“When I was young I remember well, I’d hunt the wild Turkey and the bob-white quail.” Lord Have Mercy On A Country Boy, by Don Williams
I’m no country boy. I grew up in a small rusting city where hunting was rare and wild turkeys unknown. For us, Thanksgiving meant one main course and one brand-Butterball turkey. It felt like having a Cadillac on the dinner table. The bird came rock frozen and seemingly needed an ice age to defrost. That responsibility fell to our mother, who had a savant’s knack for nursing the glacial slab of poultry into a crisp and juicy delicacy, ready for carving with the electric knife dad brought home along with a Waring blender from his favorite small-appliance vendor, one Vince Barone of Coronet Sales. The whizzing Sunbeam brand electric blade enabled dad to slice the Turkey with surgical precision, avoiding the litany of frustrated cursing that had historically accompanied his efforts to perform the operation with a conventional carving knife, with blade dulled to a butter-knife bluntness by years of neglect.
But it was the Butterball itself that stole the show. It was infused with a mysterious marinade that inspired its name. Was there genuine butter in the Butterball? It hardly mattered. What mattered instead was the suggestion of rich, indulgent succulence and the promise of moist, tender breast meat for the Thanksgiving feast with plenty of leftovers for sandwiches later that night and the next day as well.
Today, when fresh heirloom, artisanal, handcrafted, and curated foods are ascendant, foodies and gourmands turn down their collective nose at the prosaic Butterball. But for millions of families, the Butterball brand has not lost its luster. In fact, the Butterball has evolved. Shoppers can still count on the familiar frozen Thanksgiving icon. But now, fresh Butterball turkeys also brim from supermarket poultry cases, sparing the harries host from having to plan the lengthy defrosting ritual. For countless of American households, Thanksgiving would not be Thanksgiving without a Butterball thawing in the fridge. It’s more than nostalgia. It’s the satisfaction that comes from a dependable brand like Butterball.
QOUTE OF THE DAY: “You cut the turkey without me?” From the film “Avalon”
“Regrets, I’ve had a few. But then again, too few to mention. I did what I had to do. And saw it through without exemption.” My Way Music and Lyrics by Paul Anka
For the past 40 years or so, give or take a few forays into patent law, my professional world has revolved around brands, symbols, logos, and colors–source identifying devices that we collectively define as “Marks.” But on Father’s Day 2020, my thoughts turn to a Mark of different sort, my dad, Mark Litowitz, who died earlier this year after a short illness, just one day shy of his 91st birthday.
As the above lyric from “My Way” hints at, Dad’s favorite musician was Frank Sinatra, another Jersey Boy just a few years older than Dad and whose home town of Hoboken was only a few turnpike exits north of Trenton, where Dad spent his entire life.
Like Sinatra, our Mark was a symbol of style and class. He never left the house without perfectly pressed slacks, a crisp shirt, and polished loafers with no sign of wear at either heel or toe. There was a brief flirtation with two-piece polyester leisure suits in the early 1970s when those sartorial atrocities somehow managed to infiltrate the middle-age suburban zeitgeist. But except for that short-lived fashion faux pas, Dad’s signature look, like a good brand, never varied. No jeans, no t-shirts, no shorts, no sneakers. Those restaurant signs that read “No Shirt. No Shoes. No Service” were meant for others, not our Mark.
Like the best trademarks, our Mark was distinctive, sometimes even arbitrary, the highest praise for a trademark, (but perhaps not so great for a person, especially when paired with “capricious.”) As much as Dad idolized one Vegas icon–Sinatra, he detested another–Wayne Newton. As a nod to me and my two sisters, Dad tolerated Neil Young, perhaps responding to the plaintive longing of “Heart of Gold.” But he abhorred Bob Dylan, dismissing him as “the Hog Caller,” a particularly rich rebuke coming from Dad, who had rarely, if ever, stepped foot on a farm, and whose experience with “the Other White Meat” was largely confined to enjoying an occasional “Taylor Pork Roll” sandwich, a Trenton delicacy.
And like the most enduring brands, Dad lived by well-established guidelines. For over 40 years, he was a judge who demanded that lawyers who appeared before him be prepared. If you met his expectations, you were treated with dignity. If you fell short, well, you did not want to fall short.
