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?

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?

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?

In considering this pair of color registrations, the more recent 2006 "purple" registration broadly covers "disposable nitrile gloves for general use." The phrase "for general use" is a big deal -- and worth the additional registration -- because it adds significant scope to the narrower federally-registered rights K-C obtained back in 2002 for the same color mark in connection with the far more limited laboratory, medical and surgical uses.

It is often argued that customers from the more narrowly defined laboratory, medical and surgical consuming groups are more "sophisticated" and less prone to trademark confusion than those in the general public, so when marketing channels grow and sales begin to expand from these more "sophisticated" purchasers to also include those in the general public, it is important to make sure the registered rights extend protection to this more vulnerable and larger customer base too.

Moral of the Story: Trademark types, make sure to keep pace with the business and marketing types.