Category Archives: Trademarks and Brands

2nd Circuit rules that color can serve as a trademark in the fashion industry, but limits scope of mark for red-soled shoes

Can a single color serve as a trademark in the fashion industry?  According to a recent court decision, the answer is “yes” if certain conditions apply.

In Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc., the U.S. Court of Appeals for the Second Circuit overturned a lower court’s holding that single colors cannot be protected in the fashion industry.  The case revolved around Louboutin’s federal trademark registration for the color red in the form of a lacquered red sole on footwear.  After Yves Saint-Laurent (YSL) launched a line of monochromatic shoes, Louboutin sued, asserting that YSL’s red shoe infringed Louboutin’s mark because the YSL shoe included a lacquered red sole.  The lower court held that Louboutin’s trademark registration was inherently functional and thus likely invalid, and it denied Louboutin’s motion to enjoin YSL’s sales of the monochromatic shoe. Continue reading

Distilling trade dress law: Sixth circuit rules Maker’s Mark dripping wax seal is entitled to trademark protection

Alcohol packaging and trademark/trade dress law have intersected quite a few times in the news this month.  First, as Daniel Corbett recently reported, the maker’s of Daily’s cocktails sued Captain Morgan producer Diageo North America Inc. in a suit alleging that Diageo’s single-serve cocktail pouches infringed the plaintiff’s design patents and trade dress.

Then, the U.S. Court of Appeals for the Sixth Circuit ruled in favor of Maker’s Mark Distillery, Inc. in its complaint alleging that the makers of Jose Cuervo tequila infringed Maker’s Mark’s trademark and trade dress rights by featuring a bottle having a dripping red wax seal.  In an opinion that provides not only a discussion of trade dress law but also an entertaining history of American bourbon manufacturing, the Court considered whether the dripping wax seal was entitled to trademark protection and concluded that the answer was ‘yes”.

In its defense, Cuervo argued that the seal could not be protected because it was “aesthetically functional.”  The Court noted that “a trademark is functional ‘if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.'”  Although the Court did not affirmatively state whether or not it even recognized the doctrine of aesthetic functionality, it upheld Makers’ Mark’s rights because others could easily sell their products without using the dripping red wax seal:

The district court was not convinced “that it would be difficult or costly for competitors to design around” the mark and we do not disagree. There is more than one way to seal a bottle with wax to make it look appealing, and so Cuervo fails the comparable alternatives test. As to the effective competition test, the district court found that “red wax is not the only pleasing color of wax . . . nor does it put competitors at a significant non-reputation related disadvantage to be prevented from using red dripping wax.

Noting that the USPTO awarded Maker’s Mark a trademark registration for a non-color-specific version of the seal in connection with other food products, the court then turned to the question of infringement.  Makers’ Mark argued that Cuervo’s use of the red dripping wax seal on tequila created “confusion of sponsorship” as to the source of the goods.  Although there was no evidence of actual consumer confusion, the Court found that Makers’ Mark’s trade dress rights were strong due to over 50 years’ use of the dripping red wax seal.  The Court also found similarity between the accused and original marks, as well as relatedness in the goods, although the Court gave these factors less weight than it gave to the strength of the mark.  On this basis, the Court ruled in favor of Makers’ Mark.

The opinion provides some guidance for companies who offer products that may appear to be similar to competing products.  First, although Markers’ Mark held a USPTO trademark registration for the dripping bottle seal, the registration was color-agnostic and only listed steak sauce (not alcohol)  as the relevant goods.  Thus, the opinion indicates the absence of a USPTO registration  covering the goods in question does not necessarily mean that a party is not entitled to trademark or trade dress rights if the mark is sufficiently strong.

Second, the Court’s focus on strength of the mark shows that consistent use of a trademark over time, along with extensive marketing efforts, can provide a trademark owner with substantial leverage when others use similar marks. Franchisors, suppliers and others who own trademarks should adopt and enforce strict and consistent trademark usage policies before allowing others to use those marks.  Otherwise, the trademark owner may end up with little or no trademark rights — and no ability to keep infringers out of the market.

