Brand owners and managers may wonder, is a trademark license required when another’s unregistered color scheme is used? Depending on the facts, it may very well be.

About four years ago brand owners scored a major victory in LSU v. Smack Apparel, when the Fifth Circuit Court of Appeals agreed to the existence and successful enforcement of non-traditional and unregistered trademark rights in color schemes when combined with “other identifying indicia” (indirect references to the brand owner — in this case, Louisiana State University), prohibiting the sale of t-shirts like this (absent a license from the brand owner), pursuant to Section 43(a) of the Lanham Act:

Smack Apparel’s arguments in defense of its unlicensed status and against the lower court’s “likelihood of confusion” determination were not successful:

“We hold that given the record in this case and the digits of confusion analysis discussed above-including the overwhelming similarity between the defendant’s t-shirts and the Universities’ licensed products, and the defendant’s admitted intent to create an association with the plaintiffs and to influence consumers in calling the plaintiffs to mind-that the inescapable conclusion is that many consumers would likely be confused and believe that Smack’s t-shirts were sponsored or endorsed by the Universities. The Universities exercise stringent control over the use of their marks on apparel through their licensing program. It is also undisputed that the Universities annually sell millions of dollars worth of licensed apparel. We further recognize the public’s indisputable desire to associate with college sports teams by wearing team-related apparel. We are not persuaded that simply because some consumers might not care whether Smack’s shirts are officially licensed the likelihood of confusion is negated. Whether or not a consumer cares about official sponsorship is a different question from whether that consumer would likely believe the product is officially sponsored. For the foregoing reasons, we conclude that a likelihood of confusion connecting the presence of the Universities’ marks and the Universities’ themselves was demonstrated in this case.”

The decision was not without criticism from academics and others concerned about what they may consider to be an unwarranted proliferation of trademark rights that may stifle free speech and competition in the marketplace. So, what ever happened to Smack Apparel, you might ask?

A recent trip to the legendary Iowa Book & Supply Store (more recently truncated to Iowa Book), revealed to me that despite its loss at the Fifth Circuit Court of Appeals, Smack Apparel is still very much in business, and remains quite proud of its unlicensed status — representing itself as being “licensed ONLY by the first amendment” — in selling college rivalry t-shirts like these now:

Apparently Smack Apparel is operating under the belief that these t-shirts contain no “other identifying indicia” — unlike the enjoined purple and gold t-shirts having more than simply the colors to identify LSU — since the only statements on these rivalry t-shirts are anti-Nebraska Cornhusker for the black and gold (colors for the University of Iowa) or anti-Iowa for the red and white (colors for University of Nebraska). Incidentally, this same style of t-shirt appears available for just about any college team you might follow.

The Smack Apparel website displays this warning when you’re considering an online order: “This shirt is not licensed or endorsed by any institution or organization.  Its sole purpose is to enable the individual wearing it to express the message contained on it.”

Part of the Smack Apparel story claims this about its unlicensed status: “It is not that we are averse to being licensed; we are just averse to the CREATIVE RESTRICTION that would come along with being licensed.  If we couldn’t do “CHOKE…The Official Drink of Michigan Football” or “C.U.B.S…Completely Useless By September” it just wouldn’t be any fun (Sorry Michigan and Cubs fans)!”

Putting aside the question of whether Smack Apparel hears from The Most Interesting Man in the World, it will be interesting to see whether the Universities take another shot at Smack Apparel.

If so, perhaps Indiana University should be the lead plaintiff, given the “other identifying indicia” present on this currently available example:

What do you think, has Smack Apparel successfully evolved its business model to avoid further trademark infringement problems or is it likely to get the smack down again?

Finally, while we’re on the subject of collegiate color trade dress, remember this blast from the past? “Sit Down Michigan State,” A Collegiate Trade Dress Tale

–Susan Perera, Attorney

A few weeks ago I wrote about the use of unique colors in trademarks and logos as a potential way to differentiate your brand. Like using distinctive colors as part of a trademark, many companies use distinctive colors on their actual products to act as source identifiers.

While a color trademark for a product does take longer to achieve (such a mark is not inherently distinctive but can achieve trademark registration through a showing of acquired distinctiveness, often by five or more years of continuous use) it can be a great non-verbal brand identifier.

One possible candidate, in my opinion, for such a mark is the Canon L lens. Even as an amateur photographer I run across and readily recognize Canon’s L series of lenses by the red ring on the end of these professional or “luxury” lenses.

Although I was unable to find any evidence that Canon has attempted to register or protect this characteristic, Canon’s website does tout the L series lenses as “distinguished by a bold red ring around the outer barrel.” Not quite blatant “look for” advertising, but I wouldn’t be surprised to see Canon attempt to focus in on trademark protection.

What possible color product trademarks are you noticing?

–Susan Perera, Attorney

I recently read Nora Reed’s blog post, Locate your Brand on the Color Spectrum, on Logoblog. Nora identified a trend, which you may have noticed from time to time, that some industries tend to congregate in a specific color scheme.

