Configuration / Shape / Failure to Function

The mark consists of a two-dimensional design of a light gray, generally rectangular body with rounded ends. The top of the body features a light gray rectangle on each side. The left side of the body features a dark gray cross within a circle. The dark gray cross features a triangle on each arm of the cross and a central circle. The center of the body features two dark gray rounded rectangles. The right side of the body features two light gray rounded rectangles within a dark gray circle. One of the light gray rounded rectangles contains two light purple circles and the other light gray rounded rectangle contains two dark purple circles.


OA 2/6/19: Failure to function:
The applied-for mark, as shown on the specimen, does not function as a trademark because it is merely a drawing of the actual goods.  Additionally, as shown in the specimen, the mark appears on the packaging of the goods as a picture of the goods itself to show consumers what the goods look like.  Consumers would not likely view the mark as it appears on the box as source-identifying mark/brand name.


Fed Circ Rejects Webpage As Specimen of Trademark Use

Webpage promoting textile didn’t provide means of completing a sale and thus is not a ‘point of purchase’ display (see webpage in decision below). I agree with TTABlog – maybe the Board needs to be more flexible in the era of the Internet.

TTAblog discussion here.


Texts of Documents in MillerCoors v. Anheuser-Busch (the Super Bowl corn syrup ads)

MillerCoors alleges that Anheuser-Busch tv ads (which debuted on the Super Bowl) deceive consumers into believing that MILLER LITE or COORS LIGHT contain corn syrup (specifically, high-fructose corn syrup). Attached below are MillerCoors’ brief in support of its motion for a preliminary injunction, and the report of its expert, discussing his study that concludes that the commercials trigger negative sentiment as to MillerCoors and to corn syrup.


Recent Trademark Tweets


RXD Media v IP Application Development – EDVA Decision Affirms TTAB Decision re IPAD Trademark


SDNY: No Trade Dress In Advertising Lay-out (Laurel Road v Commonbond)

Plaintiff Laurel Road, a bank, ran an advertising campaign. A typical ad looked like this:

A competitor, Commonbond, ran ads, one of which looked like this:

Both banks ran outdoor display ads, sometimes in similar locales, such as the suburban rail-line, MTA North.

Plaintiff brought a trade dress claim, alleging a trade dress that consists of:

  1. a color palette with a dark background;
  2. a statement in large, light-colored, sans serif font at the top of the advertisement;
  3. a “hierarchical” typography with smaller, sans serif font under the large typeface sentences;
  4. center or left-side alignment; and
  5. a colored line under a sub-set of words in the large typeface sentences.

Plaintiff brought a motion for a preliminary injunction.

Held: All of plaintiff’s claimed elements, ‘defined at a high level of generality’, can be readily found in other advertisements. In fact, Defendant showed that it had used most if not all of the claimed elements, prior to plaintiff. “Because the Trade Dress is composed exclusively of commonly used elements, which have all been used in combination previously, the Trade Dress is likely generic . . .” Alternately, the alleged Trade Dress is functional, as it consists of features useful to advertising or educating consumers about the product.

Comment: The ‘look and feel’ of an advertising campaign is potentially protectable. Philip Morris successfully asserted rights in the Marlboro man ‘motif’ of a cowboy on a horse. Harlequin established rights in the layout of the covers of its romances. However, Haagen-Dazs was unsuccessful in preventing Frusen Glade from also pretending to be Scandanavian.


Recent @trademarkblog Retweets


Failure or Success At Functioning As A Trademark

Maybe I’m relying on anecdata but I think I’m seeing more “Failure-to-Function” fact patterns lately, both in my practice and in TTAB decisions. It could be because trademark lawyers encourage clients to protect everything, so in response, clients attempt to protect everything (including taglines, slogans, catch-phrases, etc.). The failure-to-function issue turns on whether, given the context in which consumers encounter the term, they perceive a term as a source indicator, or as ornamentation of or information about the goods/services. You can read the two recent TTAB decisions below, but sometimes it’s easier to just show than to explain. In this specimen, OOPS! WRONG ANSWER does not function as a trademark, but rather provides information about the service (a trivia quiz), so this application was denied:

In contrast, here, while SMILE MORE appears as ornamentation on the t-shirt itself, it also functions as a source indicator, identifying the store on the top of the screen.


Recent Tweets and Retweets from @trademarkblog


Lanham Act Section 43(a) Class Action (sic) re KONA Coffee

Kona is a coffee-growing region in Hawaii. The Department of Agriculture of Hawaii has a registered certification mark for the mark 100% KONA COFFEE and design. Many entities own registrations for coffee including the KONA element, most disclaiming the term, some slipped by without. Four growers of Kona coffee (from Kona) have now sued 17 named defendants, including the largest food purveyors in the U.S. (i.e. Amazon and Walmart), for selling coffee allegedly mislabeled as Kona coffee. Interestingly, this is styled as a class action, under Section 43(a) of the Lanham Act, alleging both false designation of origin and false advertising.

Section 43 is not a consumer-oriented provision. Plaintiffs must themselves engage in U.S. Commerce (but see Belmora). Paragraph 33 alleges that between 600 and 1000 entities are injured by defendants’ actions. These all allegedly sell Kona-grown coffee.

Here is an article on whether common law certification marks might be enforceable.

Background: A filing from a recent class action regarding Kona Coffee here and a new article on a prior dispute regarding the KONA name from the 90’s here