Non Traditional Trademarks: Sound, Color, Shape, Scent and More - - PowerPoint PPT Presentation

Presenting a live 90‐minute webinar with interactive Q&A

Non‐Traditional Trademarks: Sound, Color, Shape, Scent and More

Establishing, Registering and Enforcing Non‐Conventional Marks

T d ’ f l f

1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific TUES DAY, FEBRUARY 8, 2011

Today’s faculty features: Linda K. McLeod, Partner, Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C. S tephen Feingold, Partner, Kilpatrick Townsend & Stockton, New Y

• rk

S tephen R. Baird, S hareholder, Winthrop & Weinstine, Minneapolis

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Beyond Words and Symbols: Getting Creative with Non-Traditional Trademarks and Trademarks and Sensory Brands

Stephen R. Baird Chair, Intellectual Property and Trademark Brand Management Trademark Brand Management Winthrop & Weinstine, P.A. (612) 604-6585

4

sbaird@winthrop.com www.DuetsBlog.com

The Trend Toward Multi-Sensory Branding

• Martin Lindstrom, a sensory branding pioneer and author of the

authoritative work BRAND sense, makes a strong business case for authoritative work BRAND sense, makes a strong business case for investing in the creation of five-dimensional brands, those engaging each

• f the senses: sight, sound, taste, smell and touch.
• Lindstrom says sensory branding adds important dimensions to a brand,

Lindstrom says sensory branding adds important dimensions to a brand, including increased emotional engagement that secures bonds with consumers.

5

Definition of a Trademark

“The term ‘trademark’ includes any word, name, symbol or device, or any combination thereof – , y

(1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register, established by this chapter,

to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods even if that source is indicate the source of the goods, even if that source is unknown.” 15 U S C §1127 (emphasis added)

6

15 U.S.C. §1127 (emphasis added).

Possible Trademark Subject Matter j

• Not limited to “words names and symbols ”
• Not limited to words, names, and symbols.
• “Devices” open the door to an almost unlimited
• Devices open the door to an almost unlimited

variety of possible non-traditional trademarks.

• So long as the subject matter in question identifies,

distinguishes and indicates source virtually distinguishes, and indicates source, virtually anything that may be perceived by one or more of the human senses can serve as a trademark.

7

An Important Limitation on Possible Trademark Subject Matter Subject Matter Functional Subject Matter:

• Ask if the subject matter is essential to the use or

purpose of the article in question, or if it affects cost or quality, if not, still ask whether granting exclusive trademark rights would provide a exclusive trademark rights would provide a significant non-reputational disadvantage to competitors. competitors.

• Encourages legitimate competition by maintaining

8

Encourages legitimate competition by maintaining balance between trademark and patent law.

Other Limitations on Non-Traditional Trademarks

• Lack of Distinctiveness

Lack of Distinctiveness

• Timing of Distinctiveness

Timing of Distinctiveness

• Failure to Function as a Trademark
• Failure to Function as a Trademark
• Mere Informational Matter
• Mere Informational Matter

S (Lik lih d f C f i d Dil ti )

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• Scope (Likelihood of Confusion and Dilution)

Spanning the Five Human Senses

• Sight

Sight

• Sound

Sound

• Smell
• Smell
• Taste
• Taste

T h

10 10

• Touch

Sight Sight or Visual Examples: Sight or Visual Examples:

• Single colors product shapes and

Single colors, product shapes and configurations, lighting formations, containers, vehicles, trade dress, background designs packaging background designs, packaging, uniforms, building exteriors, commercial interiors, etc.

• Is there consumer predisposition to

equate with single source?

11 11

equate with single source?

Some Non-Traditional Examples Concerning Sight g g

12 12

Some Non-Traditional Examples Concerning Sight g g

13 13

The Paradox of Non-Traditional Visual Trademarks

• Generally, trademark owners are rewarded for engaging

consumers to exercise imagination consumers to exercise imagination.

• “Hitting the Consumer Over The Head” with the goods

connection typically isn’t rewarded with word marks connection typically isn t rewarded with word marks.

• The opposite is true with non-traditional visual marks.
• Without “Hitting the Consumer Over The Head” it may be

difficult to acquire rights in non-traditional visual marks.

• Not directly educating consumers what should be

considered source-identifying may result in failed

14 14

y g y

• wnership attempt.

Sound

• Some trademarks are embodied in sounds

Some trademarks are embodied in sounds that cannot be represented by a drawing.

