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.

Jawbone-UpI’ve been wearing one of these little guys on my wrist for almost a year now. Love it. The personal awareness it raises for me in the areas of sleep, diet, and activity, has been profound.

Can’t tell you how many times folks have asked, “Is that one of those fit bits?” “Nope,” I sometimes say lazily and admittedly without trademark rigor, “it’s a Jawbone, but same idea.”

Lazily because I think I’m tired of reminding folks that fitbit is actually a brand, not a generic, category name for a type of health tracking device, and Jawbone is a major competitor of Fitbit:

fitbitlogo

 

My Jawbone is pretty amazing. I’m probably not using all the bells and whistles available, but it automatically tracks my sleep and steps, and I’m easily able to record what I eat and do.

Meanwhile, back to the trademark point, my absence of trademark rigor might also be explained by my serious question of what the appropriate generic term is for this category of products.

So, taking a stroll through MOA with my daughter revealed this Lululemon sign, and more importantly, the answer to my question: “Fitness tracker” is or should be the category term.

lululemonsign

Yet, only steps ahead, as we passed Brookstone, it became apparent that Fitbit doesn’t appear to fully embrace the “fitness tracker” term, opting more broadly for simply “trackers”:

BrookstoneFitbitDisplayI’m doubting the USPTO will ever allow the term “trackers” as an appropriate generic term, it’s simply too indefinite. It does, however, allow “wearable activity trackers” and that category name was added to the USPTO’s Trademark ID Manual months ago in January 2016.

“Pedometers” has been around as a pre-approved goods identification within the USPTO’s Trademark ID Manual since April 1991, but that description, while accurate as to one feature, it seems under-inclusive overall.

“Wearable activity trackers” seems like a good one, but it hasn’t gotten a lot of traction yet, as it appears there are only 244 pending trademark applications using this term in the description of goods field, including this odd one for GARMARVR, filed by a Chinese company.

Hello, Garmin — another heavy-hitter in the “fitness tracker” or “wearable activity tracker” category — you might want to take note of that recently filed trademark application.

A review of Fitbit’s description of goods in its first trademark registration at the USPTO isn’t much help either, too much of a mouthful, even with the bracketed deletions from the original ID:

“Multifunctional electronic devices for displaying, measuring, and uploading to the Internet information including time, date, [ body and heart rates, global positioning, direction, ] distance, altitude, speed, steps taken [, ] * and * calories burned [, navigational information, weather information, the temperature, wind speed, and the declination of body and heart rates, altitude and speed ].”

Having said that, Fitbit’s most recent application includes a nice attempt at a bite size term capable of being embraced by the general public for this category of goods — “Personal fitness trackers” — but, the Examining Attorney contends even that is too indefinite, so stay tuned.

This whole discussion reminds me of a few points we’ve made multiple times here before, so let’s take a few more steps together down memory lane:

  1. When a new product category is being launched — as we learned from the Rollerblade example (taking an entire decade to come up with “in-line skates”) — creating a great brand name is obviously important, but it is just as important to also create a suitable generic category term for the public to embrace once inevitable competitors appear.
  2. When a brand’s visual identity utilizes and encourages an all lower case style and format, as fitbit does, it might find itself on our Genericide Watch some day.

What do you think? Is fitbit flirting with disaster by using its all lower case branding style?

Also, has it lost an early opportunity to donate a suitable generic category name to the generic public so it doesn’t have to relinquish its trademark for that same purpose?

-Wes Anderson, Attorney

Strolling around the Mall of America last weekend, I was surprised not only by the rather low weekend crowds (everyone must have retreated to their respective lake cabin) but also the brand-new store for Swedish outdoor brand Fjällräven. What with my highly-attenuated Swedish ancestry, I couldn’t help but stop in.

The company’s perhaps best known for its Kånken backpacks – small and prominently-branded, you have almost certainly seen one regardless of where you’re located. They’re also have a line of excellent outdoor products, in the vein of The North Face and Columbia, like the Skogsö jacket.

