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?

Aaron Keller, Managing Principal, Capsule

How fast are you getting at typing with your thumbs? My high school typing instructor would be so proud of my advancements. I’d say 60 words a minute if I am humming along with an idea of what to write. Not bad, proud to say I am writing this post on my Apple iPhone 6, and though my thumbs are manly, the letters are accommodating.

Now, what makes me curious is the rewarding outcome for all this work. The sound when I have finally completed my effort and this message is sent. I know the sound, it feels like a small jet taking off from my desk.

The sound brings a little rush and a mental reward for all my effort and tired thumbs. To me the sound has a feeling attached, the feeling of accomplishment.

So, in my searches for the entity owning this sound, I have explored the world of Apple intellectual property. I’ve found a registered trademark for the Mac startup chime and a trademark for the store design layout, both I have enjoyed and agree there should be some attribution and ownership.

But, nothing on the sound rapidly approaching as I finish this blog post. Perhaps it has been filed and just not obtained yet, or maybe this is a gap in the legal department at Apple (not likely).

I also have to admit to an anterior motive for finding the intellectual property behind this story. As an author of our next book on The Physics of Brand, we are seeking stories of brands protecting intellectual property surrounding the less considered sense (sound, taste and touch).

So, if you’re also getting excited about finishing this blog post and wondering, “what stories do I know about non-traditional trademarks,” leave a comment. Perhaps we will be able to share your name and story.

Can you feel it? All around the country, fields are being groomed, stenciled, and painted. Tonight, the college football season begins with Georgia State taking on Abilene Christian in what could be a preview of one of hundreds of games that most of us don’t really care about. But like so many fans around the country, I’ll probably still watch it, at least for a quarter: I missed you Football.

Football certainly hasn’t been gone from the news though, as lawsuits addressing scholarships, unions, and additional antitrust violations have all made headlines. But one headline caught my attention, an article discussing the University of Southern California’s head coach Steve Sarkisian filing a U.S. Trademark Application for his moniker SARK. Sark joins a number of other college football coaches who have applied to register their names.

Just last month, we covered the University of Arkansas’s registration of the SOOOIE RAZORBACK cheer. There was also the Oregon/Oregon State CIVIL WAR, too. This got me wondering, if trademark law can protect coach names, chants, and intrastate rivalry games, what other fun ways can I think about work while watching football?

How about stadiums?

Check. Well, technically only the turf is claimed as a feature of the mark. Steve discussed this registration back in 2009. Also, the red version for Eastern Washington. Not the stadium itself. But still.

Uniforms?

 

Check. Oh, and better get one for the away uniforms, too.

And speaking of uniforms, if you were considering launching a business that sold perfume or deodorant in the form of a football jersey, well. Don’t. Not just because its a terrible idea, but because you might be infringing on the trademark registration below:

 

And since we’re on the subject of product trade dress, don’t forget about football shaped brownies:

 

And you definitely won’t want to forget about your football shaped “alcoholic beverages except beers:”

 

And let’s see if you can guess what kind of goods or services this is a trademark for:

Yes, it’s a kicking tee. And yes, it’s registered on the Principal Register in connection with kicking tees.  How? Well, apparently, the texture on the tee is so unique that it has acquired distinctiveness in the minds of consumers as identifying a particular source. Right.

There’s even a trademark registration for this logo:

 

Which is apparently in no way associated with this registered trademark of Nike:

 

Or how about this trademark:

Yep, that yellow line is a trademark of Sportsvision. Martha covered that here around Super Bowl time – Oh, sorry Roger –  The Big Game time.

And if you’re attending a game at Texas A&M, not only will you be surrounded by trademarks, but you will BE a trademark, way to go 12TH MAN®!

There are certainly many more that we could cover, but I think it is pretty clear that this Saturday, whether you’re in the stadium, on the LA-Z-BOY® at home, or at the BLUE 42 SPORTS GRILL in Winter Garden Florida, you will be surrounded by trademarks. And football. Glorious, but possibly not-very-competitive, football. Enjoy it! – I know I will (GO HAWKS!!).