• If you click on a serial number in one of the

columns appearing in the link below you can columns appearing in the link below, you can listen to a sound trademark on the PTO’s website website.

http://www uspto gov/web/offices/ac/ahrpa/opa/kids/kidsound html

15 15

http://www.uspto.gov/web/offices/ac/ahrpa/opa/kids/kidsound.html

Sound Marks and Distinctiveness

• Inherently distinctive when arbitrary, unique,

and used in a way to indicate source and used in a way to indicate source.

• If it imitates a commonplace sound, may

d t i d di ti ti need to prove acquired distinctiveness.

• Same, if unique, but the goods make the

sound in their normal course of operation.

16 16

Some Non-Traditional Examples Concerning Sound g

A pair of well-known sound marks . . .

17 17

Smell -- Scent

• First registered scent mark occurred in 1991.
• Marketing materials didn’t identify or name

any specific scent, but this was not fatal. y p ,

• Fragrance should not be an “inherent

attribute or natural characteristic” of goods attribute or natural characteristic of goods.

• Amount of evidence to show trademark

function for fragrance is “substantial” function for fragrance is substantial .

• Has fragrance in retail store environments

b M k?

18 18

become as common as Muzak?

Some Non-Traditional Examples Concerning Smell--Scent g

19 19

Taste

• Never inherently distinctive?
• No mention of taste in legislative history.
• Substantial showing of acquired

Substantial showing of acquired distinctiveness required.

• Unclear to TTAB how a flavor ever could
• Unclear to TTAB how a flavor ever could

function as a source indicator. C di iti d ’t i t t

• Consumer predisposition doesn’t exist to

equate taste feature with one source.

20 20• Generally performs a utilitarian function.

Some Non-Traditional Examples

• f Taste?

21 21

Some Additional Thoughts on Taste

• INTA reports that beverage manufacturers view

taste as trade secret and trademark.

• What if the Coke recipe became known, would

trademark law protect copying taste? W ld t t t i t i t f l l TTAB’

• Would taste strips at point of sale solve TTAB’s

concerns about pre-sale access to taste marks?

• Most potential seems to be with products not

Most potential seems to be with products not intended for human consumption.

22 22

Touch

• Like taste no mention of touch or tactile marks in
• Like taste, no mention of touch or tactile marks in

the legislative history.

• Neither “touch” nor “tactile” mentioned in the TMEP

Neither touch nor tactile mentioned in the TMEP.

• Yet, somehow, the PTO is recognizing inherently

distinctive touch marks. distinctive touch marks.

• Why doesn’t the Supreme Court’s Wal-Mart

decision apply to touch? pp y

• Is there really a consumer predisposition to equate

touch with source?

23 23

Some Non-Traditional Examples Concerning Touch g

24 24

The Key Appears to Be Something Analogous to “Look For” Advertising

• AmberWatch Alarm Sound Example:
• Failure to Function as Trademark
• Failed to educate consuming public – no “Listen

F ” Ad D i ti f S d For” Ads or Description of Sound.

• Al Roker PSA: “The sound you are about to hear

means a child may need your help ” means a child may need your help.

• Consider this Subtle Alternative: The unique sound

you are about to hear means a child protected with

25 25

y p an AmberWatch bracelet may need your help!

Tips to Establishing Rights in Non-Traditional Trademarks

• Due diligence; investigate the competitive

Due diligence; investigate the competitive landscape.

• Create uncommon, unusual or unexpected

Create uncommon, unusual or unexpected features.

• File intent-to-use application.

File intent to use application.

• Close review of marketing materials needed

to avoid functionality admissions. to avoid functionality admissions.

• Educate consumers through use of “look for”

analogs.

26 26

analogs.

Thank you!

Stephen R. Baird Chair, Intellectual P t d T d k Property and Trademark Brand Management Winthrop & Weinstine Winthrop & Weinstine, P.A. (612) 604-6585 ( ) sbaird@winthrop.com www.DuetsBlog.com

27 27

S O U N D S O U N D P A C K A G I N G P A C K A G I N G

Registration of Nontraditional Trademarks in the United States in the United States

Linda K. McLeod 202.408.6036 linda.mcleod@finnegan.com

Functionality and Distinctiveness

• Two key hurdles for registration of nontraditional marks:

(1) Functionality

• If mark is functional, it is not entitled to registration

(2) Distinctiveness

• Mark must be distinctive either

Mark must be distinctive either

 Inherently distinctive, or  Acquired distinctiveness

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Functionality - Overview

• TrafFix Devices, Inc. v. Mktg. Displays Inc.,

(2001) – Mark is functional if it is “essential to the use

• r purpose of the product or if it affects the

cost of quality of the product.” cost of quality of the product. – “[w]here the design is functional under the Inwood formulation there is no need to proceed further to consider if there is a proceed further to consider if there is a competitive necessity for the feature.”