Processed with VSCOcam with c1 preset
Photograph courtesy of MSPMag.com (http://mspmag.com/Blogs/Alishops/June-2015/Valkommen-to-Minnesota,-Fjallraven/)

What I couldn’t help but notice was Fjällräven’s prominent and frequent use of the Swedish language’s additional three letters – Å, Ä, and Ö. Perhaps you noticed the last paragraph was littered with them. It’s not only because of the Swedish words that litter the catalog (Fjällräven means “Arctic Fox”), but also a marketing technique to emphasize the outdoorsy Swedish-ness of the brand–and accompanying European import prices. So what do these letters have to do with U.S. trademarks? Well, these three letters are right at home in Göteborg, but do they have any place at the United States Patent & Trademark Office, the keeper of English-language marks?

We frequently recommend that trademark owners register their bread-and-butter word marks in a form known as “Standard Characters” — essentially, a format that claims trademark protection for the wording only, without any typeface style or other design elements. This requires entering the words into the PTO’s trademark application, which then converts the text into regular old Times New Roman. This provides the broadest possible protection for a word mark, as it allows the owner to prove up use regardless of the font or design elements that accompany the mark in actual marketplace use.

So if your brand’s logo changes from year to year (I’m looking at you, Facebook), a standard-character registration will do the trick.

But what about foreign words with a wider range of characters at their disposal? Are these nonetheless “standard” and acceptable by the PTO? It turns out that just about any Latin character you’ve accidentially pasted into a Word document is also probably acceptable in a standard-character trademark application. The Trademark Manual of Examining Procedure states that the PTO has its very own “Standard Character Set,” available here, that lists each of the letters and symbols a trademark applicant may use in a standard-character drawing. This includes the three additional Swedish letters as well as many known favorites like Æ, œ, and Ø.

Many applicants, however, (perhaps intentionally) substitute foreign-language characters with its more mundane A-Z analog (for example, MUNCHEN instead of MÜNCHEN or SMORGASBORD instead of SMÖRGÅSBORD). This isn’t necessarily a problem for the trademark applicant but it can raise confusion as to whether the mark is an “Americanized” version of a foreign word or is trying to use the word itself. Luckily, the PTO has provided a way for foreign marks to remain faithful to their true spelling while retaining the broad protection of a standard character registration. Skål!

 –Susan Perera, Attorney

If you have a pup accustomed to gourmet dog treats from the Mall of America you might have an unhappy canine on your hands.  Megamall kiosk owner, Chewzy Dogs, has filed suit after its franchisor and maker of its dog treats abruptly ended its agreement to supply Chewzy Dogs with its trade secret recipe treats.  While Chewzy Dogs alleges its franchisor had agreed to transfer the secret recipe to Chewzy Dogs in exchange for early termination of the agreement, the franchisor has failed to deliver. (For more discussion of this case see Jim Hammerand, who first reported on it over at the Minneapolis/St. Paul Business Journal – thanks Jim!)

This story highlights one method of protecting valuable IP assets – through trade secrets.  A method that may be growing after last week’s changes to the U.S. patent laws.

This is because businesses often have the option of protecting their IP assets in multiple ways.  For example, an invention can be protected as a trade secret or through the use of a patent.  (Ok, so a dog treat recipe might not be patentable… but lets overlook that for the moment).  While a patent’s protection is limited to 20 years from the date of filing the patent, a trade secret (that remains secret) can be protected and profited from indefinitely.  Thus, the license of a trade secret could elicit royalty payments for a longer period of time than a patent.

Interestingly, the recently passed America Invents Act is changing U.S. law to further support the use of trade secrets. Under the current law a party that chose to protect an invention through a trade secret (rather than through a patent) could later be precluded from using the invention if a third party independently developed the same technology and patented it. The justification for this legal outcome was that it incentivized the disclosure of inventions through the patent system, and eventually put the invention into the public domain when the patent expired. Under the new law, trade secret owners are given a “prior use defense” and will not be precluded from using their trade secret if it is developed by a third party.

Does this change substantially impact the cost-benefit analysis of the patent system?  Only time will tell if this change in the law will impact our inventors’ decisions to patent inventions.

–Catlan McCurdy, Attorney

A few weeks ago, I found myself at the Mall of America, or MOA, as Minnesotans fondly refer to the great shopping mecca. Clutching my coffee and walking as briskly as possible to the destinations of my choice, I had one goal in mind, which I infer is the goal of anyone who has been to MOA more than once: get in and get out as fast as possible.