Dad never handled Intellectual Property matters, but he was acutely aware of the power of brands, especially the logos of the two sports teams we rooted for–the New York Giants and New York Rangers. Those two famous brands, one from the gridiron in the Meadowlands, the other from the rink at Madison Square Garden, gave us a common language, they held us together in challenging times as well as in times of joy.
In his last years, when things appeared to be spiraling out of control, Dad would blurt out in Yiddish “G’nug is G’nug”–“enough is enough.” It became his tag line. And we know taglines can be among the most powerful of brands. A final example proving the point, our Mark really did know the power of a good Mark.
Quote of the Day: “Let us endeavor so to live so that when we come to die even the undertaker will be sorry.” Mark Twain
“Whatever you do don’t be discouraged. Hear the words that I say. Something’s comin’ around the corner. This could be your lucky day.” Lucky Day by The Stone Coyotes
The copyright guru Arthur Levine is famous for his arsenal of jokes. Most earn solid laughs. Some reach higher heights, rising to iconic status. So it is with Art’s tale about one Morris “Lucky” Goldberg.
Here’s the Cliff’s Notes version: Walking down Main Street a man spots his old friend Morris Goldberg on the opposite sidewalk, who he hasn’t seen in a year. The man cries out. “Hey Morris Goldberg.” Goldberg waives him off, “there is no more Morris Goldberg. From now on I am Lucky Goldberg!” His friend asks, “so tell me, why are you now Lucky Goldberg?” “Lucky” then weaves an elaborate story about how he narrowly escaped death from a falling piano. “So I am now “Lucky” Goldberg!” he declares.'”
A year goes by. The man again spots his old friend across the street and greets him as “Lucky” Goldberg, only to hear the former Morris correct him, add a second “Lucky” to his name, and then recount another convoluted hair-raising brush with death. And each subsequent year, the same scene plays out, with Goldberg tacking another “Lucky” to his moniker.
As you may have guessed, it’s a Yiddish shaggy dog story of epic proportions and boundless possibilities. It’s a story that Art Levine, a master of timing, inflection, and accents, can drag out so long you’d think you were the hapless friend encountering “Lucky, Lucky, Lucky, Lucky Goldberg” year after year.
So you may ask yourelf, what does the saga of “Lucky” Goldberg have to do with trademarks? Plenty. Not only does the joke’s seemingly endless repetition seem to mirror our pandemic days, it also is a fitting metaphor for a trademark case decided last week by the U.S. Supreme Court involving, you guessed it, the brand “Lucky.” For over 20 years, Lucky Brand Dungarees (“Lucky”), with stores throughout the U.S. selling jeans and apparel, has been involved in its own shaggy dog of a litigation with Marcel Fashions, the owner of the trademark GET LUCKY.
The first case involved Marcel’s GET LUCK mark and ended in a 2003 settlement, with Lucky agreeing to stop using “Get Lucky,” and Marcel granting Lucky a release–i.e., a free pass, so to speak, regarding the use of LUCKY BRAND itself.
In the second round, in 2005, Lucky sued Marcel and its licensee for infringing Lucky’s trademarks. Marcel countered with counterclaims again charging Lucky with infringing Marcel’s GET LUCKY mark. But Marcel didn’t claim that Lucky’s other marks, such as LUCKY BRAND, infringed Marcel’s GET LUCKY trademark. Early in the 2005 case, Lucky claimed that the prior settlement blocked Marcel from suing over GET LUCKY. But Lucky didn’t pursue that theory at trial. Lucky lost the 2005 case and was permanently barred from using “Get Lucky.” No, Lucky didn’t change its name to Morris Goldberg Dungarees. But it continued using its LUCKY BRAND marks
Then came round three, in 2011. Marcel again asserted GET LUCKY. But this time, its target was all of Lucky’s other marks that contained the word “Lucky” besides GET LUCKY, because Lucky had already been enjoined from using “Get Lucky” in 2005. The trial court, however, wanted no part of this endless litigation. It granted summary judgment for Lucky, ruling that Marcel’s 2011 claims were a reboot of its unsuccessful 2005 counterclaims.
