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Mary Aversano Leads INTA Table Topic on “Gesture Marks”

TSA62 – Gesture Trademarks: Non-Traditional Mark Protection in the United States

Saturday, May 20, from 1:15 pm – 3:15 pm

Moderator: Mary B. Aversano, Aversano IP Law, United States

Introduction – In the United States, a non-traditional trademark (NTM) is a mark other than the conventional word or 2D logo mark, and can be shown in many formats such as 3D, color, sound, motion and including gestures. A “gesture” as defined by the Merriam-Webster dictionary is “movement usually of the body or limbs that expresses or emphasizes an idea, sentiment, or attitude [e.g., he] raised his hand overhead in a gesture of triumph …”

To view the entire outline click 2017 INTA Table Topic Gesture Marks Outline.

A few observations:

  1. USPTO codes “gesture” marks with two different design codes, (i) 02.11.14 “[h]ands and fingers forming the following: handshake, finger pointing, fingers walking, OK sign, and thumbs up or thumbs down;

021114

 

and (ii) 2.11.07, “hands, fingers and arms.”

hfa

  1. USPTO Design Search Code Manual currently does not make a distinction between   2D or 3D designs.
  2. There are 18,000 + mark assigned a gesture design code
  3. Prosecution of gesture marks is consistent with prosecution of other marks. See App No. 86/553,544. The application was refused registration in view of prior             registrations for similar gesture marks.

hand WWE

 

Blog by: Mary B. Aversano
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E: Trademarks@aversanoiplaw.com | T: (310) 904-9380

 

 

 

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FEDERAL DEFENDERS OF EASTERN WASHINGTON AND IDAHO (FD of EWaI) REGISTER COLOR RED AND TITLE FOR “MY LITTLE RED RULES BOOK”

FD of EWaI applied for a 3D “rule booklet consisting of the color red that is consistent across the front and back covers … with the words “MY LITTLE RED RULES BOOK” on the front cover. The solid lines show the positioning of the mark on the goods and those features claimed by … [FD of EWaI] as its mark” to be used in connection with, “[b]ooklets in the field of select legal rules and statutes primarily for use by criminal defense lawyers practicing in the United States federal district courts (and by some federal judges).” The colors red and white are claimed as a feature of the mark. Below is a specimen, a photograph of the 2014 booklet:

Red book cover

Below is the drawing depicting the mark as applied for by FD of EWaI:

The USPTO assigned the design code 20.05.0 that covers “open books” as follows:

20.05.05 – Bibles (open)
20.05.05 – Books that are open
20.05.05 – Cook books (open)
20.05.05 – Encyclopedias (open)

A search of 20.05.05 reveals marks containing an “open book” design:

Mark Image  Mark Image   Mark Image    Mark Image

A search of 20.05.05 and “legal” pulls up the following:

Mark Image  Mark ImageMark Image

And with “red” color:

Mark Image    Mark Image      Mark Image

The Examining Attorney issued an office action with two objections:

1. Single Title of Work: application shows a single title of work which is not registrable in the United States. That is, “[t]he title of a single work, even an arbitrary title, is considered descriptive of the contents of the work itself ‘and is not associated in the public mind with the publisher, printer or bookseller;’ whereas ‘[t]he name for a series, at least while it is still being published, has a trademark function in indicating that each [work] of the series comes from the same source as the others’”; and

2. Drawing:  FD of EWaI “must depict the mark in the drawing to include broken or dotted lines to show the position of the mark on the goods.”

In response FD of EWaI provided a new mark description (“… [3D] configuration of a booklet with a red front cover and red back cover and the words “MY LITTLE RED RULES BOOK” in white on the red front cover. The broken lines depicting the outline, spine and pages of the booklet indicate placement of the mark on the goods and are not part of the mark”) and a new drawing:

FD of EWaI also addressed the “single title of work” objection by submitting evidence that the book is a series of books, at least, from 2007 to 2016:

After acceptance of the above and a disclaimer of “red rules book,” the application was approved and a registration (U.S. Reg. No. 5198040) issued May 9, 2017.

