If FURminator Inc. were looking for a pitchman to promote and increase sales of the “famous” FURminator® pet grooming tool, and recognizing the recent, sudden and unforfunate passing of famous bearded TV pitchman Billy Mays (who could sell household products better than just about anyone, and still appears to be doing so after his passing), I’m thinking that the fictional cyborg assassin character played by “Ahnold” in “The Terminator” film would be the next best pitchman for the futuristic, stylish, and eye-catching pet grooming product shown above.
While either Billy Mays or Ahnold probably could have increased, or still could increase, sales of the product, it is more likely that neither could have saved the company from losing its bid to register trademark protection for the claimed trade dress, covering the three dimensional shape and appearance of the product. Since the applications were refused registration by the U.S. Trademark Office on functionality grounds here and here, and they terminated (were abandoned) without response, I suspect that early collaborations between legal and marketing types (and probably engineering types too) is all that might have helped avoid the terminal fate of these wishful non-traditional trademark applications.
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?