This is quite a collection of art pieces, inspired by some pretty recognizable candy bar brands:

The fine print reads: “Each handmade . . . sculpture is a real working whistle!” Parodies, anyone?

Here’s a question, does the functionality of these pieces make them any less expressive as art, any more likely to be confused, any more likely to dilute, any less First Amendment worthy?

A recent Mall of America and Nordstrom shopping trip (with visiting extended family), coupled with some initial moments of admitted boredom, led me to wandering through the shoe department:

Let’s just say, the stroll through the shoe department made it all worthwhile, to capture the above image, showing Louboutin’s latest fashion sense, leading to my mental stroll down memory lane:

Louboutin Red: Blending Into the Background

Louboutin Red-Sole & Surrounding Contrast: An Implied Trademark Limitation

Louboutin: Still Waiting on the Second Circuit Court of Appeals

Louboutin Wins Second Circuit Appeal, Sort Of . . . .

Louboutin & Lessons Learned

That seven month span of blogging was pretty special (February 12, 2012 through September 17, 2012), actually making the case for narrowing Louboutin’s red sole color trademark registration.

In the end, the Second Circuit Court of Appeals ordered the amendment of the red sole color registration to compel the limitation we said was implied: Contrast with the remainder of the shoe.

This, of course, opened the door to requiring that Louboutin tolerate monochrome red shoes, as any red soles on a monochrome red shoe would not possess the necessary constrast to be seen.

Since then, Louboutin has been seeking global protection for his contrasting red-color trademark applied to shoe soles, with a recent win in the EU, however, he’s currently been snagged in India.

Given the striking shoe above, other Louboutin spiked shoes below, and knowing Louboutin’s comfort with non-traditional trademarks, filings at the USPTO seemed plausible, but no, none yet:

Afterall, the spikes appear purely ornamental with the potential for acquired distinctiveness, and no functionality, well, unless this footwear is designed for, shall we say, painful kicks in the pants.

At this point, the Louboutin brand appears synonymous with the red-sole of a woman’s shoe, which probably explains the non-verbal trademark below being applied to other fashion items:

 

 

So, we’ll keep a lookout for new non-traditional trademark filings by Louboutin, while you keep a lookout for any look-for advertising that might set the stage for claimed rights in a spiked mark.

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!

A couple of years ago, our friend John Welch over at the TTABlog reported about a white color trademark that had acquired distinctiveness, according to a rare precedential TTAB decision:

No, that’s not a roll of toilet paper, it’s a preformed gunpowder charge for use in muzzleloading rifles. And the applied-for mark was described as “the color white applied to gunpowder.”

The application was filed almost five years ago. And after multiple responses over the years to various USPTO refusals, in 2015 the Applicant appealed the lack of acquired distinctiveness.

And, as John reported, the TTAB reversed the lack of distinctiveness refusal, instead being persuaded that Applicant’s look-for advertising and other evidence established distinctiveness:

But, that’s not the end of the story. Turns out there is a relevant utility patent, called White Propellant Compositions, which led to the filing of a weighty 50-page Notice of Opposition.

It spells out in dramatic detail the functionality of the color white for the gunpowder charges, among other grounds for registration refusal, and judgment has been entered against Applicant.

In case you’re wondering, yes, we were privileged to light the match on this one. Word to the wise, never forget the timeless ticking time bomb of functionality. It kills trademarks in its tracks.

Kaboom, but judge for yourself whether the claimed mark is looking more like toilet paper now.

Last year we took a whiff of Hasbro’s application to register the smell of its Play-Doh® for “toy modeling compounds.” We didn’t think the application was ripe for a functionality refusal, but a refusal on the ground of a lack of acquired distinctiveness seemed like a certainty.

An Office Action issued on May 26th, 2017, refusing the application on the ground of a lack of acquired distinctiveness. The Office Action also included a number of Requests for Information to determine whether a functionality should issue, too.

