called Northern Exposure. (If you haven’t caught onto the innuendos… Continue Reading

The Great Chocolate War

By on Posted in Advertising, Branding, Guest Bloggers, Infringement, Law Suits, Marketing, Product Packaging, Trademarks

—Jason Voiovich, author of the “State of the Brand” & Vice-President of Marketing for AbleNet, Inc. It sounds like something I’d get wrong in a game of "Trivial Pursuit". Name the belated military attempt of King William I to restore his position as monarch over the Belgians. I might have guessed the delicious-sounding "great chocolate… Continue Reading

Collar + Cuffs = Stripper?

By on Posted in Trademarks

–Sharon Armstrong, Attorney If there is any trademark case this year that has the media clamoring to create cute headlines, it may just be this one – In re Chippendales USA, Inc., decided by the Federal Circuit just six days ago. “Federal Circuit Leaves Chippendales Nearly Naked,” said The American Lawyer, “Judge ‘strips’ Chippendales of… Continue Reading

Great American Pancakes

By on Posted in Trademarks

Over the Labor Day weekend, my family traveled to a cabin in northern Minnesota, as many families must have done, based upon the amount of traffic coming back into Minneapolis on Monday.  On our return trip, our caravan of cars decided to look for a Perkins for breakfast (I grew up in Iowa and for my sister and me,… Continue Reading

Unlawful Tarnishment of Chevron’s Shining Texaco Star?

By on Posted in Agreements, Contracts, Dilution, Famous Marks, Goodwill, Law Suits, Non-Traditional Trademarks, Trademarks

An interesting trademark case recently was filed in federal district court in Minnesota, Chevron Intellectual Property LLC et al v. MDW Equity Partners, LLC, a pdf copy of the complaint here. As beleaguered BP‘s once valuable goodwill and reputation continues to flounder in the court of public opinion with the tragic gulf oil spill and disaster (by the way, how… Continue Reading

Holiday Inn Puts Dimmer on Non-Traditional Lighting Trademarks

By on Posted in Branding, Look-For Ads, Marketing, Non-Traditional Trademarks, Sight, Trademarks

A couple of months ago there was quite a buzz about Holiday Inn’s projected $4 million annual savings by moving to a leaner and greener direction with their adoption of LED lighting on exterior signage.  As you may recall, back in June we blogged about Holiday Inn’s interesting effort to federally register a pair of non-traditional lighting trademarks, one employing a green-colored… Continue Reading

MiraLAX Won’t “Loosen Up” Against OTC Store Brand Competition

By on Posted in Advertising, Branding, Copyrights, Dilution, Infringement, Law Suits, Marketing, Product Packaging, Sight, Trademarks

Schering-Plough Healthcare, owner of the MiraLAX brand — the top-selling OTC oral laxative ($360 Million in OTC sales since launching in February 2007) — has pulled out all of the available stops and then some, in a pre-Thanksgiving Day federal district court action brought in the District of Delaware, asserting a variety of intellectual property and unfair competition claims… Continue Reading