30

Functionality – Burdens and Evidence

• Morton-Norwich Evidentiary Factors:

(1) Existence of utility patent (even (1) Existence of utility patent (even abandoned) that discloses utilitarian advantages (2) Advertising that touts utilitarian advantages (2) Advertising that touts utilitarian advantages (3) Availability of alternative designs (4) Whether design results from comparatively simple or inexpensive method of p p manufacture – Valu Engineering, Inc. v. Rexnord Corp., (Fed. Cir. 2002)

31

Product Design - Functional

• Valu Eng’g, Inc. v. Rexnord Corp. (Fed. Cir. 2002)

– Holding: TrafFix did not alter Morton-Norwich – Affirms that configuration of “conveyor guide rails” are functional because the cross-sectional design was competitively significant for use in “wet areas” of bottling and canning plants

• Abandoned utility patent disclosed design advantage
• Advertising touted design advantage

g g g

32

Product Design - Functional

• M-5 Steel Mfg., Inc. v. O’Hagins Inc. (TTAB 2001),

holding configuration of metal ventilating ducts and vents functional because it blends in or matches the roof tiles with which they are used and are better than alternative products

33

Product Design - Functional

• Kistner Concrete Products, Inc. v. Contech Arch Tech.,
• Inc. (TTAB 2011), finding Supplemental Registration of a

configuration for “a one-piece open bottom bridge unit, with parallel spaced vertical side walls connected by an arched top wall and having sharp outside corners and a width substantially greater than its length” for “precast concrete

bridge unit for constructing a bridge or culvert” functional bridge unit for constructing a bridge or culvert” functional.

–

5 expired utility patents tout efficiencies

–

Comments in media tout advantages of bridge unit design

34

Product Design – Functional

• In re Howard Leight Indus., LLC (TTAB 2006), holding

applicant’s mark “a bullet-shaped earplug with vertical axis, a rounded bottom and a radially outwardly flared top” functional rounded bottom, and a radially outwardly flared top functional because makes ear plugs more visible and safety checks easier

35

Product Design – Functional

• In re Richemont Int’l, S.A., (TTAB 2006), holding

configuration of watchcase functional because it can be turned to effect a reversing motion flipping or pivoting one side of to effect a reversing motion flipping or pivoting one side of watchcase to the other side

36

Taste/Flavor - Functional

• In re N.V. Organon (TTAB 2006), finding the orange flavor of

quick-dissolving medication functional based on advertisements indicating that the flavor encouraged patients to take medication indicating that the flavor encouraged patients to take medication – “[I]t is difficult to fathom exactly how a flavor could function as a source indicator in the classic sense, unlike the situation with other nontraditional trademarks such as color sound and with other nontraditional trademarks such as color, sound and smell, to which consumers may be exposed prior to purchase.”

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Color - Functional

• Brunswick Corp. v. British Seagull Ltd. (Fed. Cir. 1994),

affirming TTAB holding the color black for outboard motors is functional because it makes motor appear smaller and functional because it makes motor appear smaller and coordinates well with different boat colors

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Color - Functional

• In re Orange Comm., Inc. (TTAB 1996), finding colors

yellow and orange functional for public telephones and telephone booths because more visible at all times of day and emergency

39

Color - Functional

• Saint-Gobain Corp. v. 3M Co. (TTAB 2007), finding

shade of purple for abrasive/sand paper functional p p p p because it was byproduct of manufacturing process, used in color-coding by third-parties, and there was a competitive need to use color for coated abrasives

40

Color – Non-Functional

• Newborn Bros. & Co. v. Dripless, Inc. (TTAB 2002),

dismissed opposition to registration of the color “yellow” li d t “ lki ” j ti f ti lit l i d applied to “caulking guns,” rejecting functionality claim, and finding acquired distinctiveness

41

Sound - Functional

• In re Vertex Group LLP (TTAB 2009), holding alarm sound

from a child's safety bracelet unregistrable because it is a f ti l d ti l t th f b l t d functional sound essential to the use or purpose of bracelet, and it had not acquired distinctiveness

42

Inherent or Acquired Distinctiveness

• Seabrook Test for Inherent Distinctiveness:

– Whether mark is a common basic shape or design – Whether mark is a common basic shape or design – Whether mark is unique or unusual in field – Whether mark is merely a refinement of a commonly adopted and well-known form of ornamentation recognized by public for those goods – Whether mark is capable of creating a commercial e e a s capab e o c ea g a co e c a impression separate from any word mark

43

Acquired Distinctiveness

• Yamaha Int’l Corp. v. Hoshino Gakki Co. (Fed Cir. 1998)

– “[E]xact kind and amount of evidence necessary to establish h d i il d d th such secondary meaning necessarily depends on the circumstances of the particular case.” – As mark's non-distinctiveness increases, greater evidentiary showing pursuant to Section 2(f) is required

• Proof of Acquired Distinctiveness:
• Proof of Acquired Distinctiveness:

– Prior existing Principal Registration – Five years substantially exclusive and continuous use in commerce – Direct and circumstantial evidence

44

Acquired Distinctiveness –

Direct & Circumstantial Evidence

• Length of use:

– In re Gibson Guitar Corp., (TTAB 2001) (sixty-six years of use insufficient for guitar design) – In re Howard Leight Indst., LLC, (TTAB 2006) (fifteen years insufficient for earplug configuration) – In re F. Schumacher & Co., (TTAB 2004) (five years sufficient to prove 2(f) for rounded book binding constituting product to prove 2(f) for rounded book binding constituting product packaging)

• Significant Sales & Advertising Figures:

Yamaha Int’l Corp v Hoshino Gakki Co ($120K guitars sold – Yamaha Int’l Corp. v. Hoshino Gakki Co. ($120K guitars sold 1980-85, and 1 million promotional materials distributed sufficient for guitar-head design) Goodyear Tire & Rubber Co v Interco Tire Corp (TTAB – Goodyear Tire & Rubber Co. v. Interco Tire Corp. (TTAB 1998) ($56 million revenues and 740,000 tires sold insufficient for tire tread design)

45

Acquired Distinctiveness –

Direct & Circumstantial Evidence

• Significant Sales & Advertising Figures:

– In re Haggar Co., (TTAB 1982) ($5 million advertising; $150 million sales for five years sufficient for black swatch clothing million sales for five years sufficient for black swatch clothing label) – In re Kwik Lok Corp., (TTAB 1983) (several hundred thousands of dollars advertising insufficient for closure thousands of dollars advertising insufficient for closure device)

• Nature & Extent of Use:

Number of stores signs visitors viewers accounts – Number of stores, signs, visitors, viewers, accounts, consumers readers exposed to mark – Location of signage and billboards on major highways, intersections major malls and streets high visibility intersections, major malls and streets, high visibility – Number of products/units sold over years bearing mark

46

Acquired Distinctiveness –

Direct & Circumstantial Evidence

• Sophisticated Consumers & Industry Practice:

– Such consumers are accustomed to and “could expect color to serve a source-identifying function.” In re Chun Kee Steel & y g Wire Rope Co., (TTAB 2002) (color of rope and wire found to have acquired distinctiveness)

• Nature & Extent of Advertising:

g – Identify major national magazines, newspapers, television containing advertising – Number of issues rotation circulation and viewership Number of issues, rotation, circulation, and viewership information related to advertisements – Sponsorships and sporting events, and any media coverage

• “Look For” Advertising:
• Look For Advertising:

– Advertising and/or packaging that displays or touts mark (but not utilitarian or aesthetic features)

47

Acquired Distinctiveness –

Direct & Circumstantial Evidence

• Unsolicited Media & Internet Attention:

– Major national magazines, newspapers, television coverage mentioning or referring to mark, including “distinctive,” g g , g , “unique,” “well-known,” “famous” mark – Internet mentions or references to above

• Consumer Dealer Industry Affidavits/Declarations:
• Consumer, Dealer, Industry Affidavits/Declarations:

– Affidavits/declarations should specifically identify product, mark, and source-identifying function – Form affidavits/declarations unpersuasive

• Surveys, Market Research, and Consumer Studies:

– Evidencing public identifies mark as source indicator – Evidencing public identifies mark as source indicator

48

Product Packaging – Inherently Distinctive

• In re Creative Beauty Innovations, Inc. (TTAB 2000),

reversing PTO refusal of registration on the ground that the bottle packaging is not inherently distinctive and does not bottle packaging is not inherently distinctive and does not function as mark because the “award-winning” container design was found unique and unusual, and not a mere refinement of existing designs refinement of existing designs

49

Van/Auto Trade Dress – Inherently Distinctive

• In re PRG Parking Mgmt., L.L.C. (TTAB 2003), reversing refusal
• f “trade dress of a parking shuttle, comprising the overall color

yellow and a series of black circles appearing thereon” on ground it does not function as mark

