Nonfunctional Trade Dress

Trade dress can include the shape or configuration a product or packaging. Trade dress is protectable if, among other things, it serves to identify a source of goods or services, as a trademark does, and it is nonfunctional. The question of what is nonfunctional was addressed in a recent case involving a french press coffee maker.

Bodum USA sued A Top New Casting alleging infringement of Bodum’s trade dress in the product configuration of its Chambord french press coffee maker. Below is a comparison of the products at issue with the Bodum’s product on the left and A Top’ s product on the right (from the court opinion):

Bodum claimed trade dress protection in the overall appearance of its product, with the following elements identified as contributing to that appearance: “the metal band surrounding the carafe that forms support feet and the handle attachment, the domed lid, the rounded knob atop the plunger, and the C‐shaped handle.”

A Top argued that Bodum failed to establish that these claimed features where not essential to the product’s use and therefore nonfunctional. Yet the court distinguished the common meaning of functional from the meaning used in trade dress law.

The court said that “to establish it has a valid trade dress, Bodum did not have to prove that something like a handle does not serve any function.” The court continued, “It merely needed to prove that preventing competitors from copying the Chambord’s particular design would not significantly disadvantage them from producing a competitive and cost‐efficient French press coffeemaker.”

According to the court, Bodum was not claiming that any French press coffeemaker with a handle, a domed top, or metal around the carafe infringes on its trade dress. Instead it was objecting to the overall appearance of A Top’s product, which included “the same shaped handle, the same domed lid, the same shaped feet, the same rounded knob, and the same shaped metal frame as the Chambord.”

The court found that Bodum presented sufficient evidence for a jury to conclude that the claimed trade dress was nonfunctional under trade dress law, even though the claimed trade dress included elements that had a function.

Citation: Bodum USA, Inc. v. A Top New Casting Inc., No. 18-3020 (7th Cir. 2019).

Domain Name Registration Alone Does Not Establish Trademark Rights

You’re ready to launch a new business, product, service, or project. You have a name. The domain name for the name you chose is available. So you register it. But you haven’t lunched a website at the domain name you registered. Nor have you done anything more, other than prepare internally to launch. Have you established trademark rights in the name? Probably not.

In the case of Brookfield Communs., Inc. v. West Coast Entm’t Corp. 174 F.3d 1036, 1052 (9th Cir. 1999), Brookfeild sued West Coast alleging that West Coast’s planned use of Moviebuff.com infringed Brookfield’s trademark rights in MovieBuff.

West Coast argued that it had trademark priority (first use) by registering the domain name MovieBuff.com in February 1996 before Brookfield’s first use of MovieBuff in August 1997 in connection with its online database. However, West Coast had not yet launched a website at Moviebuff.com .

The court noted that the mere registration of a domain name with an intent to use the domain name as a trademark commercially does not establish trademark rights. Therefore, Brookfield’s first use of MovieBuff in August 1997 predated any valid trademark use of MovieBuff by West Coast in connection with its website. Therefore Brookfield had priority in the MOVIEBUFF mark. And West Coast’s “I was first” defense failed.

The court ordered that West Coast be enjoined (prohibited) from using MOVIEBUFF as a trademark and from using MOVIEBUFF.com.

The registration of a domain name is an important step in launching a project. If you can’t get the domain name, you might have to go with a different name for the project. However, registration of the domain name alone is not sufficient to establish trademark rights. To establish trademark rights, you’ll need something more, such as filing a federal trademark application (often preferred), or launching a website at the domain name providing goods and/or services under the trademark so that the name is in actual use as a trademark.

P.S. Also, forming a corporation or LLC with the name alone does not create federal trademark rights.

Do Nothing and Wait

When there is a problem or a potential problem, the first desire is often to fix it and fix it now. However, sometimes the best approach is to do nothing and see if the problem solves itself.

Suspended Over Intent-to-Use Trademark Application

For example, consider the case where a trademark application is suspended based on a prior filed intent-to-use trademark application that is pending. If the owner of the prior filed intent-to-use trademark application has not filed a statement of use, it is possible that the owner will not file a statement of use. If a statement of use is not filed within the applicable time limit, then the application will be abandoned and no longer an obstacle to the later filed trademark application proceeding to registration.

