There is at least one more 2018 Rapala billboard out there, just netted this one over the weekend:
The grocery aisles are fertile grounds for my keyboard, as you know. And, while I’m generally far more interested in coffee grounds than tea leaves (unless we’re speaking of the iced variety or reading between the lines of court decisions), the above shown box of tea bags caught my eye.
What initially captured my…
The strategic use of color can make all the difference in the world — particularly the trademark world — when creating the visual identity for a brand, as color can be a very helpful legal tool in communicating the brand’s underlying meaning.
And the meaning of a brand and its trademark, or a portion of its trademark, can have many legal implications, including but not limited to whether the mark is descriptive or suggestive, strong or weak, inherently distinctive or not, whether a disclaimer might be required, whether or not a likelihood of confusion exists, and whether or not there is a valid fair use defense.
Especially when a brand name is composed of compressed or telescoped words, the intended meaning behind a brand name can be lost on consumers without the careful use of color combinations:
Without the benefit of the colored-version of the current PETSMART logo on the left, how would word-of-mouth discussions regarding the brand go, if all one had access to was the black/white version on the right? Would the PETSMART brand name be pronounced as PET SMART, PETS MART, or PETS SMART (the last option being the telescoped version where the compressed mark shares a letter between the two words that form it)? Would the bouncing ball punctuation alone be enough to steer the meaning toward PET SMART and away from the descriptive PETS MART?
The answers to these questions have important legal implications since PETS MART is likely descriptive, weak, and susceptible to the fair use defense, while PET SMART or PETS SMART is likely suggestive, strong, and less susceptible to fair use. So, when the words are compressed, and spacing cannot answer these critical questions, there is a strong legal incentive to clarify for consumers that the elements of the compound mark are PET SMART, not PETS MART, as the coloring shown above accomplishes.
To be sure, the smart use of color is not the only tool available to influence the meaning of a compound word mark. Upper and lower case lettering can help convey valuable information as well. Staying with the PETSMART example, there was a time when the brand’s visual identity looked like this on the company’s website:
Because all the lettering in this depiction of the visual identity is the same color, the smaller size of the "s" between PET and MART probably create a pretty strong argument that the compound mark is PetsMart, not PetSmart. Interestingly, an even earlier treatment of the logo uses the red/blue color combination to communicate the PET SMART meaning, but it is somewhat visually contradicted by the diminutive appearance of the MART element, as shown here.
So, who do you suppose had more influence on the various transitions of the PETSMART logo over time, legal or marketing?
Finally, for a stroll down memory lane on Duets with a couple of other posts from the past, relating to visual identity, see below the jump.
A lot can be learned from the easily searched trademark registrations existing on the United States Patent and Trademark Office’s online database. For example, Examining Attorneys at the USPTO will refuse registration based on prior confusingly similar registered marks, so responsible trademark owners will conduct the necessary searching and due diligence prior to adoption and first use. In addition, because searching the USPTO’s database can yield readily available evidence on a number of substantive issues important to trademark types and brand owners, third-party trademark registrations are a very tempting tool to use to try to prove a point.
As frustrating as it can be to trademark types and the brand owners they represent, third-party registrations cannot be used as legal precedent to try and compel a certain result. Such attempts easily are rebuffed at the USPTO since each application must be decided on its own merits and one Examining Attorney is not bound by the "mistakes" that may have been made by other Examining Attorneys at the USPTO. As a result, although consistency is a goal at the USPTO, it can be rather elusive at times. Having said that, third-party trademark registration evidence can have evidentiary value, if used properly, and the valid and acceptable use of third-party registration evidence has grown over time.
Third-party registrations have been considered relevant and probative in establishing a number of different and important trademark issues, including at least:
- The likely meaning of a mark to consumers. Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915 (CCPA 1976).
- That goods or services are of a type that consumers may believe emanate from a single source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993).
- The likely meaning of a mark to consumers, i.e., whether it is merely descriptive or suggestive. Plus Products v. Star-Kist Foods, Inc., 220 USPQ 541 (TTAB 1983).
- That a mark is relatively weak and that consumers will rely on other matter to distinguish between marks. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369 (CAFC 2005).
- The existence of a relevant industry practice. Stuart Spector Designs, Ltd. et al. v. Fender Musical Instrument Corporation, 2009 WL 804142 (TTAB March 25, 2009) (finding the third-party registrations for guitar body designs supported the applicant’s position that the USPTO recognizes guitar body designs as capable of indicating source and the industry’s practice of registering guitar body designs); In re The Black & Decker Corp., 81 USPQ2d 1841 (TTAB 2006) (finding industry practice to use key head design as source indicator).
A couple of days ago I posted about a trademark specimen case, one where I was hoping the TTAB would expand the valid use of third-party registration evidence, but unfortunately, the TTAB did not acknowledge or address the third-party trademark registration evidence that was submitted (along with the specimens of use supporting those standard character word-only trademark registrations). Perhaps someone else can benefit from these thoughts in arguing for additional expanded use of third-party registrations in their trademark registration cases.