• TTAB held trade dress “quite different” from examples in record

and described it as “original, distinctive, and very peculiar in nature” and “completely arbitrary” for the identified services

50

Motion – Inherently Distinctive

• Reg. No. 1928423 (Oct. 17, 1995) for computer

generated sequence showing the central element from several angles as though a camera is moving around the several angles as though a camera is moving around the structure – for motion picture films and other products

• Reg No 2092415 (Sept 2 1997) for moving image
• Reg. No. 2092415 (Sept. 2, 1997) for moving image

design mark, comprised of an approximately five second visual sequence, depicts a city skyline, sky and water, enclosed in two concentric circles containing the words enclosed in two concentric circles containing the words "BROADWAY VIDEO.” As the city skyline comes into view the words "BROADWAY VIDEO" rotate clockwise within the circles surrounding the city. The image concludes with a red lightning bolt entering the circle and forming a “V.”

51

Sound Marks – Inherently Distinctive

Animal Sounds:

Duck quacking word AFLAC

A i l S d Electronic Sounds:

a metallic resonating sound f ll d b t l t i b

Animal Sounds:

lion roaring followed by two electronic beeps and followed by a mechanical ratcheting sound

Musical Themes:

“I don’t wanna grow up, I’m a Toys R Us Kid”

Various Sounds:

the sound of burning

Human Voice: Pillsbury

Dough Boy Giggle y g methamphetamine

Single-note sounds:

synthesized vibraphone- musical note B

52

Touch Mark – Inherently Distinctive

• Reg. No. 3155702 (Oct. 17, 2006) for

wine

The mark consists of a el et te t red – The mark consists of a velvet textured covering on the surface of a bottle of

• wine. The dotted line in the drawing is

not a feature of the mark but is not a feature of the mark but is intended to show the location of the mark on a typical container for the goods; the dark/lower part of the goods; the dark/lower part of the container drawing shows the mark. The stippling in the drawing is not a feature

• f the mark, but a representation of

how one type of velvet covering may appear in visual form. The mark is a sensory, touch mark

53

Scents – Inherently Distinctive

• In re Clarke (TTAB 1990), holding floral plumeria blossom

fragrance non-functional and registrable for yarn

54

Holograms – (Some) Inherently Distinctive

• PTO allows registrations of hologram marks where application

covers hologram of a particular design or shape. But see In re Upper Deck Co., (TTAB 2001) (affirming refusal on ground applicant ( ) ( g g attempted to register more than one mark, since specimens show hologram may have myriad of shapes, sizes and contents)

Clothing Charge card and credit card services Trading cards Pharmaceutical prescription pads Cosmetic products

55

prescription pads Cosmetic products

Chippendales’s Cuffs and Collar – Not Inherently Distinctive

• In re Chippendales USA, Inc. (Fed. Cir. 2010), aff’d TTAB’s

application of the Seabrook factors to find that Chippendales’s Cuffs and Collar uniform is not inherently distinctive when used Cuffs and Collar uniform is not inherently distinctive when used in connection with adult entertainment services.

The mark consists of a three-dimensional human torso with cuffs around the wrists and neck collar comprising of a bow tie and neck collar comprising of a bow tie. The dotted lines in the drawing indicate placement of the mark. The matter shown by the dotted lines is not claimed as a part

• f the mark and serves only to show the

position of the mark.

56

Product Packaging –Not Inherently Distinctive

• In re Pacer Tech. (Fed. Cir. 2003), affirming TTAB holding

that bottle cap packaging does not function as mark and is not inherently distinctive because the “winged configuration is at inherently distinctive because the winged configuration is, at best, a variation or ‘mere refinement’ of a useful, basic design scheme for adhesive product applicator caps.”

57

Sounds – Not Inherently Distinctive

• Nextel Comm., Inc. v. Motorola, Inc. (TTAB

2009) – Long-running battle between Motorola and Nextel over chirp sound emitted by cell phones and two-way radios – TTAB held that chirp was not inherently distinctive for products because it was emitted in the normal course of cell phone emitted in the normal course of cell phone

• peration

– But capable of acquired distinctiveness for telecommunications services telecommunications services

58

Building Interior/Exterior – Not Inherently Distinctive

• Supp. Reg. No. 3310161 (Oct. 9, 2007) for vehicle washing

and cleaning services – The mark consists of a three-dimensional building design in the shape of an elongated arch having two flat end portions, with window panels comprising the surface of the flat end portions, and window panels comprising the surface of the lower portions of the sides of the arch

