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.

Regardless of whether you’re a fan of “classic rock,” there are some songs that everybody knows. The song Hotel California by the Eagles is one of those songs.  Not everyone likes the Eagles (looking at you, Dude), but most people at least like Hotel California. So it’s no surprise that the Eagles want to prevent others from trying to make money off the name. Most recently, the band filed an opposition with the Trademark Trial and Appeal Board to oppose an application to register the mark HOTEL CALIFORNIA (the pleading is available here).

Eagles Album Cover

 

The application is owned by Hotel California Baja LLC (HCB), who apparently operates a hotel south of the border in the town of Todos Santos in Baja California, Mexico. Notably, HCB’s application does not seek registration in connection with “hotel services.” Instead, HCB appears to be seeking registration of its name to sell a wide variety of merchandise in the U.S., including cosmetics, body care products, eyewear, phone accessories, jewelry, and other products. Although the Eagles do not allege that they own any trademark registrations for the HOTEL CALIFORNIA mark, the band claims common law rights in connection with licensed goods such as clothing, guitar picks, posters, and others back to 1977. Along with the Notice of Opposition, the band filed an application to register the mark on Jan. 18, 2017.

But do the Eagles have trademark rights in the song name? We’ve broached the subject briefly before (here). Generally speaking, use of a word or phrase as a song, album, or movie title does not create trademark rights in that name because consumers aren’t likely to view such use as designating the source of the goods. Instead, consumers are likely to view the use simply as a title of a creative work, or some other expressive content. The issue is similar to merely ornamental refusals, where a name or phrase is used on a shirt, coffee mug, etc. as a design element or as informational phrase (like my BEST BLOGGER EVER mug, or a FEAR THE BROW t-shirt). However, it is possible through licensing the name and/or using the name on other products or services that the mark can come to signify a secondary source. Based on the pleadings, it appears that the Eagles may have a reasonable claim that the HOTEL CALIFORNIA mark, when used on licensed products, serves as a source identifier.

Even then, it’s possible the Eagles could claim that the mark falsely suggests an association with the band. HCB’s website includes the following information as part of its “history”:

During the 1960s and 1970s, the precise details of the hotel’s history are a bit “hazy” – not uncommon for the culture of that particular era in general… There are numerous stories. Whether fact or myth, nobody knows for sure. However, one rumor, fabricated in the 1990’s by someone with no connection to any owners of the hotel, states that the Eagles once owned it. This is unequivocally false. Many of the other legends are less black and white and continue to fascinate the public. Although the present owners of the hotel do not have any affiliation with the Eagles, nor do they promote any association, many visitors are mesmerized by the “coincidences” between the lyrics of the hit song and the physicality of the hotel and its surroundings.

  1. Hotel California is accessed by driving down a long desert highway from either Los Cabos to the south or La Paz to the east
  2. The Mission Church of Pilar is located directly adjacent to the hotel and mission bells are heard daily. Since the Church is so close it sounds like they are almost inside the hotel at times
  3. Countless stories and firsthand witnesses relating to spirits and ghosts in the courtyard of the hotel.
  4. During the ‘Hippie Era” of the 1960s and 1970s, people were know to easily grow their own marijuana in the extremely fertile land of the Todos Santos area and then roll them into “Colitas” which is a Mexican slang term for ‘Joint” or Marijuana cigarette
  5. The simple fact that the Hotel California in Todos Santos was built in 1947 which was of course far before the “Hippie” or “Classic Rock” eras

It certainly seems like the hotel is trying to suggest an association with the band and the song. Accordingly to the Eagles (via Wikipedia), there is no “Hotel California,” as the hotel was more symbolic of Hollywood and L.A. generally. If the Board were to find that the use of the HOTEL CALIFORNIA does create a false association with the band, then the disclaimer is not likely to help. Even if HCB claims that the rumor was started by “someone with no connection to any owners of the hotel.”

