Product Configurations

– Mark Prus, Principal, NameFlash

Mastercard has become the latest company to shift to a “no name” approach to branding.

Of course, they aren’t the first to do this (see Nike, Starbucks, Apple, Target, etc.). We are living in an image-driven world (e.g., Instagram) so this trend is not surprising.

A Mastercard spokesperson said: “As the consumer and commerce landscape continues to evolve, the Mastercard Symbol represents Mastercard better than one word ever could, and the flexible modern design will allow it to work seamlessly across the digital landscape.”

One thing that many people forget is the millions (billions?) of dollars invested in the Mastercard name itself. And yes, that Venn diagram logo design is on every single credit card that Mastercard offers. It is no surprise that “…over 80% of people recognized the brand without the name.”

Does this trend mean that professional logo designers are more in demand or professional name developers are doomed? Nope. Mastercard could not have started with a snappy logo and assumed that everyone would get it. They spent years investing in their brand name and now they can reap the benefits. But you can’t just skip to the “image only” logo design. You have to create the meaning first, and that requires a great brand name (and logo!).

A recent Mall of America and Nordstrom shopping trip (with visiting extended family), coupled with some initial moments of admitted boredom, led me to wandering through the shoe department:

Let’s just say, the stroll through the shoe department made it all worthwhile, to capture the above image, showing Louboutin’s latest fashion sense, leading to my mental stroll down memory lane:

Louboutin Red: Blending Into the Background

Louboutin Red-Sole & Surrounding Contrast: An Implied Trademark Limitation

Louboutin: Still Waiting on the Second Circuit Court of Appeals

Louboutin Wins Second Circuit Appeal, Sort Of . . . .

Louboutin & Lessons Learned

That seven month span of blogging was pretty special (February 12, 2012 through September 17, 2012), actually making the case for narrowing Louboutin’s red sole color trademark registration.

In the end, the Second Circuit Court of Appeals ordered the amendment of the red sole color registration to compel the limitation we said was implied: Contrast with the remainder of the shoe.

This, of course, opened the door to requiring that Louboutin tolerate monochrome red shoes, as any red soles on a monochrome red shoe would not possess the necessary constrast to be seen.

Since then, Louboutin has been seeking global protection for his contrasting red-color trademark applied to shoe soles, with a recent win in the EU, however, he’s currently been snagged in India.

Given the striking shoe above, other Louboutin spiked shoes below, and knowing Louboutin’s comfort with non-traditional trademarks, filings at the USPTO seemed plausible, but no, none yet:

Afterall, the spikes appear purely ornamental with the potential for acquired distinctiveness, and no functionality, well, unless this footwear is designed for, shall we say, painful kicks in the pants.

At this point, the Louboutin brand appears synonymous with the red-sole of a woman’s shoe, which probably explains the non-verbal trademark below being applied to other fashion items:

 

 

So, we’ll keep a lookout for new non-traditional trademark filings by Louboutin, while you keep a lookout for any look-for advertising that might set the stage for claimed rights in a spiked mark.

Like many new parents, my wife and I own a Boppy® infant support pillow.  Examining the packaging, I noticed an excellent example of “look-for advertising:”

Typically, look-for advertising is part of a campaign to build consumer recognition of a product design to a level where it can support a claim of “acquired distinctiveness,” that is, the design tells consumers the product comes from a distinct source.  One exception to this process is that a functional product configuration is not distinct and can never acquire distinctiveness – functional features can only be protected by patents, if they meet the requirements for patent eligibility.  We’ve written extensively about these issues here, here, and here.

So, is the “Boppy Shape” functional, that is, unable to acquire distincitiveness?  This expired patent suggests the answer might be “yes,” describing the invention, a support pillow, as follows:

It is generally circular but discontinuous where tapered ends meet, defining a well in the center.

The patent drawings also show the “Boppy Shape” as a preferred embodiment of the invention:

This evidence doesn’t end the inquiry, but it’s strong evidence that the “Boppy Shape” is functional.  The Trademark Manual of Examining Procedure describes patent evidence as follows:

It is important to read the patent to determine whether the patent actually claims the features presented in the proposed mark. If it does, the utility patent is strong evidence that the particular product features claimed as trade dress are functional. If it does not, or if the features are referenced in the patent, but only as arbitrary or incidental features, then the probative value of the patent as evidence of functionality is substantially diminished or negated entirely.