Blog by: Mary B. Aversano
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E: Trademarks@aversanoiplaw.com | T: (310) 904-9380

CLAIRE FLOWERS REGISTERS “PINK” HEEL SHOE DESIGN

Claire Flowers applied for a shoe design that “consists of a pink heel cap on women’s high heel footwear that contrasts with the color of the heel and sole of the shoe. The dotted lines are not part of the mark but are intended only to show placement of the mark.”

The drawing of the mark is below left and a sample of the footwear to the right.

Drawing pink heelBLK shoes Pink heels red shoe7

 

After submission of the application, the USPTO assigned the following 09.07.06 – Other women’s shoes. A search under this design code revealed:

gold sole shoe pink shoe2   heel shoe4  pink shoe5pink shoe3   pink shoe4  red sole shoebw sole shoe    green shoe5

 

And 09.07.08 – Heels, shoe; Supports, arch; Arch supports:

red shoe5   green shoe6  pearl shoe6 red shoe6

 

The Examining Attorney also searched under 29.03.01 Single [red or pink] color used on a portion of the goods or on a portion of items used in rendering the services which revealed:

red mark1     red mark2  red mark3   red mark4red mark5

 

After the search, the application was approved for publication. No office action issued! Registered in 7 months from application (U.S. Reg. No. 5171367).

Blog by: Mary B. Aversano
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E: Trademarks@aversanoiplaw.com | T: (310) 904-9380

HM ELECTRONICS REGISTERS 3D HEADSET DESIGN

HM Electronics applied for a 3D Headset Design described as, “a portion of a headset. The broken lines depicting elements of the headset indicate placement of the mark on the goods, but are not part of the mark as shown” and submitted the drawing and specimen below:

 

     

 

The USPTO assigned the design code – 16.01.07 – which covers headphones, headsets, microphones. A search under this design code reveals:

 

Mark Image  Mark Image  Mark Image

 

Mark Image  Mark Image  Mark Image

 

Mark Image Mark Image Mark Image

Trademark image     Mark Image    Mark Image  Mark Image

 

The Examining Attorney issued an office action with several objections: (i) non-distinctive product design and (ii) functionality; as well as drawing and description clarification. HM Electronics responded and the non-distinctive product design was withdrawn but the other issues remained and a second office action issued. The remaining issues were resolved and the application was approved for publication.

The mark description was modified to read: “[t]he elements of the mark are the button overlay, including the overlay shape, button openings and button opening layout, the casing shape, including the generally circular case and the curved upper part and the boom connector, including the rounded disk and cylindrical protrusion. The broken lines depicting the over-the-head band, the ear cushion, the buttons, and the boom microphone indicate placement of the mark on the goods and are not part of the mark.” Along with a revised drawing:

Original                                                              Revised

     

However, the application was withdrawn from publication on the grounds that the acquired distinctiveness claim was less than 5 years. This seems to be a new trend with the USPTO. In the past, the 5 year prima facie rule could be bypassed with additional evidence. That is, an applicant could show acquired distinctiveness in <5 years with an abundance of evidence. But recently, applications with < 5 years, are being returned to the Examining Attorney for further analysis.

In this case two more office actions issued with the Examining Attorney stating, “[i]n the present case, applicant’s evidence consists of the following nearly 5 years use, declarations, sales and advertising figures, advertising materials and consumer recognition reports.  This evidence is insufficient to show acquired distinctiveness of the proposed mark because of the limited amount of years in use (less than five years). Additionally, the marketing and advertising does not specifically point to or reference the ‘distinctive’ flower design, nor does it feature  ‘look for’ marketing evidence that touts the flower design.  Additionally, the consumer recognition evidence only consists of 1 affidavit from an actual customer (McDonald’s Manager), which is not sufficient to show consumer recognition to establish acquired distinctiveness.”

HM Electronics continued to provide additional declarations and information as requested from the Examining Attorney. In its last submission, several of the advertisements for the 3D Headset Design contained the requisite “look for” advertising at the bottom of the page, i.e.,  “EOS | HD = Look for the unique earpiece design”. In many applications and in this case, evidence of the “look for” advertisement can be the “key” tipping point for demonstrating that the “mark” does function as a source identifier.

