As it turns out, four days after Easter, the USPTO refused registration of the Big Green Egg’s claimed exclusive rights in the shape and color of its popular barbecue smoker and grill:

GreenEggSpecimenAs you will recall, we wrote about this product configuration trademark application, back in December of last year. Here are the challenges raised by the USPTO in refusing registration:

Specimen Refusal: Applicant submitted the above shown photograph of the goods as a specimen of use, but the Examiner noted that the drawing of the mark showed a smooth surface, lacking the obvious dimples, so overcoming the refusal will likely require a new drawing so it matches the use shown in the specimen; this will then raise the question of whether the dimples can be claimed as part of the non-traditional trademark.

The Examiner is inquiring about whether the dimples have a functional purpose, and if so, she is directing the Applicant to show them in dotted lines to make clear they are not claimed as part of the mark to be registered. If the Applicant attempts to claim them as part of the applied-for mark, showing them in solid lines, the next question will likely be whether that change constitutes a material alteration, requiring a new application.

Shape of Goods Incapable of Serving as Trademark: The Examiner indicated “the shape of the applicant’s goods is nondistinctive and incapable of functioning as a mark,” relying on “printouts from competitors’ websites and the patent applications . . .  which demonstrate that the shape of the applicant’s goods is so commonly used in the industry that consumers are accustomed to seeing such elements on similar products.”

Color Green May Be Capable of Trademark Ownership: Here the Examiner seemed to direct Applicant’s next steps, noting: “The color green as applied to the goods does not appear to have any functional advantage and does not appear to be commonly used by the applicant’s competitors. Therefore, if the applicant limits the mark to just the color green applied to the goods, the applicant may be able to establish that this the product design has acquired distinctiveness or the applicant may be able to register the product design on the Supplemental Register.”

Shape of Goods is Functional and Must Not Be Included as Part of Claimed Trademark: This portion of the refusal relates back to the incapability refusal discussed above, but the Examiner labels the shape of the Big Green Egg with the dreaded F-Word: “[T]he shape of the goods is functional.” Then, the Examiner goes on to discuss the Morton-Norwich factors (that we have discussed numerous times before):

The existence of a utility patent that discloses the utilitarian advantages of the product or packaging design sought to be registered:

The Examiner wrote: “Although there does not appear to be an issued utility patent that describes the functional advantages of the shape of the applicant’s goods, there are several published patent applications that discuss the functional advantages of the shape of the applicant’s goods.”

Advertising by the applicant that touts the utilitarian advantages of the design:

The Examiner directed Applicant’s attention “to excerpts from its website, which discuss the advantages of the shape of the applicant’s goods,” but she did not provide quotations of the concerning language.

Facts pertaining to the availability of alternative designs:

As to the alternative design factor, the Examiner wrote: “The applicant’s goods are a type of grill known as a Komado grill. For this type of grill, the shape used by the applicant is one of a limited number of shapes, and based on the attached examples of competitor use appears to be the preferred shape for this type of grill.”

Facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture:

The Examiner’s discussion of this factor seemed confused: “The . . . patent applications and other evidence indicate that the style of grill shown in the applicant’s mark is expensive (to purchase). Thus, it seems likely it is also expensive to manufacture. As a result, all of the above factors favor a finding that the shape of the goods is functional and unregistrable.” Generally, this factor should only disfavor Applicants who have chosen designs that result from the most simple or inexpensive methods of manufacture; this appears not to be the case here.

Last, the Examiner issued an Informational Requirement, basically a set of very pointed questions and requests for advertising, promotional materials, and explanatory materials, that could lead to additional grounds for further functionality refusals, depending on what the materials show and the answers to the questions posed.

So, what do you think, is the shape of The Big Green Egg really nothing more than a Kamodo style grill, or does it have noticeable and distinguishing elements that might permit the particular shape of The Big Green Egg to be owned as part of the claimed non-traditional trademark?

If, in the end, The Big Green Egg is not allowed to claim the shape, and the color green is all that is left, is that enough to support registration and exclusive ownership?

Stay tuned, as we continue to monitor The Big Green Egg’s hunt for non-traditional trademark protection and registration.

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:

“A DASHING VISUAL FEATURE INTRODUCED WITH THE CURRENT GENERATION GS IN 2011, THE SPINDLE GRILLE HAS HERALDED A NEW CHAPTER FOR LEXUS AS A PREMIER AUTOMOTIVE BRAND”

“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.”

“GRILLE TRIM CHROME FINISHING”

“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:

“LOWER GRILLE APERTURE”

“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?

What an honor it was to be part of the 2013 Dieline Package Design conference at HOW Design Live, last week in San Francisco, thanks again for the opportunity Andrew!

The Editor’s Choice winner for the 2013 Dieline Package Design Awards is Method’s visually stunning Ocean Plastic Dish and Hand soap container, shown to the left, and discussed this way:

“The more ocean plastic we’re able to reuse means less demand for virgin materials and a cleaner planet. We may never be able to return the ocean to its pristine state, but we can raise awareness of the importance of using the plastic that’s already here. The ocean plastic in this packaging was hand-collected on the beaches of Hawaii by method employees and local Hawaiian volunteer groups. The unique gray color is a departure from method’s usual bright pops of color.”

“The gray color is what resulted naturally after the plastic chopping, washing and pelletizing process and our creative direction was inspired by its organic feel. The inspiration for the ridges along the side of the bottle came from a sea urchin.”

Happily, no D-Words or F-Words here to explain the unique look, shape, and features of this product container, so there is serious potential for inherently distinctive non-traditional trademark protection, although I could find no pending applications filed by Method, just this one (with no ridges).

I love the choice and use of the word “inspiration” to explain the designed ridges on the bottle — in my opinion, it is very nicely suggestive (not descriptive) of the ocean plastic material making up the container, by adopting a creative interpretation of an important and protective feature of sea urchins in the package design.

Although the color of the container is probably not subject to trademark protection because it is apparently the natural result of the manufacturing process, the look, feel, and shape of the container have great potential, since those features haven’t been verbally saddled with the “grip-able” or “ergonomic” functional baggage that others unfortunately have stumbled in using to explain their product or container features.

Last, it was a distinct pleasure to present again with guest blogger Aaron Keller of Capsule on the topic of The Intersection of Design and the Law. As always, it was a lot of fun, so if you’d like a private showing of that discussion, please let us know, we’ll consider taking it on the road again, for the right crowd.