Two businesses in Indiana are squaring off in a trademark lawsuit over the right to use the term Square Donuts for…well, square-shaped donuts.

Back in 2005, Square Donuts, a cafe with four locations in Indiana, sent a letter to Family Express (a convenience store chain with 70 locations in Indiana), demanding that Family Express cease the use of the term “Square Donuts” for the square-shaped donuts sold in its stores.

The parties wrangled for years about a potential co-existence agreement, in which Square Donuts would allow Family Express to use the “square donuts” term, but they never reached an agreement.

Later, Square Donuts filed a federal trademark application for the word mark SQUARE DONUTS for “cafe services,” claiming use since 1968, and obtained registration in 2013. (Reg. No. 4341135). The USPTO initially refused registration based on mere descriptiveness, but the refusal was overcome when Square Donuts claimed acquired distinctiveness (secondary meaning based on long and substantially exclusive use).

A couple years ago, Family Express filed a preemptive, declaratory-judgment complaint in Indiana federal court, on several grounds–including that the term “square donuts” is generic, and therefore, Square Donuts’s trademark registration No. 4341135 should be cancelled, and Family Express has the right to use that generic term. Additionally, Family Express filed last year a petition for cancellation before the Trademark Trial and Appeal Board (TTAB), also claiming this registration should be cancelled based on genericness. (The TTAB proceeding is currently suspended based on the federal court action.)

The genericness claim is interesting for a couple reasons. First, in both its federal court complaint, and the TTAB petition, Family Express claims the SQUARE DONUTS registration should be cancelled because the term “square donuts” has become “generic…for square-shaped donuts.” But as discussed in previous posts, the genericness inquiry must be tied to the particular goods or services for which the trademark rights are claimed and registered. Magic Wand Inc. v. RDB Inc., 19 USPQ2d 1551, 1553 (Fed. Cir. 1991). Square Donuts registered and claims rights to the mark SQUARE DONUTS for its “cafe services,” particularly as the name of its cafe.

Indeed, in the Board’s order suspending the TTAB proceeding, the Board left a footnote that was critical of Family Express’s genericness claim, and suggested it must be re-pleaded in an amended petition, if the suspension is lifted, because the genericness inquiry must be “based on the recited services in the registration at issue,” namely cafe services, not “square-shaped donuts.” However, as also correctly noted by the Board, a term can be generic for a genus of services, such as cafe services, if the relevant public understands the term to refer to a key or featured good that characterizes that genus of services (e.g., serving square-shaped donuts).  In re Cordua Rests., Inc., 118 USPQ2d 1632, 1637 (Fed. Cir. 2016).

Therefore, the appropriate genericness inquiry here — which will be more difficult for Family Express to establish — is whether the term “square donuts” has become generic for the genus of “cafe services.” In other words, do the relevant consumers refer generally to the genus of cafes (even cafes that feature square donuts), as “square donuts”?

Second, another interesting point is that Family Express still appears to be claiming trademark rights to “Square Donuts” as a brand for their donuts, while arguing the term is generic at the same time. The Family Express website, “Our Brands,” prominently features a section discussing their “Square Donuts” brand, with an introductory paragraph about “our proprietary brands.” This cuts against their argument that the term is generic, meaning it’s not a “brand,” and no party can claim exclusive, “proprietary” rights. I wonder if that website will show up as an exhibit at some point.

What do you think? Will Family Express be able to establish genericness here? Stay tuned for further updates on this dispute.



The above advertising billboard is plastered all over the Twin Cities at the moment, and it got me thinking, so here I am, once again, writing about Coke Zero, remember this can?

Coke obtained a favorable decision from the TTAB early last year, ruling that ZERO is not generic for a soft drink category, instead it is descriptive and Coke has secondary meaning in it.

So, why on earth has Coke positioned SUGAR immediately next to the word ZERO beneath the Coca-Cola script in widespread billboard advertising and packaging?

Putting the key trademark issue aside, it doesn’t even look like there is a good business case for it?