‘Tis the Season for billboard ads like this, sorry Nancy.

Anyway, it reminded me of a very early post of mine on touch trademarks, here on DuetsBlog.

That early blog post noted Diageo’s federally-registered purple bag non-traditional trademark, and that a third party had slipped in at the USPTO to federally register a velvet touch mark for wine:

Although Diageo appears to have made no attempt yet to federally register or protect the velvet touch or feel of the Crown Royal pouch bag, American Wholesale Wine & Spirits, Inc., obtained a federal trademark registration toward the end of 2006 for a touch mark comprising “a velvet textured covering on the surface of a bottle of wine.”

[D]uring prosecution of the “velvet touch” trademark application for wine, the Trademark Office noted the sale of velvet bags for use in carrying wine and distilled spirit bottles, particularly the Crown Royal whiskey bottle example. However, convincing the Trademark Office that the “velvety touch” of the Khvanchkara wine bottle was so unique as to be inherently distinctive, American Wholesale successfully argued the difference between the “loose fitting bag” of Crown Royal and others as compared to how Khvanchkara’s “glass bottle is tightly encased within a velvety fabric,” and perhaps most importantly, noted: ” [T]he FEEL of a LIMP bag is quite different from the FEEL of a TURGID velvety surface attached to a wine bottle.”

[T]he Khvanchkara “velvet touch” registration served to bar registration of another company’s leather touch mark for wine, describing the claimed mark as: “[A] leather-like textured covering on the surface of a bottle of wine, brandy or grappa.” Here was the Trademark Office Examining Attorney’s analysis in refusing a leather touch based on the prior velvet touch: “Although the coverings are different materials, both are highly textured and closely cover the glass wine container. The marks are therefore highly similar in appearance . . . . The goods at issue are all wine. Purchasers could mistakenly believe that the goods come from a common source.” (Putting aside the obvious tactile differences between leather and velvet, why is the Examining Attorney comparing the “appearance” of the touch marks, shouldn’t the “texture and feel” be the appropriate point of comparison?)

Quite a bit has happened since that post from July 2009:

  1. The “velvet touch” registration for wine was cancelled under Section 8 of the Lanham Act;
  2. A different wine-maker has now federally-registered a “leather touch” trademark for wine;
  3. A fragrance dispenser with a “pebble-grain” texture and rubberized “soft-touch” feel is now inconstestable;
  4. A German company failed in its attempt to federally-register the tactile surface of a pharmaceutical pump dispenser; and
  5. Diageo apparently remains uninterested in pursuing any touch trademark registrations.

Last, the Bawls Energy Drink trade dress that includes “bumps” on the surface of the blue bottles is now “incontestable,” but functionality never goes away as a possible basis for invalidation.

All in all, it appears that touch marks remain one of the least popular type of non-traditional trademarks, at least for registration purposes — so, what is your favorite touch mark?

What an honor it was to be part of the 2013 Dieline Package Design conference at HOW Design Live, last week in San Francisco, thanks again for the opportunity Andrew!

The Editor’s Choice winner for the 2013 Dieline Package Design Awards is Method’s visually stunning Ocean Plastic Dish and Hand soap container, shown to the left, and discussed this way:

“The more ocean plastic we’re able to reuse means less demand for virgin materials and a cleaner planet. We may never be able to return the ocean to its pristine state, but we can raise awareness of the importance of using the plastic that’s already here. The ocean plastic in this packaging was hand-collected on the beaches of Hawaii by method employees and local Hawaiian volunteer groups. The unique gray color is a departure from method’s usual bright pops of color.”

“The gray color is what resulted naturally after the plastic chopping, washing and pelletizing process and our creative direction was inspired by its organic feel. The inspiration for the ridges along the side of the bottle came from a sea urchin.”

