Evidence of Acquired Distinctiveness

These lime green building sites caught my eye and jogged my trademark memory. First, the future home of the University of Iowa College of Pharmacy, at beam signing, on May 4, 2018:

Second, the expansion of the Metro Transit headquarters near downtown Minneapolis, on June 12:

Of course, the obviously common element of both building sites, besides my iPhone, is the same lime green sheathing, both also branded with the USG and SECUROCK word trademarks.

Then poof, they’re gone, after being covered by some black-colored sheathing, on August 2, 2018:

What’s my point? Actually, I have a few that immediately come to mind, so bear with me.

First, do you suppose United States Gypsum Company views the lime green color of its gypsum panels to be a trademark? Apparently there are no look-for statements on the product itself:

In looking for look-for ads that might draw attention to this particular shade of green as a brand, Green Means Go (scroll down after linking), is the closest I’ve found.

Let’s just say, USG has been far more effective in owning the color red as a band or stripe applied to packaging for plaster products, and the supporting look-for-like TOP RED word mark.

Still, it’s difficult to tell what USG thinks from the general legend used in its online brochures:

“The trademarks USG, FIRECODE, SECUROCK, IT’S YOUR WORLD. BUILD IT., the USG logo, the design elements and colors, and related marks are trademarks of USG Corporation or its affiliates.”

It’s even harder to tell, despite the “colors” mentioned in the legend above, after searching the USPTO, since USG allowed its Supplemental Registration — for what I’m calling the “lime green sheathing” — to expire without first obtaining, or at least, filing for Principal Registration.

The Supplemental Registration described the mark as “the color yellow green (Pantone 375) as applied to the goods.” Namely, “non-metal water-resistant boards and panels for construction.”

Why let it go?

I’m sure the color green is considered difficult to protect for sustainable building materials, but this color mark was narrowed down to the particular Pantone shade. Perhaps the shade changed?

Typically, a Supplemental Registration is considered valuable to a brand owner, while it works to build the evidence necessary to establish acquired distinctiveness for Principal Registration.

In addition, the Supplemental Registration for Pantone 375 was some indication that the USPTO did not view that shade of green as being functional even for sustainable building materials.

We’ll keep watching to see if Principal Registration is pursued.

In the meantime, let us know if you discover any better look-for advertising for USG’s SECUROCK gypsum panel sheathing. Loyal readers know how important look-for ads are for trademark colors.

Last, the now-you-see-them-now-you-don’t green gypsum panels remind me of the lavender color registration I convinced the USPTO to issue for spray in place insulation in 1994, oh the memories!

Jelly Belly_Template.inddLast week Jelly Belly Candy Company filed a non-traditional trademark application with the USPTO to federally register the shape of its Jelly Belly candies. The claimed mark is drawn like this:

JellyBellyDrawingAnd, described like this: “The mark consists of a candy having a rounded squat kidney-like shape, with one longer side being a continuous arc and the opposite side have a slight depression or dimple in its arc, the center diameter and height of the candy being approximately half its length.”

The application claims use since July 15, 1976, and asserts acquired distinctiveness based on “substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.”

As robust as the Jelly Belly trademark portfolio is shown to be on the USPTO database, the application referenced above surprisingly doesn’t claim prior existing registrations owned by Jelly Belly that appear to reinforce the distinctiveness of the shape. Can you say, look for?

The most obvious ones involve the Jelly Belly logo registrations depicting the candy shape in two dimensions. But, what I was really surprised to find is that Jelly Belly has already run around the non-traditional trademark track a few times with other configuration trademark registrations that reinforce the shape of the Jelly Belly candy on packaging and several other non-candy food products (burger and sandwich buns; meat patties; and pizza):


To the extent the USPTO wants more evidence of acquired distinctiveness than a mere five year substantially exclusive use claim, those little gems ought to help.

Any predictions on how sweet the Jelly Belly configuration trademark application will turn out to be for candy? Stay tuned, the application should be examined in about 3-4 months.

USPTO Drawing for Claimed Mark

As our loyal readers know, we love bringing non-traditional trademarks within your sights for consideration, even if they’re hanging from the ceiling, so here’s another to explore:

Roll & Hill’s Modo Chandelier










The claimed mark is described as “a three-dimensional configuration of a chandelier having three sides and 10 globes. The top rod and the 10 light bulbs shown in broken lines serves to show positioning of the mark and form no part of the mark.”

Here is some information about the designer:

“Jason Miller opened his Brooklyn-based design studio, Roll & Hill, in 2010 to satisfy his desire “to make products that appeal to the American market.” Nestled somewhere between mass production and custom design, Roll & Hill creates lighting fixtures that assume a classic form and style while appealing to a contemporary American sensibility. As Miller sees it, Americans prefer more warmth and visual weight than their European modernist counterparts, who are stylistically rooted in minimalism.”

Any predictions on how this brand new product configuration trademark application will be examined by the USPTO?

I’m thinking it will receive a functionality refusal, a lack of distinctiveness refusal, and a failure to function as a trademark refusal . . . .

Do you think these refusals could be overcome?

If so, how would you respond to them?

Things that are worth talking about need names. Good, distinctive names are best. As you may recall, last year we wrote this about non-verbal logos needing names:

“Marketing types, when brand owners operate in the world of non-verbal logos, isn’t spreading the news by word of mouth more difficult without a word to bring the image to mind, like Nike’s Swoosh, McDonald’s Golden Arches, or Coca-Cola’s Contour Bottle?”

