Duets Blog : Creativity and the Law: DuetsBlog

Answers:

1. c – oil and gas operations
2. j – allergy treatment
3. f – motion control equipment
4. g – trading software
5. d – email relationship manager
6. b – private mortgage banking
7. h – wealth management services
8. i – money transfer services
9. a – dental insurance
10. e – fake!

—John Reinan, Senior Director of Media Relations at Fast Horse

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.

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. 

First, one question worth asking is whether it is reasonable for these individual defendants to anticipate being sued in Minnesota for alleged computer repair activities outside of Minnesota. It is not clear to me from the Complaint whether either defendant actually operated or conducted business in Minnesota. Will there be an effort to dismiss the case by challenging personal jurisdiction? Basically, this is a popular legal argument and defense that the courts in Minnesota don't have the authority to hear a case involving the defendants because they don't have the necessary "minimum contacts" with Minnesota for the case to go forward there. 

Second, it is worth noting that Best Buy selectively asserted two Geek Squad service mark registrations (U.S. Reg. Nos. 1,943,643 and 2,744,658) -- those that are over five years old and also have achieved incontestable status. Given that the term "geek" has a recognized slang meaning with respect to the field of computers ("a computer expert or enthusiast (a term of pride as self-reference, but often considered offensive when used by outsiders."), it is curious that the Trademark Office has not employed this definition in requiring a disclaimer of the descriptive term "geek" in connection with computer repair services. By selectively pleading only incontestable registrations, Best Buy is able to foreclose a legal defense on the ground that the registered mark is not distinctive and merely descriptive, relying on the U.S. Supreme Court's decision in PARK'N FLY, INC. v. DOLLAR PARK AND FLY, INC., 469 U.S. 189 (1985).

Third, given that the recognized meaning of "geek" has direct application to the services provided under the Geek Squad mark, one has to assume that the scope of rights or the strength of the Geek Squad mark will be put at issue (see my previous post concerning trademark strength here), if this case actually is defended. As you might imagine, given the dictionary meaning, there are more than a few other "geeks" out there already providing or planning to provide the same or similar services and goods, all or nearly all post-dating the 1994 first use date for Best Buy's Geek Squad mark. For example: here (Geek I.T. Just Geek It), here (Geek), here (Geek by Phone), here (Cheap Geek), here (Geek Choice), here (GeekSugar), here (GeekBucks), here (Geek in Pink), here (A+ Computer Geek), here (Geek 911), here (Free Geek), here (Geek.com), here (TechnoGeek), here (GeekTeks), here (GeekSurance), here (Seek a Geek), here (GeekDesk), here (GeekOfficecalls), here (Geek City), here (Beep-a-Geek), here (Ask the Geek), here (VipGeek), here (Geek on the Run), here (When a Tech Isn't Enough, Call a Geek!), here (Not Just Any Geek), here (Geeks! GetYourGeek.com), here (Dial a Geek), here (GeekFleet), here (Speak With a Geek), here (Geek Rescue), here (How-To Geek), here (Geek for Hire), here (Geek Ghost), here (Geek Call!), here (Geek in a Box), here (Don't Hire a Geek, Hire a Pro!), here (1-800-905-GEEK), here (GeekWerkz), here (Call a Tech Not a Geek), here (Click-A-Geek), here (ElectroGeek), here (1 800 GEEK HELP), here (Geek National), here (Where No Geek Has Gone Before), here (The Geek Goddess), here (Don't Call a Geek When You Can Call an Expert), here (Geekabytes), here (GeekOnline), here (Geek-Client Privilege), here (Why Call A Geek When You Can Call A Friend), here (GeekForce.Biz), here (Geek Boutique), here (Rent-A-Geek), here (Phone A Geek), here (The Geek Patrol), here (Geek Housecalls), here (Beep-A-Geek), and here (1 800 Be A Geek).

Seems safe to say, at this point in time, that the field of "geek" marks concerning computer products and services is more than a bit crowded, which would typically lead to a conclusion of diminished or narrower trademark strength (see my previous post on Twitter and Trademark Enforcement and Protection):

"A trademark owner's failure to take action against the unauthorized use of its trademark by third persons can result in an abandonment of the mark, but only if the unauthorized use is so widespread that the designation loses its significance as an indication of source or sponsorship. More typically, the fact of third-party use is relevant only to the 'strength' of the mark, and hence to its appropriate scope of protection." Restatement of the Law (Third) Unfair Competition 313 (1995).