However, even if the “Boppy Shape” itself is functional and not protectable as a trademark, nothing stops Boppy from registering the phrase “Look for the Boppy Shape!” as a trademark, as these registrations show, here, here, and here, or the two-dimensional representation of the shape, here, and doing so is a good move by Boppy regardless of the whether the shape itself can ultimately also be registered.

One reason Boppy might want to do this is because with patent expiration comes generic competition.  And that’s fine – if all this talk about trademark and patent law gives you a headache, you can save a few bucks buying generic ibuprofen instead of brand name Advil – just don’t call it Advil®.

Where we as trademark professionals see generics violating that rule all the time (and counterfeits) is on e-commerce platforms like ebay and Alibaba. Just take a look at these snips from the search results for “Boppy Pillow” on these two websites:

Alibaba:

Ebay:

The listings above are not for Boppy brand pillows. Instead they appear to be generic support pillows, perhaps fairly produced given the expiration of the patent (Boppy owns other patents for other elements of its pillows and other products, which were not examined for this post). But what’s not fair, and what is actually likely infringement, is use of the “Boppy” trademarks to sell generic support pillows.

Based on my review of its product packaging and trademark registrations, Boppy has done an admirable job raising its trademark portfolio. Now the question is, is it time for a pillow fight?

On a recent happy hour trip to HopCat, a brewpub chain with an incredible beer list of local and regional craft beers, I expected to find a trademark issue or two among the tap handles.  However, instead, I was distracted by a “catsup” bottle (hah) positioned casually next to a bottle of Heinz mustard.

The familiar green and gold border, the white cap, the white background, the shape of the plastic bottle…it reminded me of this previous DuetsBlog post involving a de-branded ketchup bottle.  Private labeling and contract manufacturing has become an increasingly popular means of overcoming barriers to entry, entering new market segments, or accommodating increased demand,  especially for breweries, wineries, and distilleries.

I doubt I’m alone in quickly jumping to the conclusion the HopCat “catsup” was a private labeled version of this and also wondered why the mustard wasn’t similarly branded (other than the lack of appropriate mustard puns):

But looking at the back of the bottle, I was proven wrong just as quickly:  “Manufactured for Hop Cat by Red Gold, LLC.”   However, Red Gold ketchup bottles appear to be sold generally with a yellow cap and a yellow label.  Hmm.

I suppose the shape of the HopCat bottle is closer to Red Gold’s shape, but everything else suggested to me that Heinz was the source behind the brewpub’s ketchup.

In contract manufacturing or private labeling agreements, it’s important to consider the responsibilities of each entity for packaging decisions.   Is the buyer responsible for providing the artwork for approval by the supplier?  Or is the manufacturer responsible for that with the buyer’s approval?  What are the approval conditions if any?  And depending on that decision, which entity is responsible for any liability associated with intellectual property or regulatory claims?  The representations and warranties in the agreement should also appropriately protect the entities – especially the buyer who is ultimately putting the product out into the market.

Recently, a friend and I were watching The Bachelor—I know, I should be ashamed. During one of the commercial breaks, a spot appeared on-screen showing a woman wearing an elegant dress walking through a hallway. She turns into a doorway, and blue, shimmering light projects onto her face, as if she was underwater. A speaker off-screen says, “Open the door to a beautiful new experience for your home.” The commercial cuts to a small bottle with a spray nozzle on top. The bottle has a typical shape, but its packaging includes, near the top of the bottle, a “No. 3.” Are you thinking what I’m thinking? Immediately, my mind goes to Chanel’s timeless No. 5 perfume.