But the Court of Appeals for the Second Circuit disagreed, concluding that Marcel’s 2011 claims were distinct from its claims back in 2005 because those claims were for “earlier infringements” involving “Get Lucky,” while the 2011 action involved Lucky’s other marks. The Second Circuit vacated the district court’s summary judgment ruling and remanded the case for another round of litigation.
Back at the district court, Lucky unveiled a new defense. It argued for the first time that the release Marcel had given Lucky in the 2005 settlement blocked Marcel from now suing over Lucky’s use of its LUCKY BRAND and other LUCKY marks. Marcel countered that Lucky could have raised that defense in the 2005 action, didn’t, and therefore should be blocked from raising it now, years later. The district court agreed with Lucky, holding that the 2003 settlement agreement was indeed a complete defense.
But the Second Circuit had other thoughts. Relying on a doctrine it dubbed “defense preclusion,” the Second Circuit held that Lucky should have raised its “release” defense in the 2005 case between the same parties and that it was too late to raise it for the first time in the third round of litigation.
This unusual “defense preclusion” caught the eye of the Supreme Court, which granted certiorari to tackle this rare issue. In a unanimous decision penned by Justice Sotomayor, the Court held that so-called “defense preclusion” did not block Lucky from asserting its settlement agreement defense the 2011 action. Simply put, the Supreme Court recognized that the 2005 suit–round 2–concerned Lucky’s use of the GET LUCKY mark, while Round 3, the 2011 case, did not–it involved Lucky’s other marks. “At bottom, ” Justice Sotomayor wrote, “the 2011 Action involved different marks, different legal theories, and different conduct—occurring at different times. Because the two suits thus lacked a “common nucleus of operative facts,” claim preclusion did not and could not bar Lucky Brand from asserting its settlement agreement defense in the 2011 Action.”
So apparently ends the long, tortuous saga of Marcel and Lucky. But what of Lucky, Lucky, Lucky, Lucky, etc. Goldberg? Unlike with parties to a court case, our hero’s fate cannot be gleaned from a case book, treatise, or Internet blog. One must earn the right to learn the punchline from the veritable Chief Justice of jokesters, Mr. Levine himself. Spoiler alert, its not suitable for publication in a family legal blog. That’s Arthur, brother.
The case is LUCKY BRAND DUNGAREES, INC. v.MARCEL FASHIONS GROUP, INC.
Quote of the day: “I think we consider too much the luck of the early bird and not enough the bad luck of the early worm.”– Franklin D. Roosevelt
“So if you’re gonna do, then baby, just do it.” Just Do It Julia Michaels
It’s been a good fortnight, brand-wise, for one of the world’s best-known brands. First, during the NFL’s strangely compelling virtual draft, with all the coaches and GM’s hunkered in basement bunkers, a canine cameo by Patriot’s coach Bill Belichick’s Alaskan Klee Kai became an Internet sensation. The pup’s name?
As if the sports footwear and apparel giant needed help. A brand that generates all the goodwill money can buy got a free boost from a virtual viral video “aww” moment that only happened because a virus of a real and sinister sort kept Roger Goddell and the NFL from staging its annual draft extravaganza, which this year would have been held in Vegas. The NFL’s draft party last year in Nashville was none too sedate. One can only imagine what kinds of shenanigans would have “stayed in Vegas” if the NFL Draft had not been quarantined like the rest of us.
But when a dog becomes an overnight sensation, eclipsing even the Tom Brady to Tampa Bay melodrama and adding a dollop of humanity to the crusty Patriot’s coach, and that dog’s name happens to be Nike, that’s something even a powerful brand can howl about.
You’d think that the lighting bolt of trademark luck could not strike the same brand twice.
But the following, week, things got even better brand-wise, for Nike. The Trademark Trial and Appeal Board declared Nike’s long-time slogan “Just Do It” not merely famous, but “exceedingly so” and therefore “entitled to the highest level of protection against confusion.” To get there, the Board looked at Nike’s hundreds of millions of dollars invested in advertising, massive sales over several decades, and a rich body of press reflecting the public’s perception of “Just Do It” as one of the greatest slogans in advertising history.
Why is this ruling important? It illustrates again the value of creating a famous brand. When it comes to trademarks, fame is a game changer. Famous marks are said to “cast a long shadow,” expanding their scope of protection and requiring others to stay far away.
In this case, Nike complained against an attempt