For the uninitiated, a trademark must be distinctive in order to be protectable. Because a scent mark cannot be inherently distinctive, an applicant must establish “acquired distinctiveness,” also known as “secondary meaning,” to obtain a registration. Essentially, acquired distinctiveness means that the claimed mark may not have been a symbol of the source of the goods, but because of advertising, commercial success, publicity, etc., the public has come to recognize the claimed mark as a identifying a particular source for the goods.

For attorneys looking for a good playbook as to how to establish acquired distinctiveness, look no further than Hasbro’s Response, filed on November 27. The Response includes pretty much every piece of evidence that you could ask for.

It included the classics:

  • Sales numbers, more than a billion since 2004 in the U.S.
  • Advertising numbers, $77 million since 2004 in the U.S.
  • Longstanding use, since the year 1956
  • Unsolicited media attention referencing Play-Doh’s “unique and distinctive smell” and its “legendary scent”

It included new hits, like screenshots of social media of consumers talking about the memory of the smell of Play-Doh as a child. It also included “blogs written by experienced attorneys who opine on the source-identifying function and registrability of the applied-for mark.” Looking at those articles, you might even recognize a familiar blog post. No need for any thanks, Hasbro. But on a completely unrelated note, this R2-D2 Play-Doh set looks pretty great. Just saying.

The Response also included the obligatory declaration from a Hasbro head honcho to support these claims. The declarations always have at least one over-the-top assertion that you just can’t help but include. Here, it was the reference that Play-Doh for some people is “as identifiable as their mother’s faces.” Might be a bit of a stretch, not that I’m saying I wouldn’t have included it though. For me, the gem is the strange but unforgettable fact that since 1956 more than 950 million pounds of Play-Doh had been sold. If only it had included a reference as to how big that Play-Doh boulder would be.

And yes, the Response even included the coveted, but not always available “look for advertising”:

I’m not entirely convinced this qualifies as “look for advertising” though. It doesn’t direct consumers to the claimed trademark like a “look for the purple cap!” might do. Just looking at the advertising doesn’t tell me what type of smell I’m looking for. It’s close enough though, and the rest of the evidence is pretty compelling.

So, do you think the evidence was successful? Could the examiner smell what Hasbro was cooking? If you guessed yes, then congrats. The application published on February 27. Now all that is left is to see whether any of Hasbro’s competitors file an opposition to the application.

It’s certainly possible that a competitor might feel that providing Hasbro with ownership of the “scent of a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough” might put them at a non-reputational, competitive disadvantage. In theory, it doesn’t seem like granting Hasbro the registration will be problematic, but in practice it will depend upon how broadly Hasbro interprets its rights.

But that may be parting the cart before the horse. Let’s wait and see how the next 35 days go before we start talking enforcement.

It is frequently becoming more and more difficult to remember all the topics we’ve covered here over the last — almost — nine years. A recent Snickers end cap display jogged my memory:

Turns out, eight months into this little adventure we call DuetsBlog, I wrote a blog post called Delicious Trademarks: Candy Bar Cross-Section Trademarks? Then, a year later I wrote this one.

My only friendly amendment to the above point of sale end cap convenience store display is to swap the ™ notice for the coveted (or not so, under certain circumstances) ® registration symbol.

Wow, I have been asleep at the switch on this topic, my sincere apologies dear readers. Nearly a year after my second post on this topic, Mars filed an application to register this trademark:

After a couple rounds of descriptiveness office actions, Mars was able to persuade the Trademark Office that the claimed non-verbal candy bar depiction had acquired distinctiveness.

But, that wasn’t the end of the story, because as is often the case when unusual trademark protection is sought, a direct competitor came knocking, in this case, Hershey Chocolate opposed.

Our friend Marty Schwimmer over at the Trademark Blog was johnny-on-the-spot back in 2013 as Hershey opposed the day before Halloween, while I was distracted with this cheesy topic.

The functionality opposition continued for roughly three years until Hershey was able to extract some pretty sweet concessions from Mars, as revealed in this Consented Withdrawal of Opposition Without Prejudice Contingent Upon Amendment of Application.