Toyota’s Lexus automobile brand appears to be in agreement — applying this principle to non-traditional configuration trademarks too — because it created an engaging name for the unique automobile grille feature depicted below:

Two months ago Toyota received a federal trademark registration for the above-shown Lexus grille design, dubbed the “spindle” — here is the USPTO drawing for the mark:

Last September Toyota submitted 324 pages of argument and evidence to convince the USPTO that the “spindle grille” design functions as a trademark that has acquired distinctiveness in a very short period of time (seven months between the claimed first use date and the date when evidence of distinctiveness was submitted).

I’m convinced that having an engaging name for the grille design not only went a long way in facilitating word of mouth media buzz about the new look, but it also facilitated the equivalent of look-for advertising (an important element of proof in establishing non-traditional trademark rights). Toyota’s lengthy USPTO submission is replete with dramatic references to the signature “spindle grille” design feature:

“In the Lexus LF-CC’s case, the concept clearly shares some design clues with the LF-LC concept released earlier this year, but in its own unique way.  This is perhaps the boldest interpretation yet of the now signature Lexus spindle grille: Framed by the front edge of the hood, deep lower spoiler, and projecting front fender tips, the grille mesh takes on a pronounced form.”

The Lexus website tells a wonderful story that reinforces the trademark claim in the grille design:


“The bold, 3-D appeal of the grille’s profile is the result of an ongoing design evolution. The upper half of the grille, a trapezoid-like shape, was first introduced in 2005 with the GS model. It was part of Lexus’s attempt to create an individual face for the brand — soon leading to the decision to develop an additional lower grille aperture, forming the resultant spindle grille.”

“‘Everyone at Lexus believed that we should try putting forward one L-finesse design philosophy in a much bolder manner,’ explains Takeshi Tanabe, project manager of the Lexus Design Division. ‘L-finesse consists of the following three elements: seamless anticipation, intriguing excellence and incisive simplicity. They all must be reinforced in our design.'”

“Many drawings and clay models later, the overall design concept was perfected. The upper and lower grille apertures have been merged to form one distinctive shape, with chrome lining decorating the grille’s trim, making a bold visual statement.”


“The vehicle’s finishing traces the contour of the spindle grille to create a unified appearance so distinctive that the origin of the car could not be mistaken for any other brand.”

But, here is where it starts to get a bit ugly, from a trademark perspective anyway:


“Positioned low on the front end, the lower grille aperture gives a strong road presence to the vehicle. Its trapezoid-like shape assists the flow of air into the engine room.”

And, it gets worse, read on — here comes the dreaded F-word, right out of Toyota’s own mouth, or aperture:

“The recognizable geometric grille is a result of its function, too. In particular, the lower half is structured to assist intake airflow, optimizing the temperature of the engine under the hood.”

Was it really necessary to highlight functionality as part of the story? Everyone knows that air passes through a grille, but touting the shape as improving function, not good.

The trademark story was so compelling, and then it all comes to a screeching stop.

Any predictions on whether Toyota will be able to successfully deploy an airbag to prevent a non-traditional trademark casualty here?

Simon Bennett and Rachel Cook Fox Williams LLP

Chocolate giants Nestle and Cadbury have been trading blows in the UK and European Courts for several years. This latest round in front of the UK Court of Appeal related to Cadbury’s application to register the color purple (to be specific Pantone 2685C) for the packaging of specified products, including chocolate in bar and tablet form. Cadbury has been using purple for its packaging since 1914 and the UK trade mark registry had, in granting the application, accepted that the use of the color had acquired distinctiveness.

But this wasn’t the end. Nestle had lost the first two rounds but persevered. Under EU law a single color is, in principle, capable of being registered as a trade mark, whether it is spatially defined or not, although the Courts and the Registry generally will cast a sceptical eye on applications, usually requiring evidence of acquired distinctiveness.

Any trade mark application must be capable of graphic representation and distinguish the goods or services of one undertaking from those of other undertakings. Both of which really go without saying. European cases have built upon these aspects – requiring that marks be “clear, precise, objective and durable” and not relate to a property of the product being registered. All these criteria are intended to stop a color trade mark from allowing one business to obtain an unfair competitive disadvantage over other businesses.

Where did it go wrong for Cadbury? Cadbury’s application had stated that the mark would be applied to the whole visible surface of the packaging or be the predominant color applied to the whole visible surface of the packaging. Sufficiently certain? Cadbury thought so, the Registry thought so (even the guidance issued by the Registry on the description of color marks said that this was acceptable), the High Court thought so but the Appeal Court said no. As the mark was not fixed to specific depictions then it embodied a “multitude of different visual forms” and was too uncertain to be valid. The Court said that to find otherwise would allow Cadbury an unfair competitive advantage.

Stepping back from the Judgment, this does seem a little far fetched. There is no necessity for purple Pantone 2685C to be used for packaging of chocolate and it is difficult to see what competitive advantage Cadbury would in reality gain. However, this Judgment again shows up that color trade marks don’t just face a hard time in the US Courts.

Where do we go from here? Well, what is clear is that Cadbury will try to head to the UK Supreme Court. However, other holders of color trade marks may not be sitting comfortably in their seats. There are many registrations that do not have any depiction or description attached to them – following Cadbury these in theory would be invalid. Equally, while applications for goods could be submitted with pictures of their use, it is far more difficult to see how this would be applied to services.

Therefore, overall, this Judgment is likely to undermine the ability to register single color trade marks in Europe at all and seems a further barrier in the attempts to extend trade mark law to cover more “exotic” aspects of goods and services outside of a word or a logo.