59

Building Interior/Exterior – Not Inherently Distinctive

• Supp. Reg. No. 3150142 (Sept. 26, 2006) for restaurant

services Th k i t f th i t i f b ildi ith – The mark consists of the interior of a building, with a checkered floor, checkered walls, counter with stools along half of one side of the building and in front of the kitchen, and b th l th i d th th id f th b ildi booths along the window on the other side of the building, and pendant lights hanging above counter and booths

60

Color & Interior Motif– Not Inherently Distinctive

• In re Hudson News Co. (TTAB 1996), aff’d, (Fed. Cir. 1997):

“Applicant's blue design motif for retail newsstand services is not inherently distinctive and therefore is not registrable not inherently distinctive, and therefore is not registrable without showing of acquired distinctiveness.”

61

Building Interior/Exterior

– Acquired Distinctiveness

• Reg. No. 1761655 (March 30, 1993) conducting a securities

exchange and related stock market services, since 1903 Th k i t f t ti f t l b ildi – The mark consists of a representation of an actual building facade with the wording "NEW YORK STOCK EXCHANGE" located beneath the pediment

62

Scents – Acquired Distinctiveness/Supp. Reg.

• Reg. No. 2463044 (June 26,

2001) for cherry and other scents for synthetic

• Supp. Reg. No. 3140692

(Sept. 5, 2006) for grapefruit, lavender, vanilla, peppermint, scents for synthetic lubricants and other scents for file folders, hanging folders, paper expanding files p p p g

63

Color– Acquired Distinctiveness

• Reg. No. 3317268 (Oct. 23, 2007) for the color

yellow used on wristbands in the nature of a bracelet for use in fundraising and education in the field of cancer, cancer research, cancer recovery and survival

• Reg. No. 2359351 (June 20, 2000) for a shade of

blue often referred to as “robin's-egg blue” for use

• n boxes for jewelry and other goods
• Reg. No. 2901090 (Nov. 9, 2004) for the color

chocolate brown, which is the approximate , pp equivalent of Pantone Matching System 462C, as applied to the entire surface of vehicles and uniforms for transportation and delivery of personal

64

property by air and motor vehicle

Motion – Acquired Distinctiveness

• Reg. No. 2793439 (Dec. 16, 2003) for a mark consisting of the

unique motion in which the door of a vehicle is opened. The doors move parallel to the body of the vehicle but are gradually doors move parallel to the body of the vehicle but are gradually raised above the vehicle to a parallel position – for automobiles

65

Sounds – Acquired Distinctiveness

• Reg. No. 2187082 (Sept. 8, 1998) for a combination of the

sounds of thunder and rain with a strobe representation of lightening - for automatic produce misting units for delivering a lightening for automatic produce misting units for delivering a timed water mist to fruits and vegetables in display cases

• Reg. No. 2495301 (Oct. 9, 2001) for a musical excerpt of

f t b f th d t (A d t fourteen bars from the second movement (Andante con tenerezza) of Howard Hanson's Symphony 2, op. 30 (Romantic)) - for live and broadcast musical concerts

66

Thank You!

Linda K. McLeod 202 408 6036 202.408.6036 linda.mcleod@finnegan.com Finnegan, Henderson, Farabow, g , , , Garrett & Dunner, L.L.P.

67

POLICING AND ENFORCING RIGHTS IN NON TRADITIONAL TRADEMARKS IN NON-TRADITIONAL TRADEMARKS

Stephen W. Feingold SFeingold@kilpatricktownsend com SFeingold@kilpatricktownsend.com (212) 775-8782

Trends in Trade Dress Enforcement

Registration of trade dress is highly subjective and unpredictable. Courts treat evidence of copying in vastly different ways. y Use of Brand Name on Trade Dress Can Sometimes Mitigate Likelihood of Confusion Mitigate Likelihood of Confusion. Functionality analysis remains uncertain If at First You Don’t Succeed, Try Try Again…..

69

Best Practices for Enforcing Trade Dress

• Difficult if not impossible to commission trade

dress watch report that extends beyond f applications for new marks.

• Train employees
• Capitalize on fan base among consumers
• Capitalize on fan base among consumers.

– Incentives

• Quarterly review of trade press and Internet

Quarterly review of trade press and Internet searches

• Update registrations to cover product expansion
• Be fully prepared before you start process

70

Miche Bag v. Marshall Group, 2010 WL 2175837 (N.D. Ind. 2010)

• Must balance need to move quickly with

requirement for preparation.