Had the above billboard advertisement and depicted bottle been part of the TTAB case decided last year, instead of specimens like the above can, seems probable we’d have seen a different result.

Has Coke forgotten that like functionality for non-traditional trademarks, genericness can be raised as a validity challenge for word marks, at any time?

Coke Zero, welcome to the Genericide Watch.

-Wes Anderson, Attorney

No company’s branding strategy is studied more meticulously than Apple, Inc.’s — and of late, Apple has taken a turn for the descriptive with its various operating systems.

Every company wants its brands to be distinctive — and the arbitrary APPLE mark is among the most well-known. But its new operating system naming strategy has relied on descriptive (if not generic) wording.

From a naming standpoint, everything started out well with the Macintosh Operating System — or Mac OS (first coined in 1996) for its various desktop and portable computers, Macintosh and “Mac” already being famous trademarks. Then, when iPhone OS became “iOS” in 2010, it took the “iDevice” naming convention from the iMac, iBook, iPod, iPhone, and iPad and brought it to software. But Apple didn’t use this name without conflict — in fact, it licenses the iOS trademark from Cisco.

From there, Apple has continued to enter new markets — including smartwatches (with the Apple Watch) and set-top streaming devices (with the Apple TV). With them, new operating systems followed, this time named simply “watchOS” and “tvOS.”

Screen Shot 2016-04-22 at 7.25.35 AM

Perhaps these descriptive names were intended to ward off conflict with any other Silicon Valley brand owners, but Apple has put a different spin on this in public. Phil Schiller, senior vice president of worldwide marketing at Apple, said the following in a Q&A last year (bolding added for emphasis):

Gruber: watchOS, with a lower-case “w”. Are you trying to kill me?


Schiller: [laughs] It’s, um… I think it works really well. I think it’s nice, it’s ownable, it’s special

I think, you’ll see. Give us time, we’ve been through many fun naming things. This is an easy one. There have been many fun naming things through the years — some very emotional, some very easy — and most of the time, when all’s said and done, you look back years later, people say “Yeah, you guys were right, it all made sense together.”

So I think we’re doing the right thing.

It’s not clear whether Schiller is referring to the use of a lower-case first letter or the entire mark, but the question still stands: is “watchOS” truly an ownable mark? No, or at least not yet.

Apple has a Supplemental Register registration for WATCHOS, which is the “junior” register for marks that are capable of trademark significance, but are merely descriptive at the time of registration. Apple’s also filed two pending applications for the same mark on the Principal Register (in classes 9 and 42), but each just received office actions earlier this week refusing registration on grounds of mere descriptiveness.

It’s clear WATCH OS is descriptive wording — it’s arguably even generic in the context of smartwatch operating systems. To overcome these refusals, Apple would either need to settle for the Supplemental Register again or prove to the Trademark Office that, just a year since its first use, “WATCHOS” has acquired secondary meaning as a brand name to the public.

Apple, in short, has yet to really prove that watchOS is truly “ownable.” We’ll see if Apple is able to put its enormous weight and brand equity behind WATCHOS and obtain Principal Register registrations. For the rest of us, it’s important to remember what’s ownable is not necessarily available, and what’s available is not necessarily ownable.


-Wes Anderson, Attorney

Here’s another fascinating pending application for the file of non-traditional product configuration marks — this time, an application from Sony for the configuration of an all-in-one lens/camera:Sony Lens

The drawing may look like an ordinary camera lens – cylindrical, familiar, and generally seen affixed to a fancy DSLR. But the application identifies “Digital cameras” in Class 9, not camera lenses. And the mark description reads: “The mark consists of the three dimensional configuration of a digital camera.” That’s no mistake — by my estimation, this drawing doesn’t depict an everyday lens, but Sony’s QX100 camera, a so-called “lens-style” camera that integrates a Carl Zeiss lens and digital sensor into one compact package. It has no LCD screen, viewfinder, our readout of its own — the camera is operated exclusively via a smartphone. It’s certainly a novel step in the evolution of digital photography, where smartphones have skyrocketed in popularity and have all but replaced the entry-level point-and-shoot cameras of the 2000s.