So, after a little interpretation and modification by the Board, the registration issued with these express limitations:

“The mark consists of a cross-section of a candy bar showing layers within the candy, namely, a middle light brown layer containing several tan-colored peanut shapes and a bottom tan layer, all surrounded by a brown layer. The mark depicts a distinctive two-dimensional cross-sectional view of a candy bar.”

“No claim is made to the exclusive right to use the following apart from the mark as shown: THE SELECTION OF CANDY BAR INGREDIENTS DEPICTED IN THE MARK OR TO THE CONFIGURATION OF A CANDY BAR CONTAINING THOSE INGREDIENTS, EXCEPT AS DEPICTED IN THE APPLIED-FOR MARK.”

Now, there’s a mouthful. Suddenly, the actual issued trademark registration, doesn’t seem all that non-traditional, non-verbal yes, but clearly a two dimensional slice of, let’s say, non-configuration.

Given that, would you be speechless explaining to a client (anyone other than Hershey) what it can and can’t do in advertising food looking something like that when broken in half?

Another question, why doesn’t the end cap display of the cross-section match the drawing of the registered mark? For what it’s worth, I’m more tempted by the end cap than the registration.

Last question, what about Mars’ representation that the claimed mark “always appears in exactly the same manner when used by Applicant.” Maybe it was true when made, don’t know for sure.

We continue to have Super Bowl LII on our minds here in the Twin Cities. It’s hard to avoid thinking about the upcoming “Big Game” with ads like these blanketing our skyway maze:

Turns out, everyone wants to have a little piece of the action in this upcoming event, even without the formality and cost associated with sponsorship, some call it ambush marketing:

Ambush marketing is not necessarily unlawful. It’s tricky, but I’m guessing the above ad may have cleared a legal review. No obvious conflicts with federally-registered rights, it appears.

Having said that, does this little guy change your view on things? Look familiar? It appears to be the same Wilson NFL Pee Wee Touchdown football without the name brands shown:

I’m thinking the JB Hudson ad employed a little airbrush strategy, or at least some strategic and highly precise palm expansion and placement in hiding the Wilson and NFL logos.

Actually, if so, it’s a good move, but will it be enough — especially given this website link — to avoid the aggressive NFL Super Bowl sponsorship police?

Who owns rights in TOUCHDOWN for footballs, if anyone? Anyone?

Neither Wilson nor the NFL appear to own federally-registered rights in TOUCHDOWN for footballs, but do common law rights exist?

If so, who owns them, the NFL or the maker of the NFL’s official game footballs, Wilson?

Moreover, did legal review consider non-verbal marks? What about the stitching design bordering the football laces? Non-traditional trademark? Functional? If not functional, fair use?

So much to think about as we anxiously await the Big Game in our own chilly backyard . . . .

Back in December we wrote about a trademark infringement case (Weems v. Plews) involving claimed exclusive rights in the color chartreuse as applied to various kinds of hoses.

Since then, Plews has been busy trying to short circuit the case and have the unregistered (common law) trademark infringement claims dismissed, contending Weems did not adequately plead that the color is nonfunctional.

Non-functionality is a required allegation for those claims involving infringement of claimed common law rights — infringement claims based on a Principal Registration, however, don’t require the allegation, since it is believed the USPTO already has determined the question.

Yet, as we have noted before, functionality, if proven, is a ticking time bomb, and it will destroy federally-registered rights no matter how long ago the USPTO issued the registration.

The problem with an early motion to dismiss is that the Court must accept all factual allegations as true and draw all reasonable inferences in favor of the non-moving party: Weems.

So, not surprisingly, the Court denied Plews’ motion to dismiss the common law trademark infringement claims, for now, but I suspect after extensive discovery has been conducted in the case, Plews will attempt a motion for summary judgement to avoid the need for a trial. If so, at that time, the Court will not have to accept as true the allegation of non-functionality, it will have to examine the evidence to see whether functionality remains as a genuine issue for trial.