The speaker continues, introducing “Glade Fine Fragrance Mist.” The woman then crosses through a vertical air-water surface, as if she is entering a Stargate. She passes the boundary and floats in the adjoining room, which is filled with water. The speaker describes the “mist” as a bouquet of “florals, beechwood, and lush fruits that whisper a story on the air.” We also learn that the mist is infused with “essential oils” and “artfully crafted. Imagination? We have a fragrance for that.” The screen then shows the “Glade” logo, and the speaker identifies “S.C. Johnson, a family company.”  Take a look for yourself:

After watching the commercial, my friend remarked, “Hey, doesn’t that sound a lot like Chanel No. 5?” I thought the same thing. Just take a look at the branding for the advertised “Glade Atmosphere Collection”:

Now compare the “No 1,” “No 2,” “No 3,” and “No 4” for the above bottles to the Chanel No. 5 registered mark (which, by the way, has been registered since 1960, whereas the “Glade Atmosphere Collection” mark has only been registered since 2017):

Notice the similarities? The ‘o’ of the “No” is super-script in both marks. And, as anyone who passed Kindergarten will surely agree, one cannot help but intuitively notice that No. 5 follows 1, 2, 3, and 4. Combine that with the fact that air fresheners are similar to perfume, in a sense, and you have a formula for some potential consumer confusion. The use of small bottles and elegant advertising furthers the connection. And when you consider the historical fact that Coco Chanel picked No. 5 from a batch of perfumes labeled 1 through 5 (as well as 20 through 24), one cannot help but think that the similarities are more than just coincidence and happenstance.

Although floral scents are common, that Chanel No. 5 has a distinct smell of jasmine, bergamot (citrus/spicy orange), rose, lemon, linen, neroli (bitter orange), ylang-ylang (woody, an “essential oil”), lily of the valley, and iris makes the comparison to Glade’s Atmosphere Collection even more uncanny. Indeed, Glade “No. 1” has scents of jasmine and rose, in addition to cedar and apple. No. 2 smells of sweet pea and pear. No. 3 exudes beechwood, starfruit, and coconut—not that far off from No. 5’s tropical notes.  And No. 4 is a “velvety kiss of patchouli [a member of the mint family] and amber.” These scents certainly seem similar to Chanel’s No. 5, even if spread across multiple bottles.

What do you think? Do Glade Nos. 1 through 4 come dangerously close to No. 5? Given the similar marks and smells, one cannot help but make the comparison.

It is frequently becoming more and more difficult to remember all the topics we’ve covered here over the last — almost — nine years. A recent Snickers end cap display jogged my memory:

Turns out, eight months into this little adventure we call DuetsBlog, I wrote a blog post called Delicious Trademarks: Candy Bar Cross-Section Trademarks? Then, a year later I wrote this one.

My only friendly amendment to the above point of sale end cap convenience store display is to swap the ™ notice for the coveted (or not so, under certain circumstances) ® registration symbol.

Wow, I have been asleep at the switch on this topic, my sincere apologies dear readers. Nearly a year after my second post on this topic, Mars filed an application to register this trademark:

After a couple rounds of descriptiveness office actions, Mars was able to persuade the Trademark Office that the claimed non-verbal candy bar depiction had acquired distinctiveness.

But, that wasn’t the end of the story, because as is often the case when unusual trademark protection is sought, a direct competitor came knocking, in this case, Hershey Chocolate opposed.

Our friend Marty Schwimmer over at the Trademark Blog was johnny-on-the-spot back in 2013 as Hershey opposed the day before Halloween, while I was distracted with this cheesy topic.

The functionality opposition continued for roughly three years until Hershey was able to extract some pretty sweet concessions from Mars, as revealed in this Consented Withdrawal of Opposition Without Prejudice Contingent Upon Amendment of Application.

So, after a little interpretation and modification by the Board, the registration issued with these express limitations:

“The mark consists of a cross-section of a candy bar showing layers within the candy, namely, a middle light brown layer containing several tan-colored peanut shapes and a bottom tan layer, all surrounded by a brown layer. The mark depicts a distinctive two-dimensional cross-sectional view of a candy bar.”

“No claim is made to the exclusive right to use the following apart from the mark as shown: THE SELECTION OF CANDY BAR INGREDIENTS DEPICTED IN THE MARK OR TO THE CONFIGURATION OF A CANDY BAR CONTAINING THOSE INGREDIENTS, EXCEPT AS DEPICTED IN THE APPLIED-FOR MARK.”

Now, there’s a mouthful. Suddenly, the actual issued trademark registration, doesn’t seem all that non-traditional, non-verbal yes, but clearly a two dimensional slice of, let’s say, non-configuration.

Given that, would you be speechless explaining to a client (anyone other than Hershey) what it can and can’t do in advertising food looking something like that when broken in half?