As so many other companies do with new products in the technology sector, Sony has sought to protect the uniqueness of its product through intellectual property. But trademark protection can be especially tricky for product configurations — and here, Sony has sought to protect the entirety of its product by filing its application with the above drawing. The lack of any dotted lines indicates a claim for trademark protection for the entire product – the lens opening, the shutter release, the on/off switch, the zoom slider, and the focus ring are all claimed as part of the mark, at least according to the drawing.

The PTO subsequently issued an office action for the mark (and later another office action continuing many of the cited issues). Aside from informalities regarding the identified goods, it has all the bells and whistles you could ask for in a product configuration refusal, and sheds some additional light on pitfalls to avoid in filing configuration trademark applications:

  • Drawing. The PTO quickly cited the dearth of dotted lines in the above drawing and requested that Sony provide an amended drawing that “features functional matter dotted out, such as the lens opening, the shutter, the buttons, the charge port.” This in and of itself seems extremely problematic for purposes of this application – nearly every groove, circle, and crevice on the lens has a function. Once it’s all dotted out, that leaves…a cylinder?
  • Nondistinctive Product Design.  As with every product design trademark, it is required to show some modicum of acquired distinctiveness to obtain registration on the Principal Register. According to the examiner, “consumers are aware that such designs are intended to render the goods more useful or appealing rather than identify their source.” Sony attempted to submit evidence in a response to support acquired distinctiveness under Section 2(f), consisting of advertising materials, sales figures, and a declaration. The PTO quickly deemed this evidence insufficient, stating that “applicant’s evidence shows nothing more than that the mark is the shape of the camera, which may have become a generic shape for cameras.” The examiner also sleuthed out a competing “lens-style” camera sold by Kodak to support its refusal.
  • Functionality / Request for Information. Finally, and perhaps most damningly, the examining attorney issued an advisory suggesting that the mark — or what’s left of it once an amended drawing is provided — may consist of unregistrable, functional matter (which we cover in spades on this blog). It’s only an advisory for now, because the office actions also contain a request for information. These requests are hardly benign – they mirror the Morton-Norwich factors for determining functionality. It’s akin to the police asking “Do you know how fast you were going?”

(1)       A written statement as to whether the applied-for mark, or any feature(s) thereof, is or has been the subject of a design or utility patent or patent application, including expired patents and abandoned patent applications. Applicant must also provide copies of the patent and/or patent application documentation.

(2)       Advertising, promotional, and/or explanatory materials concerning the applied-for configuration mark, particularly materials specifically related to the design feature(s) embodied in the applied-for mark.

(3)       A written explanation and any evidence as to whether there are alternative designs available for the feature(s) embodied in the applied-for mark, and whether such alternative designs are equally efficient and/or competitive. Applicant must also provide a written explanation and any documentation concerning similar designs used by competitors.

(4)       A written statement as to whether the product design or packaging design at issue results from a comparatively simple or inexpensive method of manufacture in relation to alternative designs for the product/container. Applicant must also provide information regarding the method and/or cost of manufacture relating to applicant’s goods.

(5)       Any other evidence that applicant considers relevant to the registrability of the applied-for configuration mark.

(6)       A written explanation of what, specifically, applicant has applied to trademark.

Sony’s first office action response addressed only the Section 2(f) issue and amended the identification of goods. And, perhaps charitably, the examining attorney continued the other refusals as non-final, rather than heading straight for a final office action. I’d keep an eye on this one for potentially some novel arguments in Sony’s favor, but it appears to be a tough road ahead.

So what do you think? Does Sony have a pathway to registration, or has the public already been overexposed to generic, functional cylinder-style cameras?

[Apologies for that last pun.]

Welcome to yet another edition of non-traditional trademarks, but instead of discussing brown paper bags for chips as trademarks, today we’re focusing on a U.S. trademark registration that surprisingly issued just a few weeks ago — a net bag package design for holding toy marbles:

ORC001As shown above, the claimed mark “consists of the three-dimensional configuration of packaging for marbles comprising the combination of a square round-cornered placard with a net bag retaining marbles, wherein the top of the net bag extends through a central hold in the bottom of the placard to secure the bag such that it hangs down from the placard in the shape of a pouch and wherein the square placard has a border extending around the perimeter of the placard.”