HCB’s website does not clarify whether guests are allowed to “check out” or, more importantly, “leave.” Luckily for the applicant though, the Trademark Office does allow them to voluntarily abandon the application.

Here is to sharing a photo I took using my iPad on a recent Canadian fishing trip, and yes, there is a trademark story here to share as well, not just a beautiful sunset positioned behind this ATV tire.

In my purchase of automobile tires over the years, one of the key selling points has been traction — especially with our extreme deep-snow winters here in Minnesota, how well do the tires permit me to handle my car in the snow? Having solid traction in the rain, of course, is important too, and my assumption always (perhaps informed by television ads touting functional benefits) has been that the tread patterns on competing tires are designed for functional performance, not ornamental or aesthetic purposes. A fair assumption, it appears from Techsplanations.

So, I’ve never given much thought to the possibility of tire tread patterns serving as non-traditional trademarks, since functionality is an absolute bar to trademark ownership or protection. But, this photo inspired me to test my per se assumptions about tire tread pattern functionality.

As it turns out, based on my quick search on the USPTO’s patent database, there are a multitude of issued and expired utility patents referencing tire treads, but also finding a large number of design patents claiming the “ornamental design for a tire tread,” challenged my prior assumptions about per se functionality, and opened my eyes to the possibility of non-traditional tire tread trademarks, since design patents often go hand in hand with the potential for trademark protection (as design patents cannot be issued on functional design features).

One of the challenges to gaining the benefit of eternal trademark ownership, registration, and protection for tire tread designs, long-outlasting the expiration of any design patent on the same features, will be convincing the USPTO or a court that the ornamental design for tire tread actually operates as a trademark, to (a) identify someone’s goods, (b) distinguish them from the goods of others, and (c) indicate the source of the goods (even if that source is unknown).

Another challenge will be establishing acquired distinctiveness in the tire tread design — the possibility of an inherently distinctive tire tread design, at least for tires, does not exist since we are operating within the realm of product configuration trademarks as opposed to product packaging and container trademarks. I’m thinking look-for advertising has a role to play here. And, if trademark types and marketing types aren’t working closely together in formulating suitable advertising that isn’t counter-productive from a legal and trademark perspective, disproving the functionality of the design might also be a challenge.

Having said all that, there is at least one example of a tire tread design that enjoys the status of a federally-registered trademark on the Principal Register:

There are several examples of tire tread design segments operating as trademarks for goods other than tires, such as watches, gloves, among others, and Pirelli obtained a multi-class registration a few years back for a tire tread design applied to a variety of goods falling within Int’l Classes 14, 18, and 25.

These non-tire marks enjoy status as inherently distinctive design trademarks that more easily avoid many of the non-traditional trademark challenges listed above.

Yet, Tire Mart’s tire tread designs (here and here), for tires, have been relegated to the Supplemental Register (note the wildly narrow and overly-specific description of the mark in each), so it did overcome any questions about functionality, but apparently Tire Mart was unable to establish acquired distinctiveness in the tread designs. We’ll see if it seeks Principal Register protection after five years of use . . . .

So, I ask again, a little differently though, when will tire tread trademarks gain traction?

–Dan Kelly, Attorney

The U.S. Navy seems to have cleared all necessary hurdles to register the camouflage pattern to the right as a trademark for use in connection with uniforms and fabrics.  Among the many hurdles that the Navy cleared, one is a refusal on the basis of “ornamentation,” or failure of the proposed design to function as a trademark.  The question of whether a proposed mark is merely ornamental strikes at the heart of what a trademark is:  does the proposed mark identify or distinguish a single source for the goods, or would consumers perceive it as “just a design”?  The Navy argued against the ornamentation refusal unsuccessfully, but alternatively provided evidence that the mark had acquired distinctiveness–that through actual use, consumers have come to see the design as identifying a single source.  It did so by submitting, among other evidence, twenty-five declarations from walk-in customers at the Navy Exchange, Naval Station Norfolk, all of which were identical to this one:

This seems like pretty thin evidence on which to establish acquired distinctiveness, but it worked.  Relevant, too, is the fact that the goods description in the applications are limited to goods “. . . to be sold to authorized patrons of the military exchanges pursuant to Armed Services Exchange Regulations.”  The market of relevant customers is therefore quite narrow.