After submission of the additional information, the application was approved for a second time and a registration (U.S. Reg. No. 5144104) issued February 21, 2017.

Blog by: Mary B. Aversano
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E: Trademarks@aversanoiplaw.com | T: (310) 904-9380

CROCS REGISTERS 3D CONFIGURATION OF UPPER SHOE DESIGN

CROCS applied for  a 3D Upper Shoe Design described as a 3D configuration of an “outside design of an upper for a shoe, the upper having a gentle curving outline, a ridge along the upper opening perimeter, a pattern of 13 round holes on the horizontal portion of the upper of the shoe, a first strip along the vertical portion of the upper having a pattern of 7 trapezoidal openings, and second strip paralleling the first strip and separated from it by a divider and ridge, the second strip circumnavigating the shoe and gently rising toward the heel, and the relative position of these elements to each other. The broken lines show the position of the mark and are not claimed as part of the mark” with a drawing as follows:

CROCS submitted 16 examples of the mark in .wav format. Several excerpts from the videos show the mark in different configurations such as:

CROCS design 1

Green tree CROC

CROCS beach

CROCS cloud

The USPTO assigned the design code: “09.07.05 – Other men’s shoes” to the 3D Upper Shoe Design. A search for marks coded with this design code revealed the following shoe designs:

 

Mark Image                   Mark Image           Mark Image

 

Mark Image                                             Mark Image

 

Mark Image                                    Mark Image

 

Mark Image                      Mark Image                        Mark Image

The Examining Attorney also searched under the above design code as well as 4 additional  codes (i) 09.07.04 (Wooden shoes (clogs), sandals, shoes without heels, including bedroom slippers, moccasins, ballet shoes and rubbers):

 

Mark Image  Mark Image    Mark ImageMark Image

 

CROCS design is above, left.

(ii) 09.07.06 (Other women’s shoes):

 

Mark Image  Mark Image Mark Image

 

Mark Image  Mark Image

 

(iii) 09.07.08 (Parts of footwear):

 

Mark Image       Mark Image   Mark Image

 

And (iv) 09.07.25 (Other stylized footwear):

Mark Image    Mark Image

 

The Examining Attorney issued an office action with two technical requests: (i) amended drawing and; (ii) description of the mark, stating that, “the overall clog shape of the proposed configuration mark and the presence of a defined midsole and topline collar appear to represent generic elements commonly present in waterproof strap clogs.  These features are nondistinctive and do not function as a mark because such elements are so common in the industry for such products and are the same or substantially similar to the designs of competitors’ products such that consumers are accustomed to seeing such elements on similar products.  As such, applicant’s request to exclude other shoe manufacturers from employing such ubiquitous design elements cannot be granted.” With this in mind, the Examining Attorney suggested a revised description of the mark as follows:

“The mark consists of a … [3D] configuration of the outside design of an upper for a shoe comprising a pattern of 13 round holes on the horizontal portion of the upper of the shoe and a textured strip along the vertical portion of the upper having a pattern of 7 trapezoidal openings.  The broken lines show the position of the mark and are not claimed as part of the mark.”

With updates to the drawing:

Original Drawing                                                                          New Drawing

                 

 

Once the description and drawing were updated, the application was approved and a registration (U.S. Reg. No. 5149328) issued February 28, 2017.

Blog by: Mary B. Aversano
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E: Trademarks@aversanoiplaw.com | T: (310) 904-9380

RODDENBERRY ENTERTAINMENT INC. (REI) REGISTERS BRIGHT LIGHT MOTION MARK

REI applied for a mark that consists of “a motion mark, in which a bright light appears and grows larger and brighter until it morphs into the logo of a stylized letter ‘R’ within a circle. The term RODDENBERRY then appears underneath, with each letter rotating until it comes into place. The word ENTERTAINMENT then fades in underneath” for “production and distribution of television programs and motion pictures.” The mark is shown in still frames as the following:

According to the USPTO, a mark featuring “a repetitive motion of short duration,” can be depicted in a drawing that “depicts a single point in the movement, or … a square drawing that contains up to …[5] freeze frames showing various points in the movement.”