Although it is possible for some package designs to be so unusual that they are immediately protectable and inherently distinctive, the USPTO determined this one required evidence of acquired distinctiveness. What surprised me is the meager evidence satisfying the USPTO that the claimed package design had acquired distinctiveness: a five year declaration signed by counsel, a single customer declaration and a single distributor declaration.

The application drew five office actions refusing registration, but in the end, the USPTO registered the package design as a trademark, more than three years after the original filing date. The first and second office actions refused registration based on mere informalities. The third office action refused registration on substantive grounds, the usual suspects — failure to function as a mark, and functionality, but the Applicant overcame them rather easily with mere argument. The fourth office action invited the Applicant to show acquired distinctiveness. The fifth office action accepted the claim of acquired distinctiveness and raised more informalities, and the Applicant overcame them with an amended drawing — the one shown above.

Here is what the packaging looks like, as it would appear in a store, according to the specimen of use submitted by the claimed trademark owner Megafun USA:


Do you really believe that it doesn’t matter what appears on the placard portion of the design? Is the placard and net combination really enough to perform as a trademark to identify, distinguish, and indicate source, without more? What if Mattel decided to sell marbles with the same package design, except it used its own artwork, name, and logo on the placard portion of the package design? Likelihood of confusion? Seems doubtful, at least to me, do you agree?

In the end, while the net bag packaging design might do a great job of preventing the loss of one’s physical and tangible marbles, my primary concern relates to the far more easily lost metaphorical and mental marbles in trying to comprehend how this registration issued based on the miniature record evidence of acquired distinctiveness.

Coca-Cola just announced it is introducing Coke Zero in India, which will make it the sub-brand’s 149th market in the world, a truly remarkable reach.

As the popular Coke Zero brand is approaching its tenth anniversary in the U.S., it seems like a good time to explore Coca-Cola’s trademark position in COKE ZERO and COCA-COLA ZERO here in the U.S., especially given the news last week that the beverage giant escaped a trademark infringement suit over the marks in the Northern District of Illinois.

After looking into that case, I was surprised to see, as long as Coke Zero has been on the market  — none of the ZERO marks sought by Coca Cola have registered, all seventeen remain pending in the U.S., including COKE ZERO, COCA-COLA ZERO, SPRITE ZERO, PIBB ZERO, VAULT ZERO, and POWERADE ZERO, among others.

In fact, the series of ZERO marks has been the subject of at least two very large and significant consolidated trademark oppositions at the TTAB of the USPTO, since 2007, and the one brought by Royal Crown Company (RC) remains active — in fact, the case was fully briefed this past summer and Coca-Cola requested just last month that the Board schedule final oral argument in the case. In the Royal Crown opposition, RC contends that Coca-Cola must disclaim any exclusive rights in the term ZERO, as that term is either generic for zero calorie beverages or merely descriptive without any secondary meaning or acquired distinctiveness.

The other consolidated opposition was brought by AMBEV, back in 2007, also asserting mere descriptiveness and lack of secondary meaning, but AMBEV’s consolidated opposition was dismissed just over two years ago by the TTAB, as the Board was convinced at that time, Coca-Cola had established acquired distinctiveness in its ZERO marks based on the factual record developed in that case.

So, if ZERO marks can be owned in connection with beverages, how did Coca-Cola escape liability in the trademark infringement suit in the Northern District of Illinois last week? The plaintiff in that case had asserted exclusive common law rights in NATURALLY ZERO for spring water, but it admitted to gross sales of $150,000 between 1998 and 2004, no production or sales after 2004, and no attempt to resume sales until 2010, well after Coca-Cola had launched its ZERO series of beverage products in the U.S.