Another question, why doesn’t the end cap display of the cross-section match the drawing of the registered mark? For what it’s worth, I’m more tempted by the end cap than the registration.

Last question, what about Mars’ representation that the claimed mark “always appears in exactly the same manner when used by Applicant.” Maybe it was true when made, don’t know for sure.

To me, one of the most exciting aspects of intellectual property law is when patent law and trademark law intersect in product or packaging design.  Last week, I had the honor of speaking to a graduate product design class at the University of Minnesota’s School of Design, where I discussed the valuable strategy of having a novel design that can translate into forming trademark rights in a distinctive look and feel of the product that allows consumers to instantly associate the look of the product with a brand.

One of the best Instagram accounts for seeing copycat design is @Diet_Prada, and they recently posted quite a gem.  (H/T to my sister for alerting me to this one.)

On the left-hand side is packaging for cosmetics sold by Pat McGrath Labs, a high-end cosmetic brand from one of the most influential makeup artists in the world.  Pat McGrath’s iconic packaging – putting the $100-ish products in shiny sealed foil pouches filled with sequins – has gained significant attention and notoriety in the fashion world.  There are even blog posts about what to do with the sequins.

On the right-hand side is packaging for some ornaments with $20 mini perfumes by Victoria’s Secret for this season.  Does it look familiar?

 

“They took a pouch, and put some sequins in it, and packaged some beauty products in it.  So what?”  Well, I think think the copying goes even beyond that.  The choice of the color palette.  The positioning of the label on the package.  Accidental?  Perhaps but seems unlikely.

So how can a company protect its thoughtfully designed packaging from being ripped off?  First, try to seek design patent protection or even utility patent protection, if there’s some functional aspect to the packaging and not purely ornamental.   Then craft an appropriate marketing / PR strategy draw consumer attention to the packaging so that you could argue that consumers associate that packaging with your company.   Also, pay attention to your agreements with your packaging suppliers and, if you are asking them to do something unique and to your particular specifications, ensure that there’s language in the agreements to protect you in the event your supplier makes similar packaging for others.

-Wes Anderson, Attorney

Way back in 2015, I blogged about an interesting non-traditional configuration mark application from Sony for its QX100 “Smartphone Attachable Lens-Style Camera” with the PTO.

Here we are nearly two years later, and Sony’s battle continues. As expected, the USPTO has refused registration of Sony’s mark on two main fronts: the functionality of the “cylinder” configuration in connection with “digital cameras” in Class 9, and the lack of acquired distinctiveness for a cylinder design. As of this writing, Sony recently responded to a final office action from the USPTO with a Request for Reconsideration on January 2, 2017. It seems an appeal before the Trademark Trial and Appeal Board is all but inevitable.

First, Sony has made liberal use of the “dotted line” in its amended drawings for the mark, essentially removing any claim of trademark protection for any control surface of the camera, and claiming only the cylindrical shape. Here is what the drawing looked like at the time Sony filed the application:

Screen Shot 2017-02-16 at 7.35.57 AM

…and compare that to the most-current amended drawing:

Screen Shot 2017-02-16 at 7.35.33 AM

Dotted lines are used in configuration trademark applications to claim functional or non-distinctive matter – in other words, they are useful to illustrate what the product configuration looks like, but the features themselves are not claimed as part of the trademark. And Sony made very clear in its Request for Reconsideration that “Applicant amended its drawing to remove everything except the cylindrical shape of the camera.” So there can be no doubt – Sony’s application is geared towards gaining a monopoly on cylinder-shaped digital cameras.

In the face of repeated functionality refusals, Sony’s latest substantive response gives short shrift to the issue:

The body of Applicant’s camera is a cylindrical shape.  The cylindrical casing must include, in addition to an optical zooming lens system, electronic circuitry and a battery in more limited space than a regular camera that has a rectangular body.  The cylindrical body makes designing the camera more difficult and more costly. Applicant’s design does not result from a comparatively simple or inexpensive method of manufacture that would support a finding of functionality. TMEP § 1202.02(a)(v)(D).