It is not unusual for an owner of an intent-to-use application to abandon the application if their plans for using the mark fail to materialize. However, an owner of an intent-to-use application can extend the deadline to file a statement of use up to 3 years from the notice of allowance date. Therefore, this strategy of doing nothing, can involve a long wait time and a long period of uncertainty for the later filed trademark application owner.

Yet, if the later filed trademark application owner reaches out to the prior filed application owner the prior filed application owner might realize that their mark is more important (because someone else is interested in it) than he/she/it previously recognized. Therefore, contacting the trademark application owner might result in the filing a statement of use and perfecting the application, when he/she/it otherwise might not have otherwise done so. Therefore, doing something can be risker than doing nothing and waiting.

Refused Over Registration Nearing Renewal Deadline

As another example, consider the scenario where a trademark application is refused based a prior trademark registration, but the deadline for renewing the prior trademark registration is approaching. If the owner of the trademark registration does not file the renewal documents and pay the renewal fees, the trademark registration will be canceled, and no longer an obstacle to registration. Therefore, it may be best to wait to see if the renewal occurs, if time is available before an office action response top the refusal is due or otherwise.

Like in the prior example, contacting the trademark registration owner may lead the owner to renew the trademark registration–realizing it has value–when he/she/it otherwise would not have renewed.

Waiting can be uncomfortable because it allows tension and uncertainty. However, sometimes it is the best option.


The Power of a Standard Character Trademark Registration

Cheryl Bauman-Buffone applied to register the mark JUST SAY IT in the stylized form shown below.

Nike opposed the registration based on its JUST DO IT trademarks in Nike, Inc. v. Cheryl Bauman-Buffone, Op No. 91234556 (TTAB 2019).

When the Trademark Trial and Appeals Board considered the similarities between the marks, it said, “The stylization of Applicant’s mark is essentially irrelevant, because Opposer’s [Nike’s] mark is registered in standard characters and typed forms, and could be displayed in any font or size, including in a manner similar to Applicant’s display of JUST SAY IT.” (emphasis added).

A standard character mark usually provides the broadest protection over the underlying words/characters of the mark. This is so, because the registration is not limited to any particular font or stylization of the mark. My prior article on Words or a Logo or Both in a Trademark Application? provides more factors to consider when choosing what to include in a federal trademark application.

Ultimately, the Board refused the registration Bauman-Buffone’s mark. While the similarity of the marks was not the only factor that lead to the refusal to register, it was an important factor.

Register the Mark You Will Actually Use, Not Unused Similar Variations

Trademark rights are connected with actual use of a mark. Sometimes that use starts before an federal trademark is filed and sometimes it starts after a federal (intent to use) trademark application is filed. But speculating in trademark applications on marks that you don’t intend to actually use is useless.

This brings me a federal trademark application filed on the following mark:

double doink doubledoink DOUBLE DOINK DOUBLEDOINK Doubledoink Double Doink

That whole thing is the mark of the application.

The applicant included many variations of capitalization and spacing of the two words Double Doink. Let’s break down the mark:

  1. double doink
  2. doubledoink
  3. DOUBLE DOINK
  4. DOUBLEDOINK
  5. Doubledoink
  6. Double Doink

The applicant has six variations of Double Doink in the mark. But you don’t need to, and shouldn’t do this to protect the mark “Double Doink.”

Maybe the applicant here really is going to use all six variations, together, and in that order, as his mark. But that seems very unlikely.

You should pick the way that mark will be used, use it consistently in that way, and apply to register in that way. Then let trademark law do the rest. Trademark law often protects against not only identical copying of a mark, but also against confusingly similar marks.  Is “Doubledoink” confusingly similar to “Double Doink” for the same goods/services? Probably.

In many cases, a trademark registration on Double Doink would likely protect the owner from others using the mark with minor different capitalization or spacing–e.g. similar variations of the mark–in connection with the same goods/services. For example, the USPTO found CROSS-OVER to be in conflict with a registered mark CROSSOVER. The hyphen made no difference.

There are exceptions to every rule, but like minor punctuation differences, minor spacing and capitalization differences alone often do not distinguish marks because marks are compared in at least following ways: (1) appearance, (2) sound, and (3) connotation. A similarity in any one of those aspects could be enough to find that the marks are similar. Many times you can’t hear spacing and capitalization differences when a mark is spoken, e.g. its sound. Further, the spacing and capitalization may not sufficiently distinguish the marks visually. Is “Doubledoink” that much different visually from “Double Doink”? No.