To demonstrate use of the mark in connection with the goods/services, the USPTO also accepts .wav, .wmv, .wma, .mp3, .mpg, or .avi format (“[a]lthough the drawing for a motion mark may depict a single point in the movement, or up to five freeze frames showing various points in the movement, an acceptable specimen [evidence of use] should show the entire repetitive motion in order to depict the commercial impression conveyed by the mark (e.g. , a video clip, a series of still photos, or a series of screen shots).)” REI submitted the following WMV file for the mark.

The USPTO assigned the mark the following design codes:

01.03.02 – Other constellations
01.07.01 – Globes with outlines of continents

A search of 01.03.02 reveals marks like:

 

Mark Image  Mark Image  Mark Image

A search of 01.07.01 reveals marks like:

 

Mark Image  Mark Image   Mark Image

The Examining Attorney searched the word mark Roddenberry, 01.03.02 and 01.03.03 (stars in shapes), the latter reveals such marks as:

 

Mark Image   Mark Image

The Examining Attorney issued an Examiners Amendment / Priority Action with two points: (i) the drawing cannot exceed 5 frames; and (ii) addition to the mark description that includes a new sentence, “[t]he black rectangles surrounding each frame in the motion mark is not claimed as a feature of the mark, and is intended to show background only.” The drawing was reduced to 5 frames and the mark description updated.

Trademark image

With these changes, the application was approved and a registration (U.S. Reg. No. 5140450) issued February 14, 2017.

Blog by: Mary B. Aversano
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E: Trademarks@aversanoiplaw.com | T: (310) 904-9380

USA NUTRACEUTICALS GROUP, INC. (USA NG) REGISTERS THE COLOR BLUE – PANTONE 306 C FOR DIETARY AND NUTRITIONAL SUPPLEMENTS

It is common to register trademarks containing colors and applications for these marks do not normally require rigorous examination. But, attempting to register a mark that consists solely of a color does require rigorous examination and evidence. Color, by itself, is not considered to be inherently distinctive and, therefore, evidence of acquired distinctiveness – including a demonstration that customers view the color as an identifier of source – must be demonstrated. Below is an application that met the stringent criteria and was successfully registered for the color “blue.”

Application

USA NG applied for the color “blue” as a trademark, describing it as “the color blue Pantone 306 C as a background for advertising, promotional materials, signage, labels, and packaging” for use in connection with “[d]ietary and nutritional supplements.” The drawing of the mark is a “blue” swatch (below left) and as in use (below right):

blue-swatch    blue-packaging

Design Codes

The USPTO coded the mark as follows: 26.09.21 – Squares that are completely or partially shaded and 29.04.03 – Blue (single color used on packaging, labels or signs). A search of the color blue on packaging, labels or signs (29.04.03) reveals the following marks:

blue-search-results-1

The first mark on the above left, is also a USA NG mark.

A search of the color “blue” for the entire goods/services (29.02.03) reveals additional color marks as follows:

blue-search-2

And multiple colors (29.07.03) containing the color blue are below:

blue-search-3

The Examining Attorney also searched marks claiming the “green” color and shapes (bottles, jars or flasks, cases and soap dispenser and bags etc.).

First Office Action

After the search, the Examining Attorney issued an office action citing refusals to registration based on Trademark Act Sections 1, 2 and 45. Specifically, the Examining Attorney stated, “[r]egistration is refused because the applied-for color mark, consisting of one or more colors used on some or all of the surfaces of a product or product packaging, is not inherently distinctive” and “the evidence of record shows that consumers of dietary and/or nutritional supplements often purchase such goods in opaque solid colored pouches and do not necessarily associate such packaging as an indication of source.” As examples, the Examining Attorney provided pictures of the packaging below:

sample-packages-blue-color

More importantly, the Examining Attorney stated, “[t]he burden of proving that a color mark has acquired distinctiveness is substantial. In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) (holding the color pink used on fibrous glass residential insulation to have acquired distinctiveness based on evidence of twenty-nine years’ use, extensive affidavit and documentary evidence, surveys, and extensive media advertising expenditures.)”

