Remember the days when the color depletion theory justified courts and the U.S. Trademark Office in denying any federal trademark protection for single colors, per se?

This was the status of the trademark law for many decades, at least until the Court of the Appeals for the Federal Circuit disagreed in 1985 (In re Owens Corning Fiberglas Corporation) (pink colored insulation) and the U.S. Supreme Court in 1995 (Qualitex Co. v. Jacobsen Products Co.) (shade of green/gold colored dry cleaning press pads) settled the conflict among the circuits in favor of the Federal Circuit’s ruling in Owens Corning.

The notion that occasional problems don’t justify per se prohibitions was the prevailing argument.

Dilbert’s comic strip from a couple of days ago, appears to advocate a revival of a similar depletion theory, but this time, for product shape and product configuration trademarks, not single colors.

Dilbert.com

Mr. Dilbert, please keep in mind that Qualitex requires a showing of acquired distinctiveness or secondary meaning to obtain exclusive rights in a product shape or configuration trademark, and as TTABlogger John Welch has succinctly concluded:

"It’s danged hard to get a product configuration past the TTAB. There have been a few during the life of this blog (the Walther "James Bond" pistol, the Cartier watch, and the Baldwin key head come to mind), but not many." [link added]

What do you think, are product configuration trademarks out of control, as Dilbert suggests?

–Susan Perera, Attorney

A few weeks ago I wrote about the use of unique colors in trademarks and logos as a potential way to differentiate your brand. Like using distinctive colors as part of a trademark, many companies use distinctive colors on their actual products to act as source identifiers.

While a color trademark for a product does take longer to achieve (such a mark is not inherently distinctive but can achieve trademark registration through a showing of acquired distinctiveness, often by five or more years of continuous use) it can be a great non-verbal brand identifier.

One possible candidate, in my opinion, for such a mark is the Canon L lens. Even as an amateur photographer I run across and readily recognize Canon’s L series of lenses by the red ring on the end of these professional or “luxury” lenses.

Although I was unable to find any evidence that Canon has attempted to register or protect this characteristic, Canon’s website does tout the L series lenses as “distinguished by a bold red ring around the outer barrel.” Not quite blatant “look for” advertising, but I wouldn’t be surprised to see Canon attempt to focus in on trademark protection.

What possible color product trademarks are you noticing?

–Susan Perera, Attorney

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:

  • June 1982 – Deere sought to stop a competitor from using green and yellow on tractor attachments by way of an unfair competition claim. The court held that green and yellow were aesthetically functional and barred any relief.
  • March 1982 – Deere filed an application for a horizontal yellow stripe on a green machine hood or panel. Reg. No. 1,254,339 
  • December 1985 – Deere filed an application for a green vehicle body or frame with yellow wheels. Reg. No. 1,502,103
  • December 1985 – Deere filed an application for the colors bright green and bright yellow in connection with wheeled agricultural lawn and garden machines. Reg. No. 1,503,576
  • March 1988 – Trademark Trial & Appeal Board grants registration for 1985 marks originally refused registration based on aesthetic functionality of marks.
  • February 2004 – Deere sought to stop competition for making yard and garden equipment also bearing green and yellow colors. The court held that Deere could not inhibit the competitor from using the colors green and yellow in the abstract.
  • February 2005 – Deere filed an application for agricultural and lawn tractors consisting of a green vehicle and a yellow seat. Reg. No. 3,132,124
  • 2010 – Deere filed applications for more than a dozen color claims in connection with a variety of machines.

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

Spring is in the air (at least here in Minneapolis) and so are some fresh examples of look-for advertising that actually avoid the use of those straitjacket words.

As we have discussed before, look-for advertising is a powerful tool in developing non-traditional trademark rights in subject matter such as single color marks. Dan discussed it here, in connection with the equivalent of look-for advertising that doesn’t actually use the clunky words "look for," but accomplishes the same purpose, and I previously discussed ad-nauseam the paradox of look-for advertising in connection with protection of non-traditional brands and trademarks, here.

When the would-be non-traditional brand owner is providing services, as opposed to making and selling widgets, it appears that a pattern is developing of highlighting the color of the service provider’s uniform in a tagline or slogan. This may very well be an effective strategy or tool that satisfies both trademark and marketing types. Perhaps the leading example of using words and taglines or slogans to create non-verbal exclusive service mark rights in a single color is UPS’ "What Can Brown Do For You?" tagline.

It appears that Phoenix Sky Harbor International Airport, known as America’s Friendliest Airport, is working toward creating non-traditional service mark rights in the color purple:

They refrain from using the actual words "look-for" in the billboard advertisements, but they are more direct in their website ad copy:

Look for purple the next time you are at the Airport. Sky Harbor Navigators are a group of friendly volunteers whose mission is to make your trip through Sky Harbor Airport faster, easier, and more enjoyable. Navigators provide directions, information, and friendly assistance. Phoenix Sky Harbor International Airport began the Navigator program in November 2000 with the first class of 20 volunteers. Today, there are over 300 Navigators who serve in all three of the Airport’s terminals and in the Rental Car Center.

The purple uniform is synonymous with a smile, a caring heart and a helping hand. Let purple be your guide!