• Plaintiff filed for TRO on May 21; hearing set

for June 7; plaintiff seeks extension of TRO for June 7; plaintiff seeks extension of TRO to hear PI in August after expert testimony and expedited discovery.

71

Plaintiff Must Be Fully Prepared When Seeking TRO or Preliminary Injunction

“Simple arithmetic combines with Rule 65 to warn a movant that a TRO petition likely will lead to a f preliminary injunction hearing within five or six weeks

• f the TRO petition filing. One who can’t prepare in

that time should think twice before beginning the g g process.” Miche Bag, LLC v. Marshall Group, 2010 WL 2175837 WL 2175837

72

Registration Continues to Be Subjective Arbitrary Process

• In re Chevron Intellectual Property Group, 56 USPQ

2d 2026 (TTAB 2010) – Application of Seabrook factors finds that stylized pole spanner sign is not inherently distinctive. Notwithstanding 22 years of use insufficient Notwithstanding 22 years of use, insufficient evidence of acquired distinctiveness.

73

Registration Continues to Be Subjective Arbitrary Process

• In re Chippendales, 622 F.3d 1346 (Fed. Cir. 2010)

Finding TTAB was correct in finding mark not –Finding TTAB was correct in finding mark not inherently distinctive even though only argument advanced by examiner rejected. Si ll d lt d if

• Since all adult dancers wear uniforms, no

uniform can be inherently distinctive.

74

Wolf Appliances v. Viking Range Corp., 668 F. Supp. 2d 878 (D. Wis. 2010)

75

Facts

• Wolf long associated with red knobs on stoves even if

most retailer displays show standard black knobs.

• Viking offered consumers choice of stainless steel,

black, white or red through accessory kit. Finished product only shipped with stainless Finished product only shipped with stainless steel or black knobs.

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Was Viking Copying Defendant?

• One Viking dealer displayed range with red knobs

and poster above it: “WHO'S AFRAID OF BIG BAD WOLF?” “WHO'S AFRAID OF BIG BAD WOLF?”

• No other colors except red offered as accessory kit.
• Sufficient for jury to conclude intentional copying

Sufficient for jury to conclude intentional copying supporting finding of secondary meaning. – Also supports intent to confuse.

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Rodan & Fields v. Estee Lauder, 2010 WL 3910178 (N.D. Cal. 2010)

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• Rodan & Fields acquired by Estee Lauder 2003 and

bought back by founders in 2007. Pl i tiff f d t t iki i il it f t

• Plaintiff focused argument on striking similarity of two

products which prove copying and therefore confusion.

• Even if products were similar, presence of hang tag

with Clinique mark avoids possible confusion.

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Miche Bag v. The Marshall Group, 2010 WL 25239447 (N.D. Ind. 2010)

Sierra Bags Miche Bags

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Miche Bag v. The Marshall Group

Sierra bag Miche bag

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Defining the Trade Dress

• Miche Classic Bag

– Slightly-curved upper aspect of bag – Curved straps – Chrome, oval buckles – Rigid polygonal-shaped body – Rigid, polygonal-shaped body – Insert sides – Trapezoidal-shaped zipper ends – Removable decorative covers – Two tones

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Miche Bag v. The Marshall Group, 2010 WL 25239447 (N.D. Ind. 2010)

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Evidence of Copying

• Defendant did not send specs to Chinese

manufacturers but sketches and followed that with the actual Miche Bag.

• Of course, if copied functional elements that would be

protected protected.

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Functional?

• Miche has pending patent application for

interchangeable covers.

• Miche argues that other aspects of clamed trade

dress are not functional. “The way that functional elements are assembled may be protected as trade elements are assembled may be protected as trade dress.”

• No reference to trade dress in advertisements.

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• Presence of Sierra's and Miche name on respective

products not enough to avoid confusion. – Hang tag and interior label not visible to Internet uses who comprise large portion of Miche’s market market.

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Consider Third Circuit Versa Products Decision

• Each circuit uses multifactor test to evaluate likely
• confusion. Third Circuit has developed several

different variations of this multifactor test depending different variations of this multifactor test depending

• n circumstances.
• In Versa Products, 50 F.3d 189 (3d Cir. 1995), Third

Ci it ti d if i t t i Circuit questioned if appropriate to see copying as evidence of anything in trade dress claim.