[A version of this post originally appeared in Franchise Law Update, a blog hosted by Fox Rothschild’s Franchising, Licensing and Distribution Practice]

Acronyms as Trademarks

Last week a client contacted me and explained that many of its marketing materials refer to the company by its acronym rather than its full name.  The client asked me about the pros and cons of registering the acronym as a trademark.

Almost on cue, after the call my email inbox received a message about a new article by my colleague Seth Kramer entitled “Use of Acronyms as Trademarks and Domain Names.”  The article, published in the May 8, 2012 edition of the Legal Intelligencer, includes some important factors for companies to consider before registering an acronym as a trademark:

For starters, the company must actually use the acronym to distinguish its goods or services from those provided by others and indicate their source.  Moreover, the acronym itself must have sufficient distinctiveness.

In addition, the article notes that “[i]n the context of acronyms, it is important to note that a trademark’s strength is determined not by the acronym itself, but by the term it signifies.”

The article is available on the Legal Intelligencer website, linked here.  (Subscription may be required for the full article.)

Beware of Non-U.S. Intellectual Property Scams

Quite frequently, clients send me copies of official-looking documents that they have received relating to a non-U.S. patent, trademark or domain name.  The documents typically describe an upcoming deadline and request that the client pay a fee in order to keep the patent, trademark or domain name in effect.

My advice to clients who receive these letters is generally this:  “if you didn’t receive it from your attorney, it’s probably a scam.”

My colleague Christopher Kinkade recently published a useful article describing the USPTO’s official warning about such scams for trademarks, along with a companion article relating to domain name registration scams.  To read Chris’ articles, click here (trademarks) or here (for domain names).

He may be a cowboy, and he may be naked, but court rules that it’s not trademark infringement

The U.S. District Court for the Southern District of New York recently issued an opinion and order in which it dismissed charges of trademark infringement and dilution involving the NAKED COWBOY trademark.  In the suit, the New York City street performer known as the “Naked Cowboy” sued CBS after an episode of the soap opera The Bold and the Beautiful featured a character who “for several seconds, appeared only in his briefs, boots, and a cowboy hat, while singing and playing the guitar.”  In the suit, the Naked Cowboy charged CBS with trademark infringement, trademark dilution, unfair competition, and various state law claims.

CBS moved to dismiss the claim, and the court granted CBS’ request.  The court noted that the soap opera episode never used the phrase “naked cowboy”, that the character’s costume did not include any logos or phrases that the plaintiff uses, and that there was no actual or likelihood of confusion between the soap opera and the plaintiff’s goods and services.  The plainitiff also tried to bring a claim for violation of his right to privacy, but the court noted that the right of privacy “does not extend to fictitious characters.”

The case is Naked Cowboy Enterprises v. CBS, Inc. (SDNY Feb. 23, 2012)

How Long Does Patent and Trademark Prosecution Take? (2011 update)

The USPTO recently issued its Performance and Accountability Report for FY 2011.  So, it’s time for my annual update to the commonly asked question:  “how long will it take for my patent or trademark application to grant?”   Here are a few highlights from the USPTO report:

Patents:  The average time between filing and first Office Action is 28.0 months, an increase of 2.3 months as compared to FY 2010 data.  However, the average total pendency (i.e., time from the filing date to patent issuance or abandonment) of a patent application is 33.7 months, representing the first reduction in average total pendency since at least  2005.   As Continue reading

Anheuser-Busch seeking trademarks for telephone “area code” beers

Last month’s news that Anheuser-Busch Inc. has applied for sixteen USPTO trademark registrations covering major city area codes not only suggests that the company has plans to market “local” brews , it also sheds light on the topic of geographic descriptiveness in trademark law.

