Single Color Trademark

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.

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.

We’ve written a lot about single color trademarks here over the years. Weems, the owner of the Flexilla brand has unleashed its federally-registered chartreuse-colored non-traditional trademark for “compressed air hoses” against Plews for selling air hoses with a “bright florescent green color” — a color that Plews claims online “reduces chances of tripping while on a job site.

Weems owns a non-traditional trademark registration on the Principal Register for chartreuse in connection with “compressed air hoses” — but, it recently abandoned a single color trademark application for electrical power extension cords, and it hasn’t yet obtained a registration on the Principal Register for chartreuse in connection with garden variety hoses (i.e., garden hoses):

FlexillaHose

Weems owns a pair of Supplemental Registrations for the chartreuse color (one having a black stripe, the other having a green stripe) in connection with watering hoses and garden hoses, but two months ago its attempt to achieve Principal Registration for chartreuse in connection with those goods and others was refused by the USPTO (Weems has until April 2017 to respond to the failure to function as a trademark and lack of distinctiveness refusals).

More thoughts on this case tomorrow, but in the meantime, do you think Plews tripped into this trademark dispute, or does it likely have a plan and a valid defense?

Hat tip to Jason for flagging the Weems v. Plews trademark complaint for us, currently pending in the Northern District of Iowa.

Glove4
Chou #1
Glove1
Digitcare
Glove3
Chou #2
Glove2
Chou #3
Glove5
Chou #4
Glove6
Avent Green

 

 

 

 

 

 

 

Back in 2009, we wrote about what was then Kimberly Clark’s pair of single color purple trademark registrations in connection with “gloves for medical and surgical uses” and “disposable nitrile gloves for general use,” now owned by Avent and sold under the HALYARD brand:

HalyardPurpleNitrile

Those registrations are still big deals since they both exist on the Principal Register (as opposed to the Supplemental Register), and as far as I can see, no other medical examination glove colors have been able to withstand the reliable USPTO probing to attain Principal Registration status.

As the above six hand drawings reveal, growing numbers in the medical examination glove world have raised their hands at the USPTO to gain federal registration of a single color or a contrasting pair of colors (one appearing on the inside and the other on the outside).

Let’s wait and see what happens to the six pending applications for the drawings shown above (Chou #1, Digitcare, Chou #2, Chou #3, Chou #4, and Avent Green) after the USPTO rolls up its sleeves, and begins a different kind of hands-on examination. We’ll follow the drama as it unfolds.

From where I’m sitting, it seems doubtful that any will pass the vigorous Principal Register examination, but there are also serious questions as to whether survival of the appropriate Supplemental Register probing is warranted either, as explored more deeply further below.

In addition to #1-4 above, Chou also has a blue/white — outside/inside color combination mark and the inverse of those same colors — both on their way to the Supplemental Register.

Ascend Eagle also has a few hands in the color trademark pot for medical examination gloves, orange is registered on the Supplemental Register (tangerine never made it), but this peach and this red one are both suspended for consideration on the Supplemental Register.

Colur World has a suspended pink single color application too, apparently now attempting Principal Registration, since it already has a Supplemental Registration for pink medical gloves.

While, Xela has secured single color copper and single color magenta trademark registrations — both have landed on the Supplemental Register stretcher too; as did this individual’s single color application for gold colored medical gloves.

With all this focus on gaining Supplemental Registrations in the medical examination glove field, you’d think the USPTO’s probing on the question of functionality has been, perhaps a bit soft.

Turns out, the Digitcare trademark application for an outer-white/inner-black medical exam glove contains an enlightening bit of information that could shine like a flashlight on the question of functionality:

  • “Contrasting Black and White ApexPro identifies conformance to infection control protocols”
  • “High contrast perma-white exterior for improved visibility with infectious fluids”

If so, what kind of future does that signal for this otherwise nearly identical Supplemental Registration, interestingly assigned from Chou to Digitcare, a few years back.

Show of hands, how many see the functionality scalpel removing even the Supplemental Registration option to one or more of the above six pending color applications, given the revelations in the Digitcare file history?