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“Where product configurations are concerned, we must be especially wary of undermining competition. Competitors have broad rights to copy successful Competitors have broad rights to copy successful product designs when those product designs are not protected by (utility or design) patents. It is not unfair competition for someone to trade off of the good will competition for someone to trade off of the good will

• f the product. (Citing Kellogg v. National Brand).”

50 F.3d at 193

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According to the Third Circuit…..

• In the product configuration context, a defendant’s

intent weighs in favor of a finding of confusion only if f intent to confuse or deceive is demonstrated by clear and convincing evidence, and only where the product’s labeling and marketing are affirmatively p g g y misleading.

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Fiji Water Co. v. Fiji Mineral Water, 2010 WL 3835673 (C.D. Cal. 2010)

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Distinctiveness

• Plaintiff owns trademark registration issued in 2004

for bottle based on acquired distinctiveness.

• Court found that bottle was inherently distinctive.

– Why did Plaintiff argue this point after obtaining 2(f) registration? 2(f) registration?

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Functionality

• While square shape of bottle allows more bottles to

be shipped in single container, overall appearance is f non-functional.

• Plaintiff did not advertise shape of bottle in its

advertisements advertisements.

• This fact, however, did not impact finding on acquired

distinctiveness because of sales and marketing expense.

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Copying

• Close similarity of bottles here permits inference of

copying and therefore bad faith intent. – Effort to rely on advice of counsel failed because letter from counsel was not signed.

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How Did Plaintiff Do It?

• Eveready survey evidence showing 24% confusion

rate was compelling evidence of confusion.

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If At First You Don’t Succeed……

• General Motors Co. v. Urban Gorilla, LLC, 2010 WL

5395065 (D. Utah 2010)

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General Motors Co. v. Urban Gorilla LLC

• GM has a registered trademark in the shape of the H1

Hummer model, the Hummer nose and grill area, the word “Hummer ” and the slogan “Like Nothing Else ” Hummer, and the slogan Like Nothing Else.

• In 1997, UG predecessor in interest launched a line of

“body kits,” which customers install on a “donor” truck chassis A kit costs about $10 000 (less than 1/10th the cost

• chassis. A kit costs about $10,000 (less than 1/10th the cost
• f a Hummer).
• In 1998, predecessor to GM sent a C&D letter to

predecessor of UG claiming infringement of its registered predecessor of UG, claiming infringement of its registered trademarks “Humvee,” “Hummer,” and the ”Hummer Vehicle Nose Design.” Predecessor agreed to change its product line and discontinue use of surplus Hummer parts p p p in its kits.

• No further contact until 2006, when GM sued UG.

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2007: Court Denies Application for Preliminary Injunction

• 10th Circuit affirms denial of preliminary

injunction finding that there was evidence that f trade dress might be functional, that there was no likelihood of confusion given different markets, and no evidence of actual dilution based on standard in place at that time. 500 F.3d 1222 (10th Cir. 2007).

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General Motors Co. v. Urban Gorilla LLC (on remand) 2010 WL 5395065 (D. Utah 2010)

– Case tried in September of 2008. p – Additional briefs requested and submitted in February 2010 and again in July of 2010. Decision issued December 27 2010 – Decision issued December 27, 2010.

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Dilution Analysis

• Court found that it must apply amended dilution

law to determine request for injunctive relief but f

• ld dilution law to determine if monetary

damages should be awarded.

• Uncontested that trade dress was famous

Uncontested that trade dress was famous.

• Court compared completed kits because that was

what Defendant advertised.

• Three of five kits were strongly similar to

Hummer trade dress.

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Trademark Analysis

• Trade Dress is registered so defendant has

burden to prove functionality.

• While some features of trade dress are functional,

defendant failed to show it was impossible not to defendant failed to show it was impossible not to use alternative designs.

• Tracks dilution analysis to conclude three of five

kits infringe but two do not.

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Hummer v. Urban Gorilla LLC

No Infringement of Hummer Trade Dress (combat and slant black kits) Dilution of Hummer Trade Dress (wagon, soft top, hard top)

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Take Away

• Brand owner seeking to protect trade dress must

invest in protection brand management prior to f f commencement of enforcement program.

• Must balance need to avoid functionality finding

with benefit of advertising that customer should with benefit of advertising that customer should look to the trade dress as a designation of origin.

• Secure inherently distinctive registration if

possible.

• Be prepared with survey before you start.

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POLICING AND ENFORCING RIGHTS IN NON TRADITIONAL TRADEMARKS IN NON-TRADITIONAL TRADEMARKS

Stephen W. Feingold SFeingold@kilpatricktownsend com SFeingold@kilpatricktownsend.com (212) 775-8782