Here is Lowe’s version of "look-for" advertising for the color red that doesn’t use the magic words to promote its gardening center services:

In my experience some marketers bristle at using the magic words "look-for" — "it’s just too clunky."  Done right, with graceful and early collaboration between legal and marketing types, I continue to believe the legal benefits of "look-for" advertising can be obtained without being bound to those magic words.

If you are aware of any other good campaigns or examples that accomplish the goal of communicating to consumers that the brand owner views a single color or some other feature as serving a distinctive non-traditional trademark function without using the words "look-for," please share them here.

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 trademark infringement action, venued in the Western District of Wisconsin, in which it asked the court for immediate injunctive relief to stop arch-rival Viking Range from offering a Red Knob Kit as an accessory for its competing high-end residential cooking ranges (typically equipped with standard black knobs).

Here is a pdf of the decision, granting Wolf’s request for a preliminary injunction. The Wisconsin State Journal reported on the decision. Last December, ApplianceAdvisor.com shared a rather cynical view of Wolf’s single color claim of exclusivity when the lawsuit was first filed.

So, how did Wolf pull it off? Well, here’s the short answer:

  1. Before bringing the lawsuit, Wolf obtained a federal trademark registration for the knobs, entitling it to a presumption of validity when the time came to enforce exclusive rights;
  2. To demonstrate secondary meaning in its red knobs, Wolf made good use of "look for advertising" on its website: "Choose black knobs, or let everyone know it’s a Wolf with our distinctive red knobs;" in catalogs: "Knob appeal. This is, perhaps, the first thing one notices about a Wolf product. The red knobs serve as a reminder of its distinctive nature"; and in advertising: touting the red knobs as "distinctive" and an "exclusive Wolf feature";
  3. Viking apparently stopped selling a range with red knobs back in 1993, and since 2000, Wolf had made "substantially exclusive" use of red knobs on domestic cooking ranges; and
  4. Greatly assisting its secondary meaning claim to the red knobs, Wolf enjoyed the benefit of significant media attention and stories, specifically mentioning Wolf’s "distinctive," "iconic," "classic," "recognizable," "status symbol," "trademark," and "signature" red knobs.

Trademark types, doesn’t the court’s recognition and reliance on this very helpful media attention evidence make you want to collaborate with your favorite PR type the next time your client is pursuing a single color trademark or some other form of non-traditional trademark rights?

With respect to the question of likelihood of confusion, the Court was moved that there could be initial interest confusion through this hypothetical scenario:

"Suppose a potential range customer is at a dinner party and the hostess tells the potential customer how much the hostess enjoys her range. The range happens to be a Wolf range with red knobs. Several weeks or months later, when the potential customer enters a retail store to browse ranges, he or she sees a stainless steel Viking range displayed with red knobs that looks similar to the red-knob range he or she has seen in the past. There are no other ranges displayed with red knobs. The customer does not remember the brand of the hostess’ range, but the customer knows that Viking is a well-known manufacturer in the high-end range market. The red knobs look familiar, so the customer thinks this is the range to which the hostess spoke so highly. . . . Such a situation could qualify as ‘initial interest’ confusion, because defendant would be reaping the benefit of the goodwill that the plaintiff has developed in its mark."

Are you concerned? Do you find this hypothetical scenario plausible?

What remains to be seen is whether the case continues to conclusion for the entry of a permanent injunction after a full trial. While it is true that the grant or denial of a preliminary injunction often results in an amicable settlement of the lawsuit, this case may not end that way.

Even though Viking lost the first round in this bout, it has brought a counterclaim to cancel the red knob trademark registration issued by the U.S. Trademark Office in 2008. Moreover, if Viking determines that it has a commercial and competitive need to offer the Red Knob Kit, it would be rather easy to resume distribution of the kits at a later time, provided it is able to either invalidate the registration or win on the ultimate issue of whether there is a likelihood of confusion in the marketplace for residential cooking ranges. 

To the extent Viking Range decides to continue its defense and counterclaim to invalidate Wolf’s red knob registration, I predict that discovery will vigorously probe functionality as a possible basis for invalidation. A win on functionality would be complete, it would knock out the registration, and make it unnecessary to even consider the likelihood of confusion question of infringement.

In case you’re wondering about scope, it would appear that both commercial ovens and toy ovens having red knobs are outside the scope of Wolf’s registered trademark.

Stay tuned for more on this interesting case.

A couple of weeks ago I posted an Accountemps billboard advertisement that prominently features what appears to be a 3M Post-it brand removable adhesive note, and I asked whether it constitutes fair use, and whether 3M’s permission is necessary to run the advertisement, since 3M owns a federal trademark registration for the color "canary yellow" in connection with these notes.

As the comments to that post reveal, some recognize the billboard image as a 3M Post-it note, and believe permission should be required to run the ad, others were unaware that 3M has a trademark on the color canary yellow, others believe that yellow adhesive notes are generic, and several apparently believe that even if the billboard depicts a 3M canary yellow Post-it note, no permission should be required. In fact, several pointed out that yellow adhesive notes can be obtained from a variety of sources, raising the question of how close those shades of yellow are to 3M’s trademarked canary yellow?

So, just for you, I collected six different pads of yellow-colored adhesive notes and fixed them to a dark green background for a little follow-up quiz. Can you identify any "canary yellow" and name the sources of the six different yellow adhesive notes shown below (answers below the jump)?

Continue Reading Does Your Eye Spy A Canary?