While filling up my gas tank at our local Costco last week I coudn’t resist capturing this photo of pump signage to ask our dear readers a few pointed questions:

Is there any doubt that the automobile depicted in the Costco advertisement is a Corvette Stingray? If so, HiConsumption should resolve any lingering questions.

How did you know (if you did), before checking out the 2014 Corvette Stingray photos on HiConsumption? Perhaps the federally-registered Stingray logo on the front quarter panel behind the wheel? The barely visible Corvette logo on the wheels? The overall shape and configuration of the automobile?

Although GM has a long list of non-traditional trademark registrations to sift through on the USPTO database, I was unable to locate one covering the current shape of the Corvette Stingray (I suspect our friends who are also patent types could probably locate some design patents covering the ornamental design of the vehicle, so I didn’t bother going there), but I did locate a few trademark configuration registrations covering earlier Corvette model shapes of actual vehicles and toy replicas (here [cancelled], here, and here).

Marketing types, how would you go about obtaining the Corvette image to incorporate in the above advertisement? Would you feel the need to obtain permission from GM to display these ads at point of sale? I hope so.

Legal types, is there any legitimate basis for Costco claiming fair use here? I’m thinking not — assuming this use is not authorized or licensed, it appears to appropriate the goodwill of GM to attract attention to and help sell Kirkland Top Tier gasoline. Remember this little gem from five years ago in our archives? The Costco ad above — depicting the entire profile of the vehicle shape and design — seems even less justified than the partial Corvette image in the Schlitz ad, at least from where I’m sitting.

Last, do you suppose this ad on signage slipped by Costco’s legal department or might there be an aggressive stand on fair use, or perhaps if questioned, an attempted defense to challenge GM’s underlying rights — I’m assuming GM can establish acquired distinctiveness in the shape if it had to, even without a federal registration (but a single piece of paper as proof would be much better).

Remember what happened when Tiffany (the jewelry company, not our Tiffany) complained about Costco’s unauthorized use of the Tiffany name?

Costco counterclaimed for cancellation on genericness grounds, so what might we expect here, assuming the point of sale advertisement was not authorized or licensed by GM?

I’m thinking this signage is going bye bye, how about you? So, why don’t we just start the count-down now?

  • Martha Engel

    From the car nerd here, Top Tier gasoline (logo shown in the right hand corner) is owned by GM. http://tsdr.uspto.gov/#caseNumber=77384167&caseType=SERIAL_NO&searchType=statusSearch
    It’s a special blend of gas developed and promoted by GM and other auto manufacturers, specifically for performance vehicles like the Stingray. http://www.autoguide.com/auto-news/2012/12/which-gas-stations-sell-the-best-quality-gasoline.html

  • Stephen Feingold

    Steve- With all due respect, do you think that anyone seeing this ad other than a trademark lawyer would assume any connection between the maker of the car and the source of the gasoline? The point I got from the advertisement that Kirkland gasoline surpassed the EPA’s requirements so that even a sporty car (which I would normally think of as being inefficient from a fuel environmental perspective) can maintain performance and benefit by creating less pollution. I saw the picture as just an example of a type of car that one normally thinks of as environmentally unfriendly.
    I note that in the 2014 Consumer Report survey of American consumers they measured seven factors to create overall ratings. Each factor was weighted based on the importance given by respondents. Design was the least important factor of the seven in 2014 and tied for last in the 2013 survey. Of course, I know there are some car aficionados who absolutely would immediately recognize the design. But would the also not be among the more sophisticated uses not likely to assume that a connection or sponsorship from this advertisement?
    Let’s also remember that we are dealing here with trade dress. And at least one Circuit has held that the test for trade dress infringement is different than for word marks because the public makes difference assumptions about product design than it does for express designations. .
    I normally am rather predisposed against nominative fair use defenses because the user, I think, is trying to create the allusion of some connection to create some benefit. And that is what I argued for the plaintiff in the Century 21 case that ultimately went to the Third Circuit. I have been a strong critic of that decision (of course, I have no bias) but, surprisingly, I was not troubled by this ad at all.
    Well, this is what I love about our area of law. Being challenged by someone I highly respect to help refine what, we can all agree, is a murky area of the law.

  • stevebaird

    Hi Steve, thanks for dropping by and sharing your perspective!
    As Martha, our resident car nerd pointed out, there may very well be an approved use of the Corvette design, given that GM is behind the TopTier detergent gasoline being promoted at Costco . . . .
    If not, it would be interesting to see how survey evidence might play out!
    BTW, I totally agree with you about loving our area of the law, murky and all.