Happily, no D-Words or F-Words here to explain the unique look, shape, and features of this product container, so there is serious potential for inherently distinctive non-traditional trademark protection, although I could find no pending applications filed by Method, just this one (with no ridges).

I love the choice and use of the word “inspiration” to explain the designed ridges on the bottle — in my opinion, it is very nicely suggestive (not descriptive) of the ocean plastic material making up the container, by adopting a creative interpretation of an important and protective feature of sea urchins in the package design.

Although the color of the container is probably not subject to trademark protection because it is apparently the natural result of the manufacturing process, the look, feel, and shape of the container have great potential, since those features haven’t been verbally saddled with the “grip-able” or “ergonomic” functional baggage that others unfortunately have stumbled in using to explain their product or container features.

Last, it was a distinct pleasure to present again with guest blogger Aaron Keller of Capsule on the topic of The Intersection of Design and the Law. As always, it was a lot of fun, so if you’d like a private showing of that discussion, please let us know, we’ll consider taking it on the road again, for the right crowd.

– Jason Voiovich, Director of Corporate Marketing, Logic PD

Last week, the US Patent and Trademark Office conferred upon Apple the Excalibur of intellectual property: The GUI patent that covers the general operation of today’s smartphone and tablet universe.  Officially, it is patent 8,223,134 and you can read all about it here, or in excruciating legalese here.  Bottom line, it covers the disappearing scroll bar.  Swipe to unlock.  Camera.  Phone.  Keyboard.  Essentially everything “touch” about the current smart-phone interface.

Think about it for a second.  This award means every Android tablet and smartphone – every single one – could be interpreted, as in violation of Apple’s broad-reaching interface patents.

That’s a big deal.

The lawyers will have a bunch of fun hemming and hawing over the legal implications of the award, the subtlety of the language, and litigation strategies.  Pundits will bemoan the rise of the “patent hoarders” and the chilling effect they may have on innovation.  The particularly frothy among them will suggest the patent itself has outlived its usefulness as a catalyst for invention, and that China’s lax IP laws are the answer to rekindle disruptive innovation.

Bleh.

I’m more interested in what the average consumer might make of this.  Because the winner of the opinion battle is the real winner here, no matter what happens in court or in Congress.

And to answer the public opinion question, we can use a useful communication theory tool.  It’s called the Elaboration Likelihood Model (ELM) and its power is in its simplicity.  In one sentence, ELM reminds us people mentally process information differently depending on how engaged they are with the topic at hand.  In other words, you might consider the purchase of a Snicker’s bar differently than you consider the purchase of your next car (at least, one would hope).  It seems simple, and obvious, but how often have you seen communicators get it wrong?  I’m thinking of 30-second spots summarizing reverse mortgages or full page ads touting Dr. Pepper’s 23 flavors.

Let’s see what ELM has to say about the coming battle between Google and Apple over smart-phone interface patents.

Of course, different audiences will “elaborate” (read: be more interested in) different messages at different times.  However, both companies need to carefully read general buyer opinion to deliver the right message at the right time.  If buyers are tuned out, blunt messages work best.  Even better if they can appeal to some grander purpose or ideal.  Subtlety is a mistake.  You’re either with us or against us.

Contrast that with a highly engaged buying public.  If you don’t think this could happen, just consider what happened to the engagement level of the buying public in the recent Viacom/DirecTV spat.  The average person actually understood network bundling and what it meant for their satellite bill.  If the Apple/Google fight moves into some sort of “cease and desist” remedy, you can bet that the average Android user will quickly get up to speed on patent law.

We shall see.

In all of these scenarios, we can see “winning strategies” for each company.  The real trick is not the message, but knowing when to use it.

Aaron Keller, Principal at Capsule

During this time of year there are plenty of fright “experiences” where you can drag a loved one into a heart thumping confrontation of fear. These experiences are elaborately designed and those who attend know the rules, like “this one doesn’t allow the characters to touch you.” Apparently others do and, of course, the use of touch increases the fear factor another scream decibel.

