News flash, last Friday the USPTO approved for publication a non-traditional trademark that I’ve seen in real life before. Let’s just say it is attached to one of our many remote control devices that I’ve had to dig out from under the sofa cushions more than a few times:

RokuPurpleTagThe claimed mark consists of “the configuration and material composition comprising a fabric tag in the color purple attached to the housing of the goods.” Note how the purple tag shown on the drawing doesn’t include the ROKU brand name:RokuDrawing

I’m thinking the USPTO should have required that the drawing to the right and the specimen of use match, and then the ROKU brand name appearing in white could have been shown in dotted lines to make clear it wasn’t being claimed as part of the non-traditional trademark. Do you trademark types out there agree?

The Examining Attorney at the USPTO assigned to the application asked Roku for the following information and documentation:

(1) A detailed explanation as to what purpose or function the “fabric tag” serves as used on the goods.

(2) Any available advertising, promotional or explanatory literature concerning the goods, particularly any material that relates specifically to the applied-for color mark and configuration.

(3) An explanation as to the use of the identified “fabric tag,” or similar tag, if any, extending from the housing of electronic goods, in applicant’s industry and any other similar use in applicant’s industry.

(4) Color photographs and color advertisements showing competitive goods in applicant’s industry using tags appended to housings for related goods.

(5) An explanation as to whether and how the goods’ function, purpose and cost are affected by the “fabric tag.”

Roku’s response was brief and to the point, but one might debate whether it covered all the requested points, information, and documentation:

“The Examining Attorney requested additional information and responses to inquiries regarding Applicant’s mark. Applicant responds as follows: 1. The purpose or function of the purple fabric tag is to be a label for the goods, just as a fabric tag is used as a label for articles of clothing. 2. Attached is a screen shot from Applicant’s website showing the mark as used on the goods. 3. To the best of Applicant’s knowledge and recollection, no others in Applicant’s industry use a fabric tag as a source identifying label or indicator of origin on the housing of these consumer electronic devices. Applicant is unaware of any goods in its industry that use fabric tags appended to the housings of the goods. 4. The function, purpose and cost of Applicant’s goods are unaffected by Applicant’s appending of a fabric tag on the goods. The fabric tags offer no particular functional or cost advantage of any kind. They merely serve as an inherently distinctive indicator of origin given the uniqueness of having a fabric tag appended to the housing of consumer electronic goods such as those produced by Applicant and those in its industry.”

Nevertheless, the brief response immediately led to approval of the claimed inherently distinctive mark for publication. I’ll have to say, it was more than a bit surprising to me that the response didn’t trigger a lack of distinctiveness refusal, at least as to the color purple, especially since the four prior registrations Roku was asked to claim ownership of were all non-distinctive Supplemental Registrations: 43296634329664, 4329666, and 4336488.

To the extent you, like me, thought about the apparent inspiration of Levi’s red pocket tab on jeans, David recognized that point, long ago, nearly five years ago now.

So, the claimed non-traditional color/fabric trademark has been around almost five years now, but why wasn’t a disclaimer of the color purple required unless Roku could prove up a partial acquired distinctiveness claim as to the color purple?

  • I think the color claim was permitted because it was claimed as a feature of the
    fabric tab mark and not solely as a mark itself (compare TMEP 807.07 to
    1205.05). My understanding is that this only works if the fabric tab is an inherently distinct mark so as to stand apart from the goods or non-distinct packaging, because color applied to either of those would make color the only mark and subject it to the acquired distinctiveness requirement. That is what the cited registrations show – the color purple applied to the Roku device or the remote’s buttons and lanyard.

    The drawing was probably allowed under the latitude given to applicants in TMEP 807.12(d) (“An applicant may apply to register any element of a composite mark if that element presents, or will present, a separate and distinct commercial impression apart from any other matter with which the mark is or will be used on the specimen.”). If the fabric tab forms a separate and distinct commercial impression apart from the word “Roku,” then the fabric tab represents a complete mark. As long as the drawing is a substantially exact representation of that complete mark, it should be allowed – put another way, if the word “Roku” is not essential and integral subject matter of the mark, then its absence from the drawing is not a mutilation that should be refused. I think this is resolved if we consider that the fabric tab would function as a complete mark if the remote were flipped over to show the fabric tab from the back side, where presumably the word “Roku” doesn’t appear and you would only see a blank fabric tab. In my opinion, If the blank back side of the fabric tab functions as completely as a mark as the top side of the fabric tab with the word Roku, then the drawing probably doesn’t need the word “Roku” in dotted-lines to be acceptable.

    • I happened to look at the Roku remote on a store shelf over the weekend and it turns out the word “Roku” is printed on both sides. That fact probably means that the word “Roku” should at least be in dotted-lines, if not part of the description of the mark itself, i.e. it’s much harder to argue that the purple fabric tab alone forms a “separate and distinct commercial impression” and that the word “Roku” is not an “essential and integral” subject matter of the mark.

  • Marc

    I’m not an attorney, but, doesn’t the comparison to clothing tags automatically negate their claim of uniqueness? After all, virtually every piece of clothing has a fabric tag.