This billboard ad has appeared in various locations around the Twin Cities for some time now. 

Each time I saw it, I wondered whether it would be the last, given how vigilant 3M is in protecting its various trademarks and other intellectual property. This time, I had a camera handy to capture it.

Now it’s time for some questions.

Is there any question that this Accountemps billboard advertisement prominently features a Post-It brand note?

After all, 3M owns a non-traditional single-color trademark and federal trademark registration for the color canary yellow "used over the entire surface" of "stationery notes containing adhesive on one side for attachment to surfaces." In case you’re wondering, at least one dictionary defines "canary yellow" as "a light yellow." Other 3M trademark registrations related to the Post-It brand refer more broadly to "yellow," and are not limited to "canary yellow," here, here, here.

This billboard ad appears to be yet another example of a well-known, if not famous, non-traditional trademark being used in another’s advertising, not for comparison purposes, but as a prop to help sell goods or services totally unrelated to those of the non-traditional trademark owner. Is the use necessary? Is it appropriate? Should it be considered a fair use, if made without permission? Why didn’t Accountemps make the stationery note prop appear in a color that is not trademarked?

Is the use likely to cause confusion, keeping in mind that actionable confusion is not limited solely to confusion about origin or source, but also protects consumers against likely confusion about affiliation, connection, association, sponsorship, or approval?

Is the look of 3M’s Post-It note a famous trademark? If so, it is entitled to dilution protection too. Section 43(c) of the Lanham Act protects against "dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury." If everyone started to depict a Post-It note in their ads would that tend to blur the distinctiveness of 3M’s trademark or strenghten the brand? I’m thinking that trademark types and marketing types might have different takes on this question.

As you may recall, we previously have discussed the implications of using another’s non-traditional trademark in advertising: Levi’s Double Arcuate Design trademark and the shape of a Corvette from the 1960s.

So what do you think, does Accountemps need 3M’s permission for this billboard advertisement?

  • Well, suppose I owned a retail store (or employment agency) and I stuck a post-it note on the front door. Suppose I went door-to-door and stuck post-it notes on the doors of potential customers. Could 3M object?
    Can you really trademark a canary-yellow square?
    An Apple painted in rainbow colors is one thing, but a swatch of color?
    Really?

  • @Thorne
    In your case, you’re actually using the function of the product to promote your business, which really is just promoting 3M. You chose to use a Post-It because it was functionally appropriate to do so. This is no different than driving a Ford because of its reliability.
    It’s not just a swatch of color though. If you notice the drop shadow behind the yellow square, it gives the appearance that it is attached at the top, and not at the bottom. I suppose if it was a yellow square with a uniform drop shadow, you could argue that it is just that. However, it seems that the drop shadow implies it is a 3M Post-It note.
    In order for your case to work, the board would have to have a giant, 3M manufactured, Post-It, which it clearly does not. I think 3M could very well have a case since the product’s appearance is used to promote something else, rather than utilizing its function.

  • Humm.. I’m not sure they are using 3M Post-it note. They may be using Staples yellow color Stickies. No? http://bit.ly/1EVak5
    Accountemps could say that they are “using” the generic product. It feels like 3M is loosing some of its distinctiveness and therefore its protection. No?
    If I were Accountemps, I would keep the ad up.
    @froussel

  • I’m not an attorney (and I don’t play one on tv). But as a business person, I had no idea that 3M had a trademark on the color yellow. When I saw that billboard, I didn’t wonder if that was a 3M post-it, or a generic one. Every store sells generic post-it notes now.
    As an attorney with some understanding of 3M, I understand how you picked up on that. But I have to think that a overwhelming number of people do not associate the yellow post-it with 3M.
    Of course, that wouldn’t stop 3M from pursuing legal action I suppose.

  • I agree with Dave Taylor, The “post it” note has become a generic brand. Could Accountemps have avoided your argument by putting a graphic of a push-pin at the top of the note? Sure. But permission-I don’t think so…

  • Anonymous Coward

    I agree with Fred.
    They aren’t even using 3M’s trademark. “. . used over the entire surface” of “stationery notes containing adhesive on one side for attachment to surfaces.”
    Where’s the adhesive?
    This is just a yellow square on a billboard.
    Not even a close call.

  • I share the same sentiments as many who have commented before me; the adhesive yellow “note” is generic. Unless there is a subtle “Post-it” logo showing through, I don’t think 3M has a case (if they were to even try to get Accountemps to back off the billboards). I also don’t see any apparent attempts to steal business away from 3M by using their sticky notes–rather it really promotes the use of the post-it, generic or not. 3M most likely benefits from its use on the billboard.

  • asit agarwal

    ur rite its upto u whether u use this colour or not

  • The first question is of permission and I am not a lawyer. Common sense would dictate yes. The second question is why would 3M want their brand associated with Accountemps? 3M’s brand team should be fighting to get these pulled down.

  • Permission is required to use Scrabble tiles in advertising. Post-Its should be no different.
    I guess this comes down to whether a reasonable person would think that the yellow paper in the ad is a Post-It note.
    I do.
    But whether I am reasonable is another matter.