For example, fast food logos tend to be in the red/yellow category, while social networking sites predominately use blue for their logos. Similarly, I see many red and green pizza franchise logos. So why is this? Is it a tendency to imitate your competitor? Do these colors tend to create a particular feeling or notion that these brand owners seek? Or are these companies oblivious to the ability to differentiate their trademark through the use of color?

Do you notice the brands that have gone against this trend?  For example, the Culver’s brand has gone against the fast food trend by using the color blue.  Do these color choices impact your opinion of these brands?

 

 

Jason Voiovich, author of the “State of the Brand” & Vice-President of Marketing for AbleNet, Inc.

It sounds like something I’d get wrong in a game of "Trivial Pursuit".

Name the belated military attempt of King William I to restore his position as monarch over the Belgians. I might have guessed the delicious-sounding "great chocolate war". It sure sounds better than the "Ten Days Campaign", but isn’t nearly as tasty.

But a "great chocolate war" is exactly what’s stirring between candy enemies Hershey Co. and Mars Inc. The former makes the ubiquitous and irresistible Reese’s peanut butter cups. The latter makes Snickers, M&Ms, and Dove chocolates. Also yummy. But the skirmish isn’t over deliciousness, it’s over something much more mundane: Packaging. And none of the lawyers are laughing.

Last week, Hershey’s lawyers went to work, filing a lawsuit claiming Dove peanut butter chocolate "Promise" squares packaging piggybacks on the success of Reese’s by using its orange, brown, and tan color scheme.

See for yourself:

Dove and Reese's packaging

Okay. I consider myself a reasonable person. And I have irrational love for all types of chocolate. But I am having trouble seeing what the heck these guys are talking about. I’ll leave the nitpicking around what the Reese’s IP actually covers to the lawyers, but suffice it to say, what other color would you use in your packaging to communicate "peanut butter"?

Green? That’s "mint". Blue? That’s "milk chocolate". Dove already used a lighter shade of orange and yellow for "caramel". Red? Purple? Those seem weird. The orange Dove uses seems to make sense, is in line with the rest of its packaging scheme (other flavors use other colors in the "swoosh"), and wouldn’t be confused for Reese’s by any reasonable person.

What do I think this is really about?

A few things. First, Hershey and Mars are the two 800-pound gorillas in the candy market. For years, they’ve struggled for the top spot, which Hershey recently lost following Mars’ $23 billion acquisition of gum-maker Wrigley. Lawsuits are one way to drain a competitors coffers and force them to respond on your terms versus focusing on their own business (think Sun Tzu).

Second, Mars should have seen it coming. As Hershey worked to make some (necessary) cost cutting moves – including closing some plants and using cocoa butter substitutes in some of its products – the PR folks at Dove thought it wise to take advantage of the situation. It’s "made in the USA" and "pure, rich chocolate" messaging certainly were on-target and competitively appropriate. Methinks Hershey is striking back more out of anger and frustration than any real chance of succeeding in court.

But might there be a deeper issue going on? Could Hershey have a secondary motivation? I’ve been on enough creative teams to know what happens when your work is the subject of a lawsuit. It’s not just demoralizing, but puts you on guard as you work on your next campaign. In other words, how willing will you be to step out into bold creative territory when your last campaign landed your client in deposition hell?

Certainly, if you mention this to a creative type, they’ll be the first to tell you they can "shake it off" and they realize that legal tussles are all "part of the game". However, you can’t underestimate the chilling effect legal action has on the creative psyche. I think Hershey knows exactly what they’re doing. I think they’re putting Mars on notice. Step anywhere close to our creative IP at your peril.

And I think it just might work.

           

That’s what I called out to this guy at the College World Series in Omaha last week, after "down in front," received no reaction. That’s right, "Sit Down Michigan State," obtained the desired result, but not without a somewhat funny look back.

When he turned around I realized the funny look wasn’t simply a reaction to interrupting his important cell phone call at the first pitch of the game, it related to my assumption that the initials MS + a green/white trade dress = the Michigan State Spartans.

Well, excuse me, I am from Big Ten Country, so a logical assumption on my part, or so I thought. Problem is, the front facing rear of his cap clearly read "Lions," not "Spartans". As a result, I was left rather confused, even in a trademark sense, or you might say, especially in a trademark sense.

So, my first thought upon returning to my laptop at the end of the hot day, all ready to clear up this post-sale trademark confusion was, Mississippi State? Nope, wrong color scheme (maroon and white), and wrong mascot (bulldog). How about, Murray State? Nope, wrong color scheme and mascot, again.

After more than a little digging online, it appears MS + green/white trade dress = Missouri Southern. But wait, Missouri Southern State University owns and has federally registered the acronym MSSU, not MS. Could this be an unrecognized branding truncation problem, given Michigan State’s rights in MSU?

Given the growing recognition and protection of college color schemes in combination with some other indicia that identifies the school, I still see Michigan State, not Missouri Southern, sorry Lions.

For a fairly recent case that recognizes trademark protection in even unregistered collegiate color schemes when the context of the use includes some other indicia of the school, check out LSU v. Smack Apparel.