In May 2011, A-B filed USPTO applications to register sixteen 3-digit number combinations as trademarks for use in connection with beer.  The combinations correspond to the area codes of sixteen U.S. cities: Charlotte (704), Cleveland (216), Dallas (214), Denver (303), Houston (713), Las Vegas (702), Miami (305), Nashville (615), Philadelphia (215), Phoenix (602), Pittsburgh (412), San Diego (619), San Francisco (415), St. Louis (314), and Washington, D.C. (202).

The USPTO’s Trademark Manual of Examining Procedure states that “a mark is primarily geographic if it identifies a real and significant geographic location, and the primary meaning of the mark is the geographic meaning.”   If so, the USPTO may reject the mark as geographically descriptive, or the applicant may opt to register the mark on the USPTO’s supplemental register, rather than the principal register.  However, the USPTO has not issued specific guidance on when (or even if) an area code is considered “primarily geographic.”

If successful, A-B would not be the first brewer to use an area code as a beer name.  However, it appears that A-B would be the first to secure rights to the area code alone, without other words or numbers in the mark.   Continue reading

USPTO postpones fast track patent examination program, suspends plans for Detroit satellite office

In a message to USPTO employees on April 21, USPTO director David Kappos announced that congressional budget cuts will require the agency to reduce or postpone several recently-announced programs.  Reductions that are most likely to affect USPTO users are:

  • the Track One expedited examination program, which was scheduled to take effect May 4, 2011, is indefinitely postponed;
  • plans for a Detroit satellite office are tabled, along with considerations of any other satellite offices; and
  • new examiner hiring is frozen and examiner overtime is suspended until further notice.

The cutbacks are likely to impair the USPTO’s efforts to reduce the time that it takes for a patent application to grant.  More details will be added as they become available.

USPTO to remain open if federal government shutdown occurs

According to an April 7, 2011 press release from the United States Patent and Trademark Office:

In the event of a government shutdown on April 9, 2011, the United States Patent and Trademark Office will remain open and continue to operate as usual for a period of six business days – through Monday, April 18, 2011 — because the USPTO has enough available reserves, not linked to the current fiscal year, to remain in operation until then. Should a shutdown occur and continue longer than the six-day period, we anticipate that limited staff will be able to continue to work to accept new electronic applications and maintain IT infrastructure, among other functions.

A Taste of Trademark Law

A recent court opinion from the Eastern District of Pennsylvania concluded that a gift basket vendor could not claim exclusive rights to the phrase “A Taste of Philadelphia,” despite holding a federal trademark registration covering the phrase.

In R.J. Ants LLC v. Marinelli Enterprises, Inc., two Philly rivals squared off in a dispute over which party could use the phrase “A Taste Of . . .” to promote local treats such as pretzels, Tastykakes, Bookbinder’s soup, and Frank’s Black Cherry Wishniak soda.  R.J. Ants uses the mark “A Taste of Philadelphia” to sell a variety of products in gift baskets.  Marinelli Enterprises operates and franchises retail storefronts under the name “A Taste of Philly Hand Twisted Soft Pretzel Bakery.”  When attempts to negotiate a coexistence agreement failed, the parties found themselves in court to resolve the dispute.

The court considered the Third Circuit’s ten factors for finding a likelihood of confusion from its 1983 Interpace Corp. v. Lapp Inc. decision, and the court concluded that both parties could continue using their marks.  

In particular, despite the plaintiff’s federal trademark registration, the court found the plaintiff’s mark to be weak because (i) it was geographically descriptive, (ii) several others used variations of “Taste of Philadelphia” to sell food products, (iii) the plaintiff spent very little to advertise with the mark, and (iv) the plaintiff had not earned a profit using the mark for several years. 

The court also noted that each party targeted different customers (gift basket buyers v. walk up bakery customers), with different products having different price points (e.g., $5 pretzels vs. $50 -$300 gift baskets) and different marketing channels.