DuetsBlog Collaborations in Creativity & the Law

Using Another’s Body to Sell Your Products? The Problem of Airbrushing Non-Traditional Trademarks

Posted in Advertising, Branding, Food, Goodwill, Infringement, Loss of Rights, Marketing, Non-Traditional Trademarks, Product Configurations, Product Packaging, Sight, Trademarks

 

Airbrushing is a familiar technique among advertisers looking to avoid the risk of trademark infringement or dilution liability when branded props of others appear and would otherwise be recognizable. It can work well when removing a traditional visual trademark, i.e., a logo or word mark, because there can be no likelihood of confusion with (or dilution of) a visual mark when the claimed mark cannot be seen.

But what about when a branded prop dominates the ad or the identifiable trademark is another’s product container or package, a single color, trade dress, or perhaps the shape or configuration of the product or prop itself? What is critical for advertisers to appreciate is that when non-traditional trademarks are the subject of the ad and concern, the airbrush and any digital manipulation are less helpful and may be entirely ineffective in erasing trademark liability.

By way of a hypothetical example in the non-alcoholic beverage world, airbrushing the Coca-Cola word mark may not be sufficient to avoid liability, so long as the distinctive Coca-Cola bottle is left intact, say, in a Chevrolet ad. Likewise, by way of another hypothetical example, this time in the alcoholic beverage world, presumably the current owner of the Schlitz brand would object to another’s commercial use of its distinctive Schlitz label even if the Schlitz word mark was airbrushed or otherwise removed.

Now, for a not so hypothetical example concerning Schlitz’ ads, continue reading after the jump.

It is probably fair to say that Schlitz beer is using more than mere nostalgia in its attempt to make a comeback. Hearkening back to the good ol’ days, and the original formula that made the beer brand famous decades ago, Schlitz is currently in the midst of a major national ad campaign that invites consumers to agree that “Things Had Better Body Back Then . . . Especially the Beer.”

To give the point some traction or perhaps make it stick, the ads currently appear focused on comparisons (although not true “comparative advertising” comparisons) of the beer to a Corvette model and a Playboy model — both from the 1960s. As a side note, Cynthia Myers, who I assume granted a license for the use of her name and likeness (i.e., Right of Publicity), and who I now understand was Playboy’s Miss December 1968, and apparently was voted by Playboy as its Number 10 Playmate of the Century (according to the homepage of Ms. Myers’ website), apparently doesn’t mind being called a “thing” even today (but that is fodder for another kind of blog).

A more interesting DuetsBlog question is whether GM was asked for or needed to give permission for use of the Corvette images? I’m guessing none was given, but what do you think? What auto manufacturer wants to co-brand with a beer brand given the concerns of drunk driving these days. Now, I won’t hazard a guess as to whether any permission was sought in the first place. It is entirely possible that Schlitz doesn’t believe it needs permission to run the present ads, but whether that is right or not is a far more complicated intellectual property question than we have time to explore fully here. Having said that, here are a just a few thoughts to contemplate.

Is the Corvette brand recognizable in the ads? For those of you unable to identify the above vehicle image as a Corvette from the 1960s (I’d venture to guess many out there can even identify the specific model year, sorry I can’t), which consumes well more than half of the ad content by the way, get with the program, you’re close to standing alone. Even my ten year old son was able to immediately identify the car as a Corvette in a similar “hood-ornament-less” version of the above Schlitz ad, when asked, as we drove by a billboard a few weeks ago in downtown Minneapolis. So, even though the vehicle images appearing in the Schlitz ads appear designed to avoid inclusion of any traditional word or logo marks of GM, it would be hard to defend a GM complaint on the basis of consumers not being able to identify or recognize use of the Corvette design.

Does GM still own enforceable trademark rights in the configuration? Since any design patents that GM may have owned in the ornamental shape of a Corvette from the 1960s have long expired (design patents lasting 14 years), it is worth asking about trademark protection, that in theory can last forever, provided the mark continues to be used and cared-for properly. I can’t answer the question of whether GM still owns enforceable trademark rights in Corvette models from the 60s, because I don’t know what GM has done with the configurations since the 1960s, but given how long it has been since this model of Corvette has been on any dealer’s showroom floor, Schlitz may be banking on trademark abandonment as a theory of justifying no need for permission, again, assuming no permission was sought or obtained by Schlitz. Trademark abandonment exists when use of a mark ceases with no intent to resume use, and, since few will admit to lacking an intent to resume use, the law provides that three years of non-use constitutes a rebuttable presumption of abandonment.