Moreover, the plaintiff there had admitted NATURALLY ZERO communicated “no calories, you know, a drink about nothing . . . .” As a result, the court granted summary judgment to Coca-Cola, ruling as a matter of law that the plaintiff’s merely descriptive mark had not acquired distinctiveness, and even if it had, the claimed NATURALLY ZERO mark had been abandoned.

Coca-Cola has been careful to straddle the fine lines of trademark protectability, since it has found itself on both sides of trademark disputes. Taking the position that ZERO is descriptive permitted Coke to defend the above-referenced trademark infringement challenge, while at the same time maintain that Coca-Cola’s juggernaut of marketing, sales and promotion established that is has acquired distinctiveness in its ZERO marks.

Yet, it remains to be seen whether Coca-Cola will prevail in the consolidated opposition brought by Royal Crown Company, perhaps its most significant challenge to date regarding the ZERO series of marks. I’ll have to say, RC’s Trial Brief makes out a pretty strong case for finding ZERO generic for zero calorie beverages. In other words, is ZERO like LIGHT for beer, STONE OVEN for pizza — basically denoting the name of a product category instead of a source identifier?

In the end, given the Board’s recent genericness rulings regarding Subway’s claimed FOOTLONG mark, and Frito-Lay’s successful PRETZEL CRISPS challenge, it will be worth watching to see whether the Board finds that “ZERO” primarily means Coke or just a soft drink having “no calories, you know, a drink about nothing . . . .”

The Sports Bar in the Mirage Resort & Casino, located in Las Vegas, Nevada, is currently sporting a pretty interesting collection of tap beers, from left to right: Bud Light, Goose Island Honker’s Ale, Stella Artois, Heineken, Dos Equis, Pacifico, Shock Top, Newcastle, Samuel Adams, Budweiser, Goose Island Indian Pale Ale, and Michelob Ultra.

What really caught my attention is the three-dimensional trade dress and branding collage of competitive beer tap handles a/k/a beer tappers — on a rainforest background, hence the jungle.

These branded beer tap handles no doubt qualify as point of sale devices, linking the appearance of the handles to the beer that flows from the attached taps. But, could you identify the beer brands without the names on the handles? Is there an opportunity for non-verbal branding here? Goose Island seems to think so.

By the way, did you know that there are design firms that specialize in creating exceedingly unique tap handles? It actually makes sense. Apparently it is common knowledge in the industry that “great tap handles pour more beer,” as noted by Tap Handles, located in Seattle. So, there is a business case for these grandiose designs.

This business case opens the door to non-traditional trademark protection. And, most impressive from a non-traditional trademark perspective is the pair of Goose Island beer tap handles. Impressive because all of the other beer brands rely on verbal branding elements to identify, distinguish and indicate source, but Goose Island’s white goose with a yellow beak stands on its own without any easily visible verbal branding reinforcement.

The confidence in this non-verbal branding decision reminds me of Nike’s Swoosh, Starbuck’s Siren, McDonald’s Golden Arches, and Shell Oil’s Shell Logo — examples where no words are necessary to function as a trademark to signify the underlying brand.

So, where is the potential bungle in this jungle of beer tappers? Maybe it isn’t an outright mistake as much as a missed opportunity. And, maybe a change in trademark law has opened a new likelihood of pitfalls and mistakes for the uninformed.

As to the missed opportunity, for some reason, the three-dimensional non-verbal design is actually not registered for beer. This is curious, as Goose Island is a Fulton Street Brewery brand, owned by Anheuser-Busch, a company quite familiar with protecting brands in connection with the consumable product known as beer.

The Goose Island beer tap handle instead is federally-registered as a product configuration trademark for “hand tools, namely beer taps.” The registration utilizes this description of the claimed mark: “A configuration of a beer tap handle in the form of a goose head and neck with an oval design at neck level. The mark is lined for the colors yellow and green.” And, another nearly identical registration exists too, with a filing date one day later and a registration date about three months later — this one appears to be silent as to any written description of the claimed mark.