Meanwhile, Weems has been busy at the USPTO trying to convince the assigned Examining Attorney that the color chartreuse has acquired distinctiveness in garden hoses too, not just the previously federally-registered compressed air hoses. Early in April, Weems filed argument and evidence totaling 153 pages, but no decision there yet.

So, continue to stay tuned, this case shows no sign of trickling to an end any time soon.

As we have discussed previously, trademark protection isn’t an exclusive club for words and pictures. Shapes, sounds, and even the tactile feel of a product can all qualify for trademark protection. And as a recent application from Hasbro shows, even the smell of a trademark might qualify for trademark protection.

The mark set forth in the application is technically the standard character mark “NON-VISUAL PLAY-DOH SCENT MARK.” After an amendment or a refiling though, Hasbro will provide a more detailed description of the mark. Hasbro did provide a miscellaneous statement that describes the scent in more detail as:

A unique scent formed through the combination of a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough.

Play Doh Fragrance

Scent marks are not unheard of, but can be difficult to successfully register. Legend has it that the first scent mark was registered in 1990, following an appeal to the Trademark Trial and Appeal Board. The mark was described as “high impact, fresh, floral fragrance reminiscent of Plumeria blossoms” used for sewing thread and embroidery yarn (Reg. No. 1,639,128). In re Celia, dba Clarke’s Osewez, 17 USPQ2d 1238 (TTAB 1990).

Like other non-traditional trademarks, registration of a scent mark imposes additional hurdles. A scent mark cannot be inherently distinctive and therefore the Applicant must establish that the mark has acquired distinctiveness, as set forth in the Trademark Manual of Examining Procedure 1202.13. Also, the claimed mark cannot be functional. Accordingly, if the smell is the natural result of a manufacturing process or provides non-reputational related advantages over competitive products, then the mark is likely functional and non-registrable.

Other scent marks have been registered, but not many are on the Principal Register. One company owns a registration for a “bubble gum” scent mark for shoes and flip flops (don’t ask me why). Another entity owns a registration for a cherry scent for automobile lubricants.  There are many more scent marks that could not clear the acquired distinctiveness hurdle, but were not deemed functional so were eligible for registration on the Principal Register. This would include Verizon’s “flowery musk scent” for its retail stores or another company’s strawberry-scented toothbrushes.

Will Hasbro will be able to overcome the functionality hurdle? Presumably some of the ingredients are included in order to get the right consistency. However it seems less likely that the cherry and vanilla fragrances are necessary, so my best guess is that functionality won’t prevent registration. Acquired distinctiveness is the bigger hurdle for scent marks, but I can already imagine the smell of Play-Doh just by thinking about it. The mark certainly has recognition. However to be completely honest, I never noticed the “vanilla” or “cherry” overtones. But maybe my toy clay palate isn’t sufficiently advanced to pick up on those notes.

Love the simplicity and honesty of this sign, captured on vacation, in a cozy crepe spot (had to get out of my chair and walk across the dining room to read the smaller print, well worth the steps):

LessisMore

As Seth recently noted, there can be room for improvement when it comes to making signs (we have too), and he further notes, depending on your approach, it is possible and can be best to have more and less (although not of the same things).

As a late and gentle kick-off for the New Year, and after a long weekend of some pretty amazing NFL football games, here are a few additional thoughts about more and less (no particular order):

Less Single Letter Brands, Especially When it Comes to Equis:

MaxDosEquis

(Photo Credit and Hat Tip to Maxwell)

More Showing, Less Telling:

Especially With Effective Non-Verbal Brand Signals:

StarbucksSirenLogo

“Show, don’t tell . . . . the value of design.”

More Naming of Distinctive Product Design Features:

LexusSpindleGrille

Less Unnecessary Touting of Function Over Form

 More Creative Signs That Move Us to Be Better and Engage More

Less Pavlov in Your Hands, Especially During Meals:

Calypso

More Creative Wifi Passwords:

CalypsoWifi

(Calypso Grill Photo Credits and Hat Tip to Maxwell)

Here’s to all of us having more amazing collaborations, connections, and relationships in 2017.