‘Tis the Season for billboard ads like this, sorry Nancy.

Anyway, it reminded me of a very early post of mine on touch trademarks, here on DuetsBlog.

That early blog post noted Diageo’s federally-registered purple bag non-traditional trademark, and that a third party had slipped in at the USPTO to federally register a velvet touch mark for wine:

Although Diageo appears to have made no attempt yet to federally register or protect the velvet touch or feel of the Crown Royal pouch bag, American Wholesale Wine & Spirits, Inc., obtained a federal trademark registration toward the end of 2006 for a touch mark comprising “a velvet textured covering on the surface of a bottle of wine.”

[D]uring prosecution of the “velvet touch” trademark application for wine, the Trademark Office noted the sale of velvet bags for use in carrying wine and distilled spirit bottles, particularly the Crown Royal whiskey bottle example. However, convincing the Trademark Office that the “velvety touch” of the Khvanchkara wine bottle was so unique as to be inherently distinctive, American Wholesale successfully argued the difference between the “loose fitting bag” of Crown Royal and others as compared to how Khvanchkara’s “glass bottle is tightly encased within a velvety fabric,” and perhaps most importantly, noted: ” [T]he FEEL of a LIMP bag is quite different from the FEEL of a TURGID velvety surface attached to a wine bottle.”

[T]he Khvanchkara “velvet touch” registration served to bar registration of another company’s leather touch mark for wine, describing the claimed mark as: “[A] leather-like textured covering on the surface of a bottle of wine, brandy or grappa.” Here was the Trademark Office Examining Attorney’s analysis in refusing a leather touch based on the prior velvet touch: “Although the coverings are different materials, both are highly textured and closely cover the glass wine container. The marks are therefore highly similar in appearance . . . . The goods at issue are all wine. Purchasers could mistakenly believe that the goods come from a common source.” (Putting aside the obvious tactile differences between leather and velvet, why is the Examining Attorney comparing the “appearance” of the touch marks, shouldn’t the “texture and feel” be the appropriate point of comparison?)

Quite a bit has happened since that post from July 2009:

  1. The “velvet touch” registration for wine was cancelled under Section 8 of the Lanham Act;
  2. A different wine-maker has now federally-registered a “leather touch” trademark for wine;
  3. A fragrance dispenser with a “pebble-grain” texture and rubberized “soft-touch” feel is now inconstestable;
  4. A German company failed in its attempt to federally-register the tactile surface of a pharmaceutical pump dispenser; and
  5. Diageo apparently remains uninterested in pursuing any touch trademark registrations.

Last, the Bawls Energy Drink trade dress that includes “bumps” on the surface of the blue bottles is now “incontestable,” but functionality never goes away as a possible basis for invalidation.

All in all, it appears that touch marks remain one of the least popular type of non-traditional trademarks, at least for registration purposes — so, what is your favorite touch mark?

 

 

 

 

 

 

 

 

 

Diageo, the Tanqueray brand owner is currently running billboard ads in the Twin Cities as part of its “Tonight We Tanqueray” ad campaign. A couple of years back when the campaign first was announced, Diageo explained it this way:

“One of the world’s most awarded gins, Tanqueray London Dry has just launched a substantial new global campaign ‘Tonight we Tanqueray’, positioning Tanqueray as the drink to set the tone to an evening, inviting consumers to start the night right.”

Did you notice the verbing of the Tanqueray brand and trademark? Nancy Friedman over at Fritinancy did last year. As risky as verbing can be for some brands, as we previously have discussed extensively here, here, here, here, and here, Diageo appears to have gotten this one right, making a number of choices consistent with our earlier checklist for mitigating the risk of genericide and avoiding a complete loss of trademark rights.

Diageo obtained federal registrations for TONIGHT WE TANQUERAY and the stylized version depicted in the ads shown above, two years ago. And, it appears another Tanqueray verbing tagline was federally-registered six years ago for READY TO TANQUERAY? — but unless a Section 8 & 15 Declaration is filed during the currently open grace period, it will die a natural death.

One of the non-legal consequences of using TANQUERAY as a verb in these taglines is that consumers naturally will fill in the blank on what the brand means to them so that they can ascribe meaning to the tagline. I suppose this invitation for engagement could be good or bad, depending on how the brand is perceived. Given the title of this blog post, I have filled in the blank for TANQUERAY to be synonymous with TOAST or CELEBRATE. What does the brand mean to you?

The ads shown above also depict something else we have written extensively about here: non-traditional trademarks. Note the classy and unspoken “look-for advertising” to promote the Tanqueray green/red color trade dress and bottle configuration (both federally-registered decades ago).