Pick a way to present and use your mark. Use it and apply to register it in that way. And let trademark law do the work of stopping the use of similar variations of your mark.

Thanks to Erik Pelton for pointing out this application.

Difficulty of Name Changes: Country Moves to Change Name to End 27 Year Dispute with Greece

It is not uncommon for trademark disputes to resolve with one party agreeing to stop using the mark that is in dispute. If the mark is the party’s name, then a name change is required.

Name changes are usually not easy. Consider the need to change items having the mark, including advertisements, signs, letterhead, business cards, brochures, packaging, marked products, and a website. Further, a name change may mean a loss of customer recognition of the brand and the need to educate customers on the new name.

As a result, it is no surprise that a party is usually not happy about being required to change its name. So too when a country is pressured to change its name.

NPR reports that the parliament of the country of Macedonia (Republic of Macedonia) approved changing the country’s name to North Macedonia to appease Greece. NPR reports on why Greece objected to Macedonia’s name:

Greece already contained a region called Macedonia, which incorporates most of the territories of the eponymous ancient kingdom that was led centuries ago by Alexander the Great. Both Greece and its northern neighbor consider Alexander, and the name, integral parts of their identity…

Previous Greek governments have also claimed the tiny Republic of Macedonia might use the name to make territorial claims on its province.

As a result of this name dispute, Greece has blocked Macedonia’s entry into both NATO and the European Union. Greece and Macedonia have been in a dispute over the name since 1991 when the Republic of Macedonia broke away from Yugoslavia.

Opponents of the name change strongly condemned the vote in parliament using words such as “traitors” and “treason,” according to NPR.

Name changes are often hard. However, apparently the benefits of a possible path to NATO and EU membership outweigh the resistance to a name change in the Republic of Macedonia. Similarly in trademark disputes, when a name change is agreed, the business usually sees the benefits arising from a change outweighing the costs.

Amazon Marketplace Problems and the Case For Registering a Seller Name as a Trademark with the USPTO

Verge reports on the problems sellers encounter from false claims and sabotage efforts of other sellers on Amazon’s marketplace.

The Verge article is titled Prime and Punishment: Dirty Dealing in the $175 Billion Amazon Marketplace. It reports that one seller registered a trademark for his watch brand but not the name of his Amazon seller account. Another person then applied and received a trademark registration from the USPTO over the Amazon seller’s account name, registered it with Amazon, and then used the registration to convince Amazon to kick the legitimate seller off and take over his name on Amazon. The article describes it this way:

Over the following days, Harris came to realize that someone had been targeting him for almost a year, preparing an intricate trap. While he had trademarked his watch and registered his brand, Dead End Survival, with Amazon, Harris hadn’t trademarked the name of his Amazon seller account, SharpSurvival. So the interloper did just that, submitting to the patent office as evidence that he owned the goods a photo taken from Harris’ Amazon listings, including one of Harris’ own hands lighting a fire using the clasp of his survival watch. The hijacker then took that trademark to Amazon and registered it, giving him the power to kick Harris off his own listings and commandeer his name.

…Then came the retaliation: tired of Harris’s futile attacks, the imposter booted Harris off his listings entirely, reporting him to Amazon for infringing on his own brand.

Therefore, registering with the USPTO, your amazon account name as a trademark, is a step to try prevent this type of terrible problem from occurring.

Weak Marks Leave Only Stylistic Elements Protected: DIY Auto Edition

It is usually not good when the trademark office considers the whole text of your mark to be generic, as the registration for DIY AUTO REPAIR SHOPS demonstrates below. When you want to use a generic element in your mark to describe the goods or services offered, it is usually better to combine that with a unique text element so you have something protectable, to which your reputation can attach.

DIY AUTO, LLC applied to register the DIY AUTO and design, shown below, for the services of providing a website featuring information about automotive maintenance and repair service.

The Examining Attorney refused registration based on DIY AUTO REPAIR SHOPS and design, shown below, registered for the services of a do-it-yourself vehicle repair shop.