Even if you’re not comfortable with Freddie running full speed at you in a dark cornfield, these events are good for research. They are designed for a singular purpose and extract significant dollars from your wallet for a negative emotional reaction. The other negative emotion, anger, doesn’t really have a day of the year or a place where you can face or express it. Perhaps there should be a day and a place. So, fear is a great place to learn how an experience can be designed for one emotion.

Here’s an exercise. There are only six basic emotions: fear, anger, disgust, sadness, surprise and joy. Consider how you would design an experience with a singular focus on one of the six emotions. It’s an exceptional creative tool to discover how to touch emotions in ways not considered by anyone else. Then filter through the stereotypical methods to find the gems, the more uncommon methods to include in the experience you happen to be designing.

Back to fear. Many of the scare experiences in this season use the classic stereotypes, because they’re easy. But, then there are moments when you run into something original. The Soap Factory is such a place. While it has unique methods for taking the sound from you fast and without warning, it also uses more of the five senses than most. They pipe in a smell that seems to epitomize fear. With the direct connection our sense of smell has to our brains, it’s no wonder this one will leave you with a few years removed from your life and a smile on your face.

So the question is, what is the smell, or perhaps better said, what smell do you fear?

Augmented Legality writes:

"Soon, technologies that augment our sense of touch may lead to a rush of trademark applications seeking to protect a wide variety of artificial textures."

Brian Wassom goes on to identify an interesting new technology being promoted by Senseg, a Helsinki-based company that apparently knows a lot about tixels (tactile pixels):

"Senseg E-Sense makes use of an electro-sensory phenomenon that replicates the feeling of touch. As very tiny electrical charges pass into the tixel elements, the individual tixels generate a controlled electric field which extends several millimeters above the surface. Senseg E-Sense is a wholly new way of creating a sophisticated sensation of touch without the use of less sensitive haptic technology like vibration or mechanical actuators such as motors, piezoelectric actuators or electro-active polymers."

So, with this technology, for example, a book cover could be "augmented" to manipulate consumers into sensing wetness, or a plastic squirt gun could be "augmented" to feel metallic. Clearly, this opens up a lot of opportunities in the realm of non-traditional trademark protection.

As you may recall, I have written more than a few times about touchmarks, including this:

"As arguably one of the most intimate of the senses: ‘Touch is the first sense developed in the womb and the last sense used before death.’ Given that and given other unique characteristics of ‘touch’ among the senses, it is a bit surprising that touch marks haven’t been pursued more by marketers looking to create intimate, emotional connections with a brand: ‘Another distinction of the sense of touch is that it is identified with the real. You can’t believe your eyes, nor your ears, and taste is personal and subjective, but touch is proof.’ By the way, since touch/tactile/texture marks are so uncommon, why can’t we agree on what to call them? For what its worth, my vote is to call them "touch" marks since that is the term that names the underlying basic human sense."

Augmented Legality prefers the term "haptic" trademarks over "touch" marks, what is your vote?

Reliance on this new technology to create and protect touchmarks will require careful collaboration of legal and marketing types to navigate the potential functionality concerns and the likely need for the tactile equivalent of "look-for" advertising with this type of non-traditional trademark.

In case you missed it, here is a link to my article and cover story "A Trademark Touch: Strategies for Owning and Protecting Touchmarks," previously published in Brand Packaging magazine.

Finally, will "touch" continue to be considered "proof" if this augmented reality technology takes off?

There aren’t too many things I enjoy more than speaking about the legal implications of branding.

Our friends at BlackCoffee captured a talk I gave to a group of marketing types a while back, on black and white film (thank goodness), and they have graciously posted a 34 minute excerpt, here.

Some of the topics I discussed include:

I’d love to hear any feedback on the talk.

I’d also love to hear from you if you have a group or team that might be interested in having me deliver a talk on trademarks and the legal implications of branding.