DuetsBlog Collaborations in Creativity & the Law

Blue Oval, But Look Mom, No Words!

Posted in Branding, Marketing, Non-Traditional Trademarks, Trademarks

What does this image signify to you?

Mark Image

For full credit, please answer the question before peeking back at Dan’s popular post called "I See Blue Ovals."

I suspect that Ford Motor Company would be happy if your response is: Mark Image

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?

Mark ImageFYI, 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

  • Randall Hull

    Wow, I have a difficult time seeing how the blue oval has achieved inherent distinctiveness. Dan Kelly’s article demonstrated three well known variants that are too similar to be disregarded in any determination.
    As for the Ferrari, perhaps they have a supportable position, but I haven’t performed due diligence to discover if there are other similar yellow rectangles with color bars used as trademark backgrounds.
    This will be interesting to watch.

  • Brad Frazer

    Speaking of blue, check out Reg No. 3,707,623.