Instead of duplicating protection for the products known as beer tappers themselves, a non-traditional trademark registration protecting beer would appear to be warranted. While I recognize that there is value in protecting the shape and appearance of the beer tapper itself, because there appears to quite a market for beer tap handles, and they readily can be imitated, copied, counterfeited, bought and sold online, let’s face it, revenue and profits from the product known as beer has to exceed the same from the beer tap handles, right?

Now, as to the law change, for studious readers who noticed that the pair of non-traditional goose head product configuration trademarks that are federally-registered for beer tap handles (not beer) were not registered under Section 2(f) of the Lanham Act (meaning that no proof of acquired distinctiveness was required by the USPTO to achieve registration), the explanation must lie in the fact that both registrations issued months before the U.S. Supreme Court’s landmark decision in Wal-Mart Stores, Inc. v. Samara Brothers, Inc.

Recall that back in March 2000 in Wal-Mart Stores, the Supreme Court drew a black and white line between non-traditional trademark protection for product configurations (which now must have proof of acquired distinctiveness or secondary meaning to enjoy protection or registration) and non-traditional trademark protection for product packaging or trade dress (which may forego proof of acquired distinctiveness so long as the claimed non-traditional trademark is sufficiently unique to qualify as being inherently distinctive).

What does all this mean? Well, it ought to be — and it does appear to be — easier to obtain protection and registration of beer tap handle designs as point of sale devices for beer. When the product in question is beer flowing from a tap, the handle design does not constitute a product configuration of the goods, so the limiting rule in Wal-Mart Stores does not apply. On the other hand, when the product in question is the beer tap handle itself, now the limiting rule in Wal-Mart Stores does apply because the design represents the actual configuration of the product, making evidence of acquired distinctiveness required.

So, it seems to me, the best way to protect exclusivity in the appearance of the tap handle design before trademark distinctiveness can be acquired for the handles is to obtain a non-traditional trademark registration for the tap handle design covering beer, and then also consider a copyright registration and/or design patent for protection of the handles themselves, agree?

Last week, Works Design Group highlighted five vodka bottle designs to love. No doubt, a nice collection of very creative work. This stacked ice cube design is my favorite from their set:

The skull bottle design shown below also made Works’ top five, and it is certainly eye-popping. It was created by John Alexander, Dan Aykroyd’s co-founder of Crystal Head Vodka. Works loves “this package design because of its unique shape and distinctive look.” Apparently the USPTO agrees on the point about distinctiveness, as it is the only one of the five that appears to be federally-registered as a non-traditional product container trademark. Inherently distinctive too.

We’d probably suggest adding another to the Works’ list, as our friends over at Capsule have designed a pretty awesome award-winning vodka bottle for the Double Cross brand (dubbed “a sacred vessel”):

So, what is it about vodka that inspires such creative effort and success in package and container designs? Works answers the question this way:

“When it comes to driving sales and building brand equity in the spirits world, package design and advertising are often more important than product quality (one notable exception is Tito’s Vodka, which has exploded onto the scene without premium package design and with precious little advertising).  Most packages in the vodka category feature clear or clouded glass bottles, and most brands compete with sexy, simple and premium designs.  Differentiation is the name of the game, and also a very difficult feat to accomplish.”

As a trademark type, and to the point made about differentiation of vodka brands through package design, this left me wondering what other vodka bottle designs beyond Aykroyd’s skull design have received a passing grade at the USPTO, when it comes to trademark ownership of non-traditional trademark rights in the appearance of the container, or to use Capsule’s richer word, vessel?

As it turns out, these vodka container configurations have received passing grades in the trademark world, because each has been federally-registered or approved by the USPTO for publication, as an inherently distinctive design mark, from left to right, the elephant design, a guitar design, an embedded pebbled design; and a pink camouflage pattern design:


In addition, these vodka bottle designs also have received passing grades at the USPTO, moving from left to right, the square bottle design, stylized bottle design, angled plane design, and egg-shaped form on legs with an eagle on top, but not as inherently distinctive designs, instead as ones that have acquired distinctiveness with proof of secondary meaning under Section 2(f) of the Lanham Act:








And finally, these vodka bottle designs have not made a passing grade at the USPTO, each residing on the Supplemental Register, where they are designated only as capable of distinctiveness, but not yet so, moving from left to right, the conjoined cylindrical shapes design, parallel lines designflared base design, and the Imperial Crown of Russia design:








So, how would you grade each of the vodka bottle designs shown above, on trademark grounds, and on purely aesthetic or design grounds?