We’ve written before on the subject of non-traditional trademarks and how look-for advertising can be quite helpful in not only educating consumers that a color or other design feature should stand out in their mind as performing the helpful role of a trademark, but in convincing the USPTO too.

Earlier this month the USPTO granted a fairly broad non-traditional federal trademark registration to Q.E.P. (owner of the NUPLA tool brand) to help protect the brand equity in the black stripe appearing on the handle of its tools, one example shown below:
NuplaHandleStripe

What is especially interesting about the issued trademark registration is that the claimed mark is not limited to a black stripe on a yellow handle (even though some of the evidence to support a showing of acquired distinctiveness focused on the black color of the stripe), but it reads to cover any contrasting colored stripe on any color of tool handle, as the drawing shown below and this description of the mark reveals:

NuplaDrawing

“The mark consists of a 3-dimensional configuration of a tool handle having longitudinally extending stripe of a color which contrasts with the principal color of the tool handle. In the drawing the dotted lines are illustrative of an exemplary of tool handle and are not part of the mark and serve only to show the position or placement of the mark on the tool handle.”

I’m thinking the Examining Attorney at the USPTO was persuaded as to the claimed showing of acquired distinctiveness, in large part, by the use of the reinforcing GET THE STRIPE tagline:

NuplaGettheStripeLogo

What do you think, does a brand owner need to use the clunky words “look-for” to gain the benefit of this kind of advertising, or would that be putting form over substance?

And, do you think the apparent protection of a contrasting stripe of any color is overbroad here?

sidebysideoxytmobile

Techdirt is crying foul (again) and this time, wrapping the “trademark bully” mantle around the magenta-colored neck of the T-Mobile brand for enforcing its color trademark against OXY.

While I certainly don’t have the details of the dispute (and it appears Techdirt doesn’t either), and OXY hasn’t produced the actual demand correspondence, given the distinctiveness of T-Mobile’s identity and branding, it’s not surprising it’s viewed as an asset worthy of protection.

T-MobileMapWhat is surprising (to me) is that I was unable to find any single color trademark registrations for “magenta” on the USPTO’s Principal Register owned by Deutsche Telekom, the parent company of the T-Mobile brand — only a pair of Supplemental Registrations (here and here).

With more than a dozen years of prominent use of its “magenta” branding, you’d think it is long past due for an upgrade to the Principal Register. It also seems to me that having a Principal Registration for a claimed mark should go a long way to quieting trademark bullying skeptics.

Then again, maybe not. Some view the ownership of a single color as a trademark as ridiculous, dumb, and silly. So, having the USPTO validate such a claim with registration would probably not quiet the concerns of those folks.

Admittedly, sometimes the single color registration issued by the USPTO needs trimming, but single color trademarks have been legally validated for more than three decades now (ask Owens Corning what pink means to their consumers). Color trademarks aren’t going away any time soon, so long as they perform the three critical purposes of a trademark: (1) Identifying the goods or services at issue; (2) distinguishing the goods or services from those of others; and (3) indicating the source of the goods or services.

As I’ve said before and written before here, while so-called trademark bullying does exist, it is frequently a misunderstood and misapplied pejorative label, based on a heavy dose of skepticism and belief of what the law should be, not what the law actually protects.

According to Techdirt:

“What moves the needle on most of these stories from ‘trademark-gone-too-far’ to ‘trademark bullying’ is that these actions tend to be brought against other groups that aren’t even operating within the same industry as the offended. That’s key in trademark disputes where, in most cases, the two parties must be competing with one another for infringement to occur.”

As loyal DuetsBlog readers appreciate, for trademark infringement, i.e., likelihood of confusion to exist, it is black-letter-law that no competition between the parties is required, only likelihood of confusion (based on a balancing of multiple factors) — and not only likely confusion as to source, but also as to sponsorship, approval, affiliation, or some other sort of connection.

So, the lack of direct competition is not determinative of a likelihood of confusion analysis. And, Techdirt and OXY’s focus on the lack of direct competition actually misses the point and oversimplifies the analysis: “We are making a smartwatch – nothing that would eventually compete with Telekom’s products and services.”

