Caution must be exercised in advertising and marketing materials when the brand owner desires ownership of non-traditional trademarks such as product configurations (here and here), trade dress, and single color marks too.
In our ongoing effort to raise the awareness of marketing types to pitfalls that can kill non-traditional trademark rights, a
Last week I had the distinct pleasure of participating in a ninety-minute webinar with my good friend, frequent and eloquent guest-blogger on DuetsBlog — Aaron Keller of Capsule — complete with some friendly banter on the following: "Hot Marketing Topics with Trademark and Legal Implications."
Minnesota Continuing Legal Education has generously provided a link where the webinar can be viewed in its entirety, here.
As
As the court ruled, and repeatedly reminded: "Toilet paper. This case is about toilet paper."
Just last week the United States Court of Appeals for the Seventh Circuit enjoyed applying only a modicum of potty humor while deciding Georgia Pacific Consumer Products LP v. Kimberly-Clark Corporation, a case involving alleged non-traditional trademark rights in Georgia-Pacific’s Quilted Diamond Design embossed on the surface of toilet paper (shown above):
Actually, I think the court could have enjoyed itself even more with this case, since most agree double ply humor is far superior than single ply, especially when it’s on a roll.
Returning to the substance in hand, the Seventh Circuit Court of Appeals agreed with the district court that Georgia-Pacific’s Quilted Diamond Design, found on the surface of Quilted Northern brand toilet paper — and made recognizable from the television commercials with cartoon quilters — "is functional and therefore cannot be protected as a registered trademark."
It is unfortunate for Georgia-Pacific that it was unable to capture both patent protection for a limited term and trademark protection for eternity. They are not necessarily mutually exclusive intellectual property rights, but as this decision painfully demonstrates, if planning, coordination, and great care is not exercised, any hope of eternal trademark protection will be wiped away.
As you may recall, I’ve emphasized the importance of legal and marketing types working together in graceful collaboration to stand a reasonable chance of avoiding the many pitfalls in creating valid and protectable traditional and non-traditional trademark rights (Furminator, Smash Burger, and Bawls Guarana).
But, this decision, rejecting trademark protection for the above-depicted federally-registered design trademarks, highlights the importance of not only having talented legal and marketing types working together for common intellectual property goals, but also, the equally strong need for very close collaboration between patent counsel and trademark counsel.Continue Reading Quilted Toilet Paper Design Flushed As Functional
On April 15, Apple launched a massive suit against Samsung alleging various counts of patent and trademark infringement arising from Samsung’s Galaxy line of products. (The Complaint is here.)
While the lawsuit involved claims of trade dress infringement and patent infringement, I was most interested in the trade dress aspects of the case. Of particular interest
If the "Soup Nazi" were employed as a Trademark Examining Attorney at the USPTO, he might be heard crabbing at the makers of Samuel Adams Boston Lager, were they to attempt to register or claim as a trademark the shape of their "new" beer glass from 2007, now almost four years old: "No trademark
–Susan Perera, Attorney
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I was surprised to see the six registrations pictured above for color marks come out of the USPTO this month. And I bet that most of you can identify the owner of these marks without even checking the registrations. (If you must, registrations: here, here, here, here, here, here, and here.)
Although I wouldn’t consider my childhood one of rural Minnesota, I have still been aware of, and associated, the distinctive green and yellow colors on lawn and tractor equipment with John Deere for as long as I can remember. In fact, I would consider John Deere’s use of color as distinctive as any of the textbook examples (e.g. UPS brown or Owens-Corning pink). Thus, I was quite surprised to see Deere has just now received trademark registrations for some of these color marks.
A little research shows that even the most respected name in lawn and tractor equipment can face an uphill battle to protect its brand. Deere has spent almost 3 decades parsing out the law of color marks and achieving federal registrations for its equipment bearing “John Deere Green” and “John Deere Agricultural Yellow.”
A short summary of Deere color mark history:
t.After the jump a discussion of color trademarks and Deere’s role in the history of trademark color law.
Continue Reading Color Marks & One Company’s Long Haul to Color Mark Protection
On September 23, 2010, Smart Blocks, Inc. filed an action against Lego seeking, among other things, to recover a shipment of Smarck’s Smart Blocks that were being held up at U.S. Customs. For those of us who don’t specialize in U.S. border protection, the Customs Department has the authority to seize goods which are believed to
Now that kids are back to school and summer is coming to a close, this billboard advertisement has disappeared from I-94 just outside of downtown Minneapolis. Before it vanished from the roadside, however, I thought to capture it to tell a little trademark tale here, one from years past, but one that remains relevant, important, and applicable to trademark claims involving the color
Last week, I blogged about a federally-registered emoticon trademark, one that I discovered at 30,000 feet, here. Emoticons as trademarks? Does the idea make you want to roll your eyes like Saturday Night Live’s Kristen Wiig as Aunt Linda? Brace yourself, they appear inclined to stay, for at least a while!
Two weeks ago I couldn’t have told you
More on single color trademarks today. Eighteen months ago, Wolf Appliance obtained a federal trademark registration in connection with "a red knob or knobs" of "domestic gas and electric cooking appliances, namely, ranges, dual-fuel ranges, cooktops, and barbeque grills."
Wolf put its registration to the test a couple of weeks ago in a federal