 

The Trademark Trial and Appeals Board reversed the refusal and allowed the application on DIY AUTO to register. The board said that “we find that the purchasing public, who are interested in repairing their own vehicles, will understand the terms DIY, DIY AUTO, and DIY AUTO REPAIR in the generic sense, rather than as indicating a particular source of do-it-yourself auto repair services.”

Here, given DIY AUTO and DIY AUTO REPAIR are generic, all that is left for the trademark registrations to protect is the stylistic (logo) presentation–i.e. the blue and white badge-like logo of the first mark and the orange and blue badge-like logo of the second mark–but not the text alone. That’s not a lot of protection considering consumers can use or encounter the mark audibly or orally. Indeed, words are often used by customers to refer to or request goods/services. See e.g. TMEP 1207.01(c)(iii).

The terms DIY AUTO are telling customers what they get in connection with auto repair and auto repair information, but the mark owners are not staking out any substantial ground that can distinguish one source of goods/services from another, apart from the graphics. Each of these marks are or will be registered, but the scope of protection is narrow.

It would be better if these parties attached DIY AUTO to a protectable text mark, e.g. ACME DIY AUTO. That way each could build brand recognition in the protectable text (ACME) and also inform customers what they get (DIY AUTO).

Five Years: Most Relevant Time Period for Considering Third Party Trademark Use, Federal Circuit Says

Converse filed a complaint at the International Trade Commission (ITC) seeking an order blocking the importation of several shoes that Converse alleged to infringe Converse’s trade dress rights in three design elements on the mid-sole of Converse’s All Star shoes.

Converse asserted trade dress rights in the “design of the two stripes on the midsole of the shoe, the design of the toe cap, the design of the multi-layered toe bumper featuring diamonds and line patterns, and the relative position of these elements to each other.”

Here, the design elements of the shoe are product design trade dress, for which the owner must show that these design elements have acquired distinctiveness in the relevant market place. If the owner fails to show acquired distinctiveness, then it does not have trademark rights to enforce.

Third party use of a mark is relevant to whether a trademark has acquired distinctiveness in the relevant market place. If many third parties use a mark, then it is less likely that this mark will be recognized in the marketplace as associated with one source of goods or services.

The defendants in the ITC proceeding asserted that the design elements had not acquired distinctiveness. They relied, in part, on evidence of third party designs. Some of those third party design usages were old.

The Federal Circuit said that the ITC erred by too heavily relying on prior uses long predating the first infringing uses and the date of registration in Converse, Inc. v. ITC, No. 2016-2467 (Fed. Cir. 2018). The court relied on Section 2(f) of the Lanham Act to find that the five year period prior to the relevant date was the most relevant time frame to consider third party use.

Generally a trademark owner must show acquired distinctiveness prior to the date when the first alleged infringement occurred by the other party. Therefore, the first use by the the other party is generally the relevant date (or the date of  registration, if a trademark registration is at issue).

The court said that “Consumers are more likely to remember and be impacted in their perceptions by third-party uses within five year and less likely with respect to older uses.” It continued that “uses older than five years should only be considered relevant if there is evidence that such uses were likely to have impacted consumers’ perceptions of the mark as of the relevant date.”

Likely Phonic Similarity Dooms Registration Attempt: MIKA Blocks MYCAH

Devon Goocher applied to register MYCAH for music concerts, among other services. The USPTO refused registration based on a registration on MIKA for live performances by a musical entertainer in In re GoocherSer. No. 87214736 (TTAB Setp. 20, 2018)

Two marks may be found similar if there are sufficient similarities in the sound or appearance or connotation of the marks. Here the similarity in sound was enough to find the marks were similar.

The Trademark Trial and Appeals Board noted that:

…it is very likely that consumers will pronounce Applicant’s mark MYCAH in the identical way that they would pronounce Registrant’s mark MIKA, that is bi-syllabically with the first syllable being pronounced the same as the word “my,” as the vowels “I” and “Y” are often interchanged in, for example, common names such as Sidney and Sydney. In the second syllable, both the “C” and “K” can be pronounced with a hard “k” sound as in the words “cat” and “Kentucky,” with the “A” and “AH” having the same neutral sound.

Goocher tried to argue the marks were pronounced differently “in reality.”  However, the Board noted that “there is no ‘correct’ or certain pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark….”