OXY’s own marketing materials admit the complementary nature of their smart watch to a smart phone: “OXY is an Android running Smartwatch that is fully customizable and works with virtually any phone.” T-Mobile sells lots of smart phones, and I’d expect that selling smart watches is well within their natural zone of expansion. If so, it’s hard to blame T-Mobile for its concern.

My hope for 2016 is that we’ll see fewer trademark color calamity cliches; the so-called “trademark bullying” mantle will be much more carefully draped; and uninformed skepticism about the validity of trademark rights in single colors will subside.

Instead, hopefully we’ll see much more well-informed focus on the virtually unlimited subject matter of trademarks that identify, distinguish and indicate source, and we’ll look forward to seeing an intelligent application of the likelihood of confusion factors and standard.

How about you, what do you hope for in 2016?

News flash, last Friday the USPTO approved for publication a non-traditional trademark that I’ve seen in real life before. Let’s just say it is attached to one of our many remote control devices that I’ve had to dig out from under the sofa cushions more than a few times:

RokuPurpleTagThe claimed mark consists of “the configuration and material composition comprising a fabric tag in the color purple attached to the housing of the goods.” Note how the purple tag shown on the drawing doesn’t include the ROKU brand name:RokuDrawing

I’m thinking the USPTO should have required that the drawing to the right and the specimen of use match, and then the ROKU brand name appearing in white could have been shown in dotted lines to make clear it wasn’t being claimed as part of the non-traditional trademark. Do you trademark types out there agree?

The Examining Attorney at the USPTO assigned to the application asked Roku for the following information and documentation:

(1) A detailed explanation as to what purpose or function the “fabric tag” serves as used on the goods.

(2) Any available advertising, promotional or explanatory literature concerning the goods, particularly any material that relates specifically to the applied-for color mark and configuration.

(3) An explanation as to the use of the identified “fabric tag,” or similar tag, if any, extending from the housing of electronic goods, in applicant’s industry and any other similar use in applicant’s industry.

(4) Color photographs and color advertisements showing competitive goods in applicant’s industry using tags appended to housings for related goods.

(5) An explanation as to whether and how the goods’ function, purpose and cost are affected by the “fabric tag.”

Roku’s response was brief and to the point, but one might debate whether it covered all the requested points, information, and documentation:

“The Examining Attorney requested additional information and responses to inquiries regarding Applicant’s mark. Applicant responds as follows: 1. The purpose or function of the purple fabric tag is to be a label for the goods, just as a fabric tag is used as a label for articles of clothing. 2. Attached is a screen shot from Applicant’s website showing the mark as used on the goods. 3. To the best of Applicant’s knowledge and recollection, no others in Applicant’s industry use a fabric tag as a source identifying label or indicator of origin on the housing of these consumer electronic devices. Applicant is unaware of any goods in its industry that use fabric tags appended to the housings of the goods. 4. The function, purpose and cost of Applicant’s goods are unaffected by Applicant’s appending of a fabric tag on the goods. The fabric tags offer no particular functional or cost advantage of any kind. They merely serve as an inherently distinctive indicator of origin given the uniqueness of having a fabric tag appended to the housing of consumer electronic goods such as those produced by Applicant and those in its industry.”

Nevertheless, the brief response immediately led to approval of the claimed inherently distinctive mark for publication. I’ll have to say, it was more than a bit surprising to me that the response didn’t trigger a lack of distinctiveness refusal, at least as to the color purple, especially since the four prior registrations Roku was asked to claim ownership of were all non-distinctive Supplemental Registrations: 43296634329664, 4329666, and 4336488.

To the extent you, like me, thought about the apparent inspiration of Levi’s red pocket tab on jeans, David recognized that point, long ago, nearly five years ago now.

So, the claimed non-traditional color/fabric trademark has been around almost five years now, but why wasn’t a disclaimer of the color purple required unless Roku could prove up a partial acquired distinctiveness claim as to the color purple?