These applications also recently came through a Trademark Trial and Appeal Board ruling that reversed refusals based upon functionality, and that opinion is here.

This case reminds me again of an issue that arises repeatedly in the trademark field.  To the uninitiated, it is easy to look at this mark and think that it is a generic camouflage pattern, but to those in the know, that is, the “relevant market,” this pattern is highly distinctive.  It is like birdwatching.  A lay person can distinguish a relatively small number of different birds, but an ornithologist can distinguish perhaps thousands.  For an example of this level of detail in the camouflage field, see here.

A couple of months ago there was quite a buzz about Holiday Inn’s projected $4 million annual savings by moving to a leaner and greener direction with their adoption of LED lighting on exterior signage. 

As you may recall, back in June we blogged about Holiday Inn’s interesting effort to federally register a pair of non-traditional lighting trademarks, one employing a green-colored lighting scheme and the other employing a blue lighting scheme: 

 

We had noted it would likely take a strong showing of "look for" advertising to overcome the registration refusals initially lodged by the Trademark Office.

Instead of attempting to overcome the registration refusals, however, Holiday Inn apparently has opted for a leaner approach and cost savings on the trademark front too, settling for Supplemental Registrations, a much dimmer form of protection — offering no legal presumptions of validity, ownership, or exclusive right to use.

About the only meaningful benefit of a Supplemental Registration for a service mark is that it blocks and prevents others from obtaining Principal Registration for confusingly similar marks. Here are the official drawings associated with those newly issued Supplemental Registrations:

Mark Image            Mark Image

In addition to amending the applications to seek registration on the Supplemental Register, Holiday Inn tweaked the description of the marks to read as follows (for the green mark):

The mark consists of green lighting formed by four light fixtures placed in a symmetrical fashion near the entryway of the building. One set of two green lights is evenly placed on columns to the right and left of the entryway and direct the green lighting downward thereby casting a green shadow down the length of the column; while the other set of two green lights is evenly placed on the building wall above the entryway and direct the green lighting upwards, casting a green shadow up the length of the wall and roof overhang. The matter shown by the dotted lines is not a part of the mark and serves only to show the position of the mark.

Perhaps Holiday Inn will be back — with a brighter approach down the road — to seek Principal Registration after it believes it has sufficient evidence to establish acquired distinctiveness.

Any thoughts on how long that might take?

The October/November issue of Brand Packaging magazine just hit the streets and I’m deeply honored to say that my piece entitled "A Trademark Touch: Strategies for Owning and Protecting Touchmarks" is this issue’s "cover story" (minus the skull and crossbones).

The digital version can be read here. I hope you find it eye-opening in a tactile kind of way.

By the way, I’d love some feedback on it.

What is your favorite touchmark anyway?

Notice anything special about this pair of photographs featuring two different Holiday Inn front entrances? OK, putting aside that the one on the right — with green lighting — seems to have attracted, at least, a few cars, whereas the “blue light special” on the left appears to stage a full house with virtually every room light on, but ironically it reveals an empty parking lot.

                       

Well, these aren’t ordinary photographs, they are trademark specimens of use; Six Continents Hotels, owner of the Holiday Inn brand, claims that they depict a pair of non-traditional trademarks, having filed them with the U.S. Trademark Office in April 2009, and asserting that use of the “lighting” marks commenced back in January 2008. So, we aren’t talking about the new H logo previously blogged about here or the old Holiday Inn word mark — those are standard and traditional single-letter logo and word trademarks. In case you’re wondering, no sign of any red or yellow lights for Holiday Inn, at least, on the Trademark Office database.

Continue Reading Holiday Inn Lights It Up With a Pair of Non-Traditional Trademarks