A hot dog is a type of sandwich, and “footlong” denotes a type, category, or class of sandwiches (those measuring about a foot in length), making “footlong” a generic term and part of the public domain — incapable of serving as a trademark for any kind of sandwich.

This is true despite Subway’s claimed use of FOOTLONG since 1967, the more than four billion FOOTLONG sandwiches sold between 2000 and 2009, and the near doubling of annual FOOTLONG sales from $541 million to $936 million, following its highly successful $5 FOOTLONG marketing campaign which started in 2008.

Any secondary meaning in FOOTLONG that might have resulted from the extensive marketing campaign, is de facto, so it doesn’t count for distinctiveness — it doesn’t create enforceable rights, because purchasers readily understand that FOOTLONG identifies 12 inch sandwiches.

These are some of the findings and conclusions by the TTAB last week in the long-anticipated decision Sheetz of Delaware, Inc. v. Doctor’s Associates, Inc., rejecting Subway’s desire to own FOOTLONG as a federally-registered trademark for “sandwiches, excluding hot dogs.” For a more complete analysis of the 61-page decision, check out John Welch’s coverage over at the TTABlog.

If you’ve followed my writing on the subject, you’ll fully appreciate that the TTAB’s decision finding FOOTLONG generic for sandwiches — even if hot dogs are excluded — is not surprising:

The decision was written to be bullet-proof on an appeal that the TTAB assumes Subway will file. So, for the sake of completeness, the TTAB decided that even in the unlikely event it is wrong about genericness and FOOTLONG is actually descriptive, the evidence still does not show acquired distinctiveness. If there is an appeal it will be interesting to see whether Subway pursues a de novo federal district court trial (which would permit the introduction of new evidence) or whether it takes the existing record up to the Court of Appeals for the Federal Circuit (CAFC).

My prediction is it won’t make a difference, the result will be the same, FOOTLONG is generic for sandwiches, just like LIGHT and LITE is for beer. In my opinion, Subway’s pursuit was doomed from the start with its initial specimen of use from November 2007:

As the TTAB noted: “If the above-noted specimen shows trademark use of “Footlong,” then it must also show trademark use of 6″ Sub and Wrap.  As used in the specimen all three terms are displayed in the same manner (font, size, color, position), and used in the same way (i.e., to identify a type of sandwich).”

Of course, as shown at the top of this post, now when you see Subway’s FOOTLONG advertising (and in-store signage) it is littered with TM notice symbols closely associated with the term FOOTLONG. I’m not sure when that tactic started, but I believe it has been going on now for at least a couple of years. I remember being struck by the tiny after-the-fact TM stickers applied to the menu signage at the Subway located in the Minneapolis – St. Paul airport when I started following the Subway trademark bullying story a few years back.

With more than 26,000 Subway locations throughout the United States, and all the advertising done on the local and national level for the largest restaurant chain in the world, I shutter to think how many errant TM symbols are swinging in the wind, must be millions upon millions.

Even if an appeal of this decision would be hopeless for Subway, it might be worth filing one to at least avoid immediately facing the decision of whether to remove the multitude of stickers and the millions of false or misleading TM notices in advertising and on signage, given the TTAB’s ruling that FOOTLONG is not and cannot be a trademark for sandwiches.

Having said that, if an appeal over-turned the genericness part of the ruling, that would avoid the need for removal, even if the lack of acquired distinctiveness portion of the decision were affirmed, since it would keep the door open for Subway proving acquired distinctiveness down the road, and surely it would be able to freely use the TM symbol while it is still making that effort.

I’m just not seeing it though, I believe the genericness ruling will stand, but what do you think?