It's not as though Best Buy has failed to take any steps to enforce the Geek Squad trademark, for example, it sued Geek Housecalls in 2004, and it opposed registration of Geek Housecalls, Speak With A Geek, and Geek Rescue, but those marks ended up becoming registered despite the oppositions. It also filed extensions of time to oppose 1-800 905 GEEK, Geek Choice, and Beep-A-Geek Computer Services, but it never actually filed oppositions, and those marks are also now federally registered by other parties. With respect to more successful efforts, Best Buy opposed registration of the mark The Geek Patrol, Rent a Geek, and the slogan "Comtech We Beat The Geeks," and each of those applications has been abandoned. Moreover, in 2007 Best Buy obtained a Consent Judgment against Geek Brigade, located in Missouri. However, all this just makes one wonder how Best Buy determines exactly which "geeks" to patrol?

Judging from Paragraph 3 of the Prayer for Relief in the present Complaint against Geek Patrol, Best Buy is asking the Court to enjoin any uses of "Geek" by the defendants: "[U]sing . . . materials . . . bearing the words 'Geek,' 'Geek Squad,' 'Geek Patrol,' 'Geek Squad Patrol,' and any other mark, word, or name confusingly similar to . . . GEEK SQUAD . . . ." Given the defined meaning of the term "geek" and the rather prolific landscape of third parties, the requested prohibition on "Geek" appears to overreach. Perhaps this lawsuit will provide Best Buy with an opportunity to clarify its trademark protection strategy and articulate a more appropriate scope of protection for the Geek Squad mark.

Last, a boilerplate phrase in Paragraph 7 of the Complaint against Geek Patrol caught my attention, since it is not needed in order to prevail, and it only appears to provide the defendants with an opportunity to probe some rather unfavorable press Best Buy has received for lawsuits involving alleged improper conduct of certain Geek Squad Agents: "Best Buy . . . through continuous and uninterrupted use of the GEEK SQUAD Marks, has earned a reputation for knowledgeable, courteous, and outstanding customer service, as well as quality products. This reputation, goodwill and name recognition have been derived in part, from its commitment to service, satisfaction, and quality." (emphasis added)

Only time will tell whether this case will play out to be a real "Battle of the Nerds" or leave all of us trademark dorks to watch VHS reruns of "Revenge of the Nerds" instead.

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.

A few prior posts, here, here, and here, discussed related issues, but they did not specifically mention the all important spectrum that trademark types consult on a daily basis. Marketers and naming gurus would do well to keep a copy under their pillows too, or at least on or near their nightstands.

Anyway, Burt's post did a nice job of contrasting the marketing pros and cons of pursuing names like Monster.com, TheLadders.com, and CareerBuilder.com, for similar on-line job listing and employment businesses. And while some legal types may, as Burt suggests, direct marketer's toward the far right end of the spectrum during the naming process, the most important line to cross is from descriptiveness to suggestiveness, because doing so offers the potential for immediate ownership and rights in the name. Once this critical naming line is crossed, marketers and legal types can both be content with the name selection, at least from a conceptual standpoint.

Now recognizing the spectrum or continuum nature of this exercise, the problem, of course, is at the edges of a category where the conceptual differences between names may not be great on either side of the line, but the difference in the timing of legal protection can be the difference between day and night, times about five years or more, in many cases. 

Interestingly, the CareerBuilder.com example illustrates one that could be argued either way. Burt makes a pretty compelling case for treating it as simply descriptive, but according to the U.S. Trademark Office, it is sufficiently imaginative to fall on the right side of the line to be in the same legal category as the admittedly more creative name: TheLadders.com. Given the close nature of this call for CareerBuilder.com, they would do well to promptly file the appropriate papers with the Trademark Office to make the registered rights "incontestable" -- because doing so would forever remove an adversary's ability to argue or try and prove the name is merely descriptive and lacking in distinctiveness.

In keeping with the on-line job listing business examples, Job-Hunt, actually is a much clearer example of a merely descriptive name, one that the U.S. Trademark Office considered immediately and merely descriptive for "business and career networking services" and, in fact, required proof of acquired distinctiveness before a federal registration could be issued.

Finally, lest anyone think that hovering on the far right end of the spectrum and selecting an abstract or arbitrary name like "Monster" avoids all possible legal issues, you haven't heard of how Monster Cable pursues others using that term, see here. But that is an entirely different post for an entirely different day.