What about lingering or residual goodwill? Even if there has been a technical and legal abandonment of trademark rights, advertisers must consider the doctrine of lingering goodwill that still may form the basis of an unfair competition cause of action. Lingering goodwill, a/k/a residual goodwill (see The Trademark Blog entries on the subject), recognizes that the goodwill in a trademark doesn’t necessarily go away right away. How long can goodwill linger anyway? That is sure to be the subject of some future post on DuetsBlog.

What about likelihood of confusion? Is anyone seeing the ads likely to be confused into believing there is a connection, affiliation or other relationship between GM and Schlitz?

  • R Shaw

    I doubt that Corvette would take issue with the use of part of one of their 49-year-old cars for a nostalgic beer ad. I grew up in the ’60’s and would not recognize the image of a Corvette from the image of a ’80’s Toyota MR2.
    I believe removing the brand logo is all that is required (except in the case of using a old Coke bottle) otherwise, you would have to obliterate the shapes of all the cars in the photo of a traffic jam in a CSX ad.
    Schlitz might want to take those cross flags off the nose, as that might be a trademark violation.
    From a strategic standpoint, and as for Schlitz and truth in advertising is concerned…Schlitz was a terrible beer in the 60’s and I doubt they could affect today’s market with this kind of comparison. Harkening back to the ’60’s just reminds me of how terrible the beer was and how finicky the cars were. And, nothing sounds less compelling than ‘old beer’.

  • My attorney and advised that it may be prudent to answer that question only after all discussion parties sign an NDA; and heretofore, a federal, state and local trademark searches are required to ensure the topics that the group are about to discuss do not violate any intellectual property rights.
    Casting caution aside, this is an interesting range of specific brand property questions as it relates to advertising. Seems the safest bet for advertisers is simply not to use recognizably branded products from any era.
    Take the case of a 1960’s Corvette…
    Whether or not the iconic (and therefore recognizable) Corvette body is past the 14-year design patent limit, it is still strongly associated with Chevrolet. Hypothetically, Chevrolet/ GM could argue that in light of the continued affinity for the older models through clubs, auto shows√¢‚Ǩ‚Äùsome sponsored by Chevrolet or GM√¢‚Ǩ‚Äùthat beyond initial design, the 1960s Corvettes continue to make connections with customers today. And that these connections continue to drive marketing, branding & advertising√¢‚Ǩ‚ÄùI’m not an attorney, but could that reinstitute new intellectual property relevant for GM today√¢‚Ǩ‚Äùand outside the scope of the 14-year design patent limit?

  • Russell, sounds like you have some experience in dealing with attorneys, NDAs, heretofores, and all, so I feel your pain.
    You have made some good arguments for intellectual property protection after expiration of any design patents. I don’t know what the facts ultimately would show with this example, but it is not uncommon for a manufacturer to use a design patent to protect a product configuration while they are attempting to acquire trademark protection that can last forever, so long as the mark is still in use. It is also possible for manufacturers to make uses of their automobile configurations even after they are off the showroom floor, in connection with other kids of products, i.e., through toy vehicles, calendars, and other merchandise less costly to sell than an automobile.
    The wild card is often, how long does good will linger after trademark rights have formally been abandoned through non-use. There are not a lot of cases to guide that question with any great degree of predictability.

  • Another excellent reminder about goodwill cases, Stephen. Thank you. In my limited experience, it seems a demonstrating/ refuting winning evidence of goodwill beyond initial intellectual property rights limitations (copyright, trademark, design & product patents, etc.) is solidly in favor of those entities with the deepest pockets.
    And yes, it seems unavoidable that legal issues arise in any creative industry, and the attorneys are typically in line to remind us. I would say that a sizable part of some days includes exploring such considerations.