The Examining Attorney also asked a number of questions including whether there is a purpose to the blue color, whether it is a natural by-product of the manufacturing process, or whether there is any significance in the industry for the blue color.

First Reply

In reply, USA NG stated that its “color mark is distinctive, non-functional, and has acquired secondary meaning in the relevant industry.” The answer to the above questions was no purpose to the color, the color is not a by-product of manufacturing and no significance to the color in the industry.

To demonstrate that its mark is distinctive and non-functional, USA NG provided the statement, “[a]s the following response will show … [USA NG’s] use of blue Pantone 306 C on its goods is recognizable across the sports supplement industry as … [USA NG’s] signature ‘trademark look.’ While it may seem like just a background in isolation, a review of … [USA NG’s] wide product line and promotional materials reveals that this ‘background’ is found on virtually all things associated with … [USA NG].” See examples below:

blue-ad-1

blue-ad-2

blue-ad-3

blue-ad-4

Whereas other companies use different styles and colors:

blue-ad-5

blue-ad-6

Second Office Action

After submission of this response, the only remaining issue was the drawing (“[f]or marks consisting of a configuration of the goods or their packaging or a specific design feature of the goods or packaging, namely, the application of color, the drawing must depict a single three-dimensional view of the goods or packaging, showing in solid lines those features that … [USA NG] claims as its mark”).

Second Reply

The old description was: “the color blue Pantone 306 C as a background for advertising, promotional materials, signage, labels, and packaging” and the new description is “the color Pantone 306 C and is presented as a three-dimensional design feature applied to the packaging of the claimed goods, namely, the body of the packaging of the claimed goods. The dotted lines outlining the packaging only indicate the placement of the mark on the claimed goods and are not part of the mark. The shape of the packaging is not claimed as part of the mark.” The initial drawing is shown below on the left and to the right is the revised drawing:

blue-design-1

Third Office Action

The application was approved but later withdrawn from publication on the grounds that the acquired distinctiveness claim could not be accepted because the “use dates show that the mark has only been in use for three years, [and, therefore,] the breadth of evidence provided is insufficient.” That is, “[b]ecause marks comprised solely of color are never considered inherently distinctive, and … [the] dates of use show that the mark has been in use only three years, the claim of acquired distinctiveness cannot be accepted at this time.” Note: According to the TMEP (1212.05(a)), a prima facie case for acquired distinctiveness is usually five years, however, for overall color of a product, “evidence of five years’ use is not sufficient to show acquired distinctiveness. In such a case, actual evidence that the mark is perceived as a mark for the relevant goods/services/classes would be required to establish distinctiveness.” (emphasis added)

Third Reply

USA NG replied with additional actual evidence of use of the mark, stating, “[w]hile the Examiner does not believe that this three year use is sufficient to accept that … [the] mark has acquired distinctiveness, … [USA NG’s] use has been exclusive; there are no other similar-looking packages in the dietary and sports supplement industry. To the extent … [USA NG] is aware of any sports nutrition products using a similar look … [USA NG] has opposed, or is in the process of opposing such use. … [USA NG’s] applied-for mark is widely known by consumers and the industry at large as evidenced by the awards issued to … [USA NG] for the recognition of its brand and growing presence in the marketplace … Furthermore, … [USA NG’s] packaging bearing the applied-for mark has been recognized by Graphic Design USA as one of the outstanding designs of 2014 in the Sports, Games and Toys division of its American Package Design Awards … [USA NG’s] long and exclusive use supports the finding that its packaging trade dress has acquired distinctiveness and serves as an indicator of source.”

After this submission of additional actual evidence, the application was approved and a registration (U.S. Reg. No. 5102729) issued on December 16, 2016.

Blog by: Mary B. Aversano
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E: Trademarks@aversanoiplaw.com | T: (310) 904-9380