This addresses only one of the Morton-Norwich factors set forth for evaluating functionality – namely, whether the design is the result of a comparatively simple or cheaper method of manufacture. It does not address the other factors, including whether Sony promotes any of the utilitarian benefits of the design or whether there are utility patents for the product’s design. These factors were addressed earlier, and Sony did disclose several patent applications and registrations relating to the product, which could — depending on the patents’ claims — effectively preclude registration of the configuration mark on functionality grounds.

Also worthy of note – Sony’s Request for Reconsideration also included three years’ worth of sales numbers, and they indicate a precipitous drop in sales for the associated product from 2013 to 2015:

Screen Shot 2017-02-16 at 7.46.09 AM

While sales figures can be highly useful – indeed often all but probative – in the Section 2(f) context, what’s interesting here is the near-complete drop in sales of the associated product. This may still be enough to pass muster to show acquired distinctiveness in the design, but it may signal to the USPTO – or the Trademark Trial and Appeal Board – that Sony is not concerned about protecting the design of a specific, successful product, but rather the concept of a cylindrical shaped digital camera.

Will Sony pursue an appeal? It’s difficult to say for sure – looking on Sony’s website, you won’t find the QX100, or any other cylinder-shaped camera, listed for sale.

Last week a federal lawsuit was filed in Minnesota by Blu Dot to protect alleged intellectual property rights in the floor lamp shown on the left below. The accused “strikingly and confusingly similar” floor lamp shown on the right below is sold by Canadian Rove Concepts:

stilt-floor-lamp-walnutNordicLamp

So, what type of intellectual property do you suppose is being asserted here?

The “strikingly similar” allegation is a hint that copyright infringement is being alleged, although Blu Dot admits it hasn’t yet obtained a copyright registration, which used to be considered a predicate to the court having jurisdiction over a copyright claim. Instead Blu Dot filed for copyright registration only the week before filing suit in Minnesota federal district court.

Given that delay, what is clear about Blu Dot’s copyright claim is that waiting to seek copyright registration will cost it any hope of obtaining statutory damages or attorneys fees against Rove Concepts, even if it has a copyright and even if it was infringed. What remains unclear is whether Blu Dot actually has a copyright and whether it will be able to obtain the necessary registration to sustain a copyright infringement cause of action.

Copyright registration and protection is denied to useful articles such as lamps, unless an original sculptural work of authorship can be identified separately from, or exist independently of, the utilitarian aspects of the article. So stay tuned, as it is certainly debatable whether copyright is a proper form of intellectual property protection for this particular floor lamp.

The “confusingly similar” allegation by Blu Dot is a further hint that non-traditional trademark infringement is being alleged here too. This won’t be an easy claim to pursue for Blu Dot either, since it will have to prove its design is “non-functional” (as it is not federally-registered as a non-traditional trademark product configuration) and it will have to establish acquired distinctiveness in its claimed trade dress elements (before addressing likelihood of confusion):

  • three legs that descend from a single base leg of the same width and depth;
  • each of the three legs pivots horizontally away from the center before angling down to the floor;
  • a portion of upper limb of each leg is stacked on top of each other making the legs different heights;
  • the legs angle out to form a tripod-like base; and
  • smooth fabric-covered shade.

A year and half ago we wrote about an interesting chandelier configuration trademark application — despite more than five years of use, registration on the Principal Register was refused as a non-distinctive product design, so the applicant amended to the Supplemental Register. It will be interesting to see what kind of evidence Blu Dot is able to establish in support of acquired distinctiveness, as five years of exclusive use won’t be enough.

Probably what is most surprising about Blu Dot’s federal complaint is that it alleges no ownership of or infringement of any design patents. Design patent protection seems ideally suited for this very kind of useful product, and it is not at all cost prohibitive to obtain.

Finally, back to Blu Dot’s non-traditional trademark infringement claim again, to the extent copyright is applicable, the Supreme Court’s Dastar case may very well knock out any trademark or unfair competition protection sought by Blu Dot. As the Chief Judge of the United States District Court for the District of Minnesota recently noted in Bruce Munro and Bruce Munro Studio v. Lucy Activewear, Inc. et al:

Courts, however, are “‘careful to caution against misuse or over-extension’ of trademark and related protections into areas traditionally occupied by patent or copyright.” [quoting Dastar] Copyright and patent laws are meant to protect against copying the originality and creativity of another, for a certain time and under certain guidelines, while the Lanham Act and trademark law serve a distinct purpose. * * * The Lanham Act “‘does not protect the content of a creative work on artistic expression’ because an ‘artist’s right in an abstract design or other creative work’ is protected by copyright law.” * * * [E]xtending trademark protection to a particular style of artistic expression would improperly extend trademark law into the area of copyright protection.” * * * Thus, the Court will dismiss with prejudice the trademark and trade dress claims to the extent they are based on Munro’s style and the elements of Munro’s artistic works.