In my typical take-no-prisoners approach to shopping, I moved with lightning speed through the corridors, until a new storefront caught my eye, bringing me to a complete halt. Microsoft had opened a new store, and not only that, but they strategically rented the space directly across the aisle from the Apple store. If the Microsoft store’s proximity to Apple wasn’t interesting enough, the similarity between the interior of the two stores was even more so. Borrowing (some would claim copying) many of the Apple store elements, Microsoft has an answer bar (spinoff of the Genius Bar), an open layout with plenty of wooden tables to test out gadgets, and employees milling about to answer questions. If not for some variances in types of wood, lighting, and of course the obvious differences in trademarks, the stores would be virtually identical. See for yourself:

  

    

Having some knowledge of the amount of work the Apple team has put into their store design and knowing about their recent trademark application for the store design, I wondered what the company would do next. Architectural works were given copyright protection in 1990, but in its infinite wisdom, Congress defined architectural works as “the design of a building,” and neglected to define the term “building” in the Copyright Act. This oversight led to lawsuits such as Yankee Candle Co. v. New England Candle Co. Yankee Candle brought a suit against New England Candle after a New England Candle store opened in a mall with remarkably similar features and design elements as the Yankee Candle store in another mall.

To cut to the chase (warning, spoiler alert) Yankee Candle lost, because the district court said that an internal structure in a mall was not a “building,” and that Yankee Candle was not an “author” because the company had not designed the walls or celings of the internal store. The court did note that a mall itself would count as a building and qualify for copyright protection as an architectural work.

So what will this mean for Apple? The company avoided a Yankee Candle repeat by not filing a copyright suit, and they filed a trademark application instead. Apple could attempt to use this trademark registration, if granted, to sue Microsoft for infringement, or they might just wait it out. Strategically, it might be advantageous for Apple to wait. Reportedly, Microsoft is going way over budget in their attempt to create stores to rival Apple, and the products haven’t been selling as well as predicted, mainly because Microsoft products are available for sale at a variety of retailers. And if my pictures from ten o’clock on a Saturday morning are any indication, the clientele at MOA still seems to be very Mac loyal.

Do you suppose that the Mall of America ever thought about its brand name being associated with a "roof collapse" when it signed on and paid for the naming rights at the aging Mall of America Field, the nearly thirty year old inflatable indoor venue "formerly known as" the Hubert H. Humphrey Metrodome, located in Minneapolis, Minnesota?

Having seen this image, the above question may seem especially relevant now, given the sheer size and importance of the integrity of the roof at the actual Mall of America, a roof so large that:

I’m thinking that the Mall of America has some pretty impressive public relations and PR talent to have most roof collapse news stories referring to the Metrodome name, not Mall of America Field.

Perhaps unintentional subtlety, or a slavish distinction between a roof and field, but it appears the Metrodome name is being linked more closely with the roof collapse, and the Mall of America Field name is being associated with some harmless snow falling on the empty field, with this headline, as a good example: "Metrodome Roof Collapse Leaves Snow on Mall of America Field."

I suspect this is a good example of one time when the Mall of America may be happy its naming right to the Metrodome hasn’t supplanted all use of or reference to the Metrodome:

We certainly can all be happy and thankful that the roof collapse didn’t occur during an event, and that no one was hurt during the collapse of the "Metrodome" roof.

Still, I’m left wondering whether the Vikings will be thankful for the roof collapse, especially if it ends up playing a role in obtaining a new home field for the team.

Losing the ability to host two home games in a disappointing and already losing season may be a very small price to pay for some new digs.

As an attorney, one of my most oft-committed sins against the art of persuasion is forgetting that brevity is key. Get in, deliver your message, and get out.

In contrast, concise delivery of a message is something that good branding and advertising generally excel at. I say "generally," because as I was sitting at/in/on/around/near Mall of America Field at Hubert H. Humphrey Metrodome watching the Minnesota Vikings de-pants the New York Giants to get the #2 Seed in the NFC playoffs, I began to think of other sponsorship mouthfuls that make me question whether any message really gets transferred to the recipient. Given my football frame of mind, the only thing I could think of was the horrendous rebranding of the Chicago Bears as Bears football presented by Bank One.

But, that also get me thinking about some sponsorship "eyefuls" which often leave me confused. For example, there’s this:

(If you prefer live action…)

This…

And this:

While I can’t claim to be an expert on advertising expenditures, it seems to me that budgets may be better spent trying to distinguish yourself, rather becoming another voice in a sea of noise.