John Welch, over at the TTABlog, reported on a recent trademark specimen of use case (pdf here); one near and dear to my heart, since I represented the Applicant seeking to register the composite word-only mark DELI EXPRESS SAN LUIS for sweet rolls. At issue in the case was whether the product label specimen (appearing below) shows use of the DELI EXPRESS SAN LUIS word-only mark as set forth in the standard character drawing of the trademark application:
The Trademark Trial and Appeal Board (TTAB), in what it admitted to be a "necessarily subjective" analysis, examined the product label specimen — and on that basis alone — concluded it does not show use of the claimed DELI EXPRESS SAN LUIS mark:
Here, we agree with the examining attorney that the specimen depicts the two literal portions DELI EXPRESS and SAN LUIS in such a manner that consumers would not perceive them as constituting a single composite mark. First, the DELI EXPRESS portion is not only in a different font but is contained within a yellow-background, and then a larger red background, separated from the remainder of the packaging design by a black bar outlining the top left corner of the package. The other literal portion, SAN LUIS, is outside of that border area and is further separated by a fanciful triangle design and placed upon a green background. The term CONCHA appears below these two elements in a lighter green box. Taken together, we find that the impression left by this specimen is that the two elements, DELI EXPRESS and SAN LUIS, are two separate trademarks rather than the single mark shown on the drawing page (emphasis added).
I respectfully submit that these kinds of determinations — especially since they are admittedly and "necessarily subjective" — are not binary, either-or propositions. For example, it is entirely possible for a single specimen to show two trademarks that function as separate individual trademarks and also function together in the same specimen as a unitary word-only composite mark (see third-party registration examples below the jump).
Here, it seems to me, that the specimen in question shows multiple word-only marks (among others too, when designs and stylization is considered), including DELI EXPRESS, SAN LUIS, and the composite of those words, DELI EXPRESS SAN LUIS. Indeed, if a consumer were shown the product label and asked what brand of concha or sweet roll this is, it would be entirely reasonable and appropriate to answer: DELI EXPRESS SAN LUIS. If so, how can it be that the specimen does not show use of the claimed mark?
Given that the drawing shows the mark sought to be registered by applicant (TMEP 807; 37 CFR 2.52), given that applicants enjoy some latitude in choosing the mark to register and include in the drawing (TMEP 807.12(d)), given that the main purpose of the drawing is to provide notice of the nature of the mark sought to be registered (TMEP 807), given that the mark shown in a standard character word-only drawing need not appear on the specimen in the same font, style, size, or color (TMEP 807.03(e)), given that the USPTO actually encourages applicants to use standard character drawings (TMEP 807.04(b)), given that a standard character drawing is a quick and efficient way of showing the essence of a verbal mark (TMEP 807.04(b)), and given the "necessarily subjective" nature of the determination, I submit that the appropriate test for determining whether the specimen shows use of the verbal, word-only mark claimed in the standard character drawing, is whether it would be reasonable for consumers to request applicant’s product by the claimed trademark, given what actually appears on the specimen.
In other words, how might consumers request applicant’s sweet roll product? Again, I submit it is entirely reasonable that consumers who have seen the product label would request the product by asking for a "DELI EXPRESS SAN LUIS concha or sweet roll." Now, while they might also request a "DELI EXPRESS" concha or sweet roll, or perhaps a SAN LUIS concha or sweet roll, the most complete, accurate, and precise way to request the product would be to ask for a "DELI EXPRESS SAN LUIS" brand concha or sweet roll, and also thereby treat the words as a unitary composite mark, because:
- The DELI EXPRESS house brand (and primary brand) and the SAN LUIS secondary or sub-brand are the only brands and word-marks on the entire label;
- They appear proximate to one another, side-by-side on the same horizontal plane, at the top of the label, for easy, conventional reading from left to right;
- They form the dominant portion of the label since the design elements can’t be spoken;
- The DELI EXPRESS phrase appears in solid black lettering on a yellow-background, and the SAN LUIS phrase has a black-outlined border and it stems from a triangle design element matching the same yellow-background carrying the DELI EXPRESS phrase;
- There is no requirement to include generic words as part of the claimed mark, i.e., concha or sweet roll;
- Consumers familiar with applicant’s products are accustomed to similar label formats where the DELI EXPRESS house brand is proximately positioned with other sub-brands like SUPER MEGA, SNACKERS, COFFEES OF THE WORLD, and SUB SELECTS, to form federally-registered word-only standard character trademarks: DELI EXPRESS SUPER MEGA, DELI EXPRESS SNACKERS, DELI EXPRESS COFFEES OF THE WORLD, and DELI EXPRESS SUB SELECTS; and
- Consumers of packaged food products have been conditioned to perceive house marks and secondary marks as not only having separate trademark significance from each other, but also significance together, in the same specimen, even when different colors, styles and fonts may be used for each or portions of each, and even when other matter or wording may appear between them(see third-party registration evidence below the jump).