Last, for the history buffs out there, note the wonderful archive of product labels that can be obtained from the online records at the USPTO, here the front and back of a nearly century old product label for TANQUERAY gin, showing the USPTO’s mail room stamp from 1917:

Until seeing this specimen I hadn’t appreciated Tanqueray is the surname of the brand’s founder Charles Tanqueray.

It must be a very rare surname as the Diageo marks are the only ones in the entire USPTO database containing the term TANQUERAY. And, none of the registrations rely on Section 2(f) of Lanham Act for purposes of distinctiveness.

Have you ever met someone named Tanqueray?

–Dan Kelly, Attorney

Last year, I commented on the ubiquity of blue ovals in branding.  Today, I’m wondering about the BLACK trend in whiskey branding.  Many whiskey distilleries produce BLACK-branded labels:

Of course, some don’t use the word BLACK, but do use black labels:

Even when these companies do not use the word BLACK in a particular brand, it is not difficult to find them in an Internet search using the terms “black label.”

Remarkably, Diageo actually owns the US registered trademark BLACK LABEL for use in connection with scotch whisky, which it uses in the Johnnie Walker line.  While it seems that none of its whiskey competitors use the word mark BLACK LABEL, many of them freely use black labels (obviously), and consumers search for things like “Maker’s Mark Black Label” all the time.  So, while Diageo “owns” the BLACK LABEL trademark, that trademark is not particularly good at identifying Diageo or Johnnie Walker as the source of the BLACK LABEL whisky.

–Sharon Armstrong, Attorney

Last Friday, a federal court in Kentucky ruled that Fortune Brands, the maker of Maker’s Mark bourbon, enjoys exclusive rights in the dripping wax seal that adorns each bottle of the spirit. (You can read about the case in earlier stages in Dan’s post, here.). Fortune had sued Diageo, another beverage giant and maker of Casa Cuervo Reserva tequila, which also uses a dripping wax seal on its bottles, as shown here:

 

    

Now, legend has it that each Maker’s Mark employee on dipping duty has a different dipping style, such that the trained eye (or bourbon aficionado) can tell which bottle has been dipped by which dipper, based on the way the wax drips down a bottle’s neck. Indeed, due to the fact that the dipping process is not mechanized, no two bottles are alike.

In general, the Trademark Office will not allow registration of more than one mark. TMEP 807.01. The Trademark Office also will not allow registration of what it cleverly calls “phantom” elements in marks – that is, a word, alpha-numeric designation, or other component that is subject to change. TMEP 1214. The reason is to prevent applicants from obtaining the benefits of registration for multiple marks under the guise of one mark. (That would be like having your Manhattan and drinking it too.)

Nonetheless, Maker’s Mark owns a registration for its dripping wax seal; the mark description is “The mark consists of a wax-like coating covering the cap of the bottle and trickling down the neck of the bottle in a freeform irregular pattern” (emphasis added). As a bourbon-drinker myself, I think it’s more than reasonable that consumers associate a dripping wax seal with Maker’s Mark. But given the irregularity of Maker’s Mark’s mark, and the state of the Trademark Rules, should Maker’s Mark have obtained a registration? What do you think?

 

Let’s revisit the topic of non-traditional “touch” trademarks today.

Of all the traditional five human senses (sight, hearing, taste, smell, and touch) and trademarks that can be perceived by one or more of those senses, touch, a/k/a tactile, a/k/a texture trademarks are just about as uncommon as any (taste, perhaps, being the least common). Indeed, back in 2006, Marty Schwimmer from The Trademark Blog correctly noted the dearth of recognized tactile marks. Moreover, despite a 2006 INTA Board of Directors’ Resolution supporting the protection of touch marks, few appear to have reached for or grabbed any such protection (putting aside Kimberly-Clark, already blogged about here).

As arguably one of the most intimate of the senses: ‘Touch is the first sense developed in the womb and the last sense used before death.” Given that and given other unique characteristics of “touch” among the senses, it is a bit surprising that touch marks haven’t been pursued more by marketers looking to create intimate, emotional connections with a brand: “Another distinction of the sense of touch is that it is identified with the real. You can’t believe your eyes, nor your ears, and taste is personal and subjective, but touch is proof.” By the way, since touch/tactile/texture marks are so uncommon, why can’t we agree on what to call them? For what its worth, my vote is to call them “touch” marks since that is the term that names the underlying basic human sense.

Anyway, with that background, as far as I can tell, the one industry that seems to show the most promise or, at least, interest in touch trademarks, is the alcoholic beverages industry, most particularly those companies that focus on selling distilled spirits or wine.

                          

Continue Reading Touch Trademarks and Tactile Brands With Mojo: Feeling the Strength of a Velvet, Turgid, Touch Mark?