In its list of 500 Greatest Albums of All Time, the Rolling Stone ranked the 1967 album The Velvet Underground & Nico at number 13 – not bad for the band’s very first album.  The album had a simple cover, some would say iconic, cover:


And get this: the banana peel was actually a sticker that you could peel off to reveal a pink pop art unpeeled banana underneath! Although, based on my baseball card experiences, I’m sure it ruined the resale value. Whether it was a marketing ploy, or just something that the band or Andy Warhol thought would be fun, I don’t know. I do know that it is a great combination of pop art with interactive/participatory art and combined with music!

I’ve owned the album (cd) for maybe 10 to 15 years. It’s good, but I admit I never listened to it frequently, and not for a long time. I do remember always being slightly confused as to the relation between Velvet Underground and Andy Warhol was. Although I was interested in the answer, the interest never lasted long enough to look it up. That is, until recently when I found out trademark law was now involved.

Based on my confidential, verified, inside sources at Wikipedia, Andy Warhol became their manager in 1965 and helped them get a record deal. The band was sort of a “house band” at Warhol’s studio, some parties, and on his traveling art tour named Exploding Plastic Inevitable. He designed the banana drawing for the cover and was listed as a producer on the album.

Back to the law. The remaining members of the band filed a lawsuit against the Andy Warhol Foundation for the Visual Arts (the Warhol Foundation) for trademark infringement and requesting declaratory judgment regarding the ownership of the copyright in the banana image. You see, the Warhol Foundation had agreed to license the banana image to Apple for use with iPhone cases. The Velvet Underground was concerned that consumers would believe that the Velvet Underground had somehow endorsed or authorized this use since, they argued, the banana image had gained secondary meaning associating the banana image with the Velvet Underground.

So the question becomes: who owns the copyright and what effect does that have on any trademark rights? This is an interesting situation where the Warhol Foundation could have a valid copyright in the image, but the Velvet Underground could have a valid trademark in the same image. There are many issues regarding the copyright: was there an implied license, was it a work for hire, or, in my opinion the most likely to be applicable, whether laches prevents the Foundation from pursuing any claim. The Velvet Underground continued to sell the album with the banana design, used it in promoting their tours, registered it as a trademark in 1994 (but abandoned it by failing to file a Section 8 declaration… ouch), and even licensed its use in an Absolut Vodka ad:

Note that Absolut licensed the banana image from Velvet Underground, not from the Warhol Foundation. The ad easily could have read ABSOLUT WARHOL but, for whatever reason, Absolut either believed that the band owned the rights to the image, or in fact associated the mark with the band rather than Andy Warhol. If you read the Rolling Stone link you’ll have notice this line: Rejected as nihilistic by the love crowd in ’67, the Banana Album (so named for  its Warhol-designed cover) is the most pro­phetic rock album ever made.” This reference to “the Banana Album” (capitalized, no less) and “the most prophetic rock album ever made” comment in a prominent national music magazine is pretty good evidence to support a claim of secondary meaning. Plus, it doesn’t appear that Andy Warhol ever “used” the design as a mark.

Like most cases involving fun and interesting legal issues, the parties recently settled the case. While the facts in this situation are rare, it isn’t difficult to imagine a situation more plausible. A person or company could make unauthorized use (or ambiguously authorized use) of a copyrighted image as a trademark and achieve acquired distinctiveness in a short time through extensive (and successful) marketing and advertising efforts, especially through an effective digital/social media blitz. As far as I am aware, L.A. Gear still has the fastest time at the “Secondary Meaning” combine, clocking in at a crisp 5 months (L.A. Gear Inc. v. Thom McAn Shoe Co., 988 F.2d 117 (Fed. Cir. 1993)). That is quick enough to develop secondary meaning without a competing copyright claimant to lose their rights. So can an individual obtain a valid trademark exist even though each time it is reproduced it gives rise to a claim of copyright infringement? (assuming there are no contractual issues and that the copyright owner has made no use of the mark). It certainly wouldn’t make much financial sense, but it appears legally plausible.

Please note: I am not advising anyone to “borrow” another’s copyrighted image to use as a trademark just so we can see what happens. But I promise to write about it if you do.