So, how do you come down on the lamp case — is Blu Dot going to face red lights on its copyright and trademark claims? Will it end up wishing it had a design patent to assert against Rove Concepts?

— David Pabian, Attorney

I’m sure most of you have noticed those little egg shaped lip balms at the check out line in Target, Wal-Mart, Costco, and just about any other big store. The company that makes these, Evolution of Smooth or EOS, really hit on something big. Stores stock the product at check out lines across the country. That’s the perfect placement for these little guys as they’re a perfect little impulse buy. In just a few years, the startup has grown to compete with the titans of the lip balm industry. I’m sure the lip balm itself is pretty great, but what makes these little eggs stand out is the product configuration. EOS is clearly aware of this. They hold a few product configuration trademarks and applications for the little pod. They also hold some patents on their products. Even so, that hasn’t stopped others from joining the pod trend.

EOS eggWhenever I saw a pod, I assumed they were EOS until I recently saw those competitor pods. That’s what got me to check on the pod trademarks. Next, why isn’t EOS enforcing their rights? Well, they only have one pod registration on the the Principal Register. The others are all either applications or registered on the Supplemental Register. So those others aren’t doing EOS much good right now from an enforcement perspective. And the one on the Principal Register only registered about a year ago. That hasn’t given EOS much time to use it.

It is now well-established that you can own a trademark on your product configuration. However there are a couple of fairly important limitations. Perhaps the most important limitation is that features and designs that are functional are not protected by trademark. For that, you generally head into the patent world.

In determining functionality, an examining attorney or court will take into consideration a number of factors. These include whether you hold a utility patent on the design, any advertising that promotes the utility of design, whether other designs are readily available for competitors, and whether the design provides some other non-reputational advantage such as simplicity or low cost resulting from the design.

 

EOS Pod DrawingThe registration on the Principal Register claims the configuration above. It states: ” The mark consists of a three-dimensional configuration of the packaging for the goods. The configuration is comprised of an ovoid with an indented portion on one side at the midpoint of the circumference.”

Enforcing a configuration mark is much more difficult than enforcing most other trademarks. Each of the pods I’ve seen is somewhat unique, doing something slightly different. I’ve noticed that there are two aspects of the EOS pod that the competing pods tend to avoid. First, competitors avoid the pure egg shape (I know, eggs don’t have flat spots on the bottom). For example:

OraLabs PodsOraLabs Pods 2Variations on a theme, right? Each container is somewhat pod-ish, but not quite the egg used by EOS. The blue and purple products are quite probably ovoids, but have other geometric or design features that may pull them just far enough away from the EOS trademark.

What else do you notice? None of them have that little indented portion. That’s a prominent part of the trademark. It actually takes up the majority of the description. Now, I would argue the indent is the most functional part of the whole thing. It allows you to easily twist the cap off rather than struggle with it like a pickle jar. However, just to be safe, these other brands may decide to avoid that particular portion in the hopes of avoiding an infringement suit or to strengthen their argument in the event that one occurs.

For its part, EOS is probably well aware that enforcing a configuration mark is difficult and the scope of protection is generally narrow. It also may be a bit worried about keeping its trademark. A trademark registration adds a lot of weight to a cease and desist letter. EOS probably doesn’t want to risk losing the registration on a functionality argument and may be content with selective enforcement to preserve a narrow niche.

EOS is also branching out. It now has normal stick lip balm, along with lotions, and shaving cream. All come in unique product packages, of course. Pod lip balm may well be a fad. After all, it’s a fairly bulky container to carry around. Now that EOS has made it as a company and brand, it can ride some of that success into a more diversified portfolio. Additional product offerings take some pressure off of the pods and allow for a different, perhaps more selective, enforcement strategy. If you’re a one-trick pony, you’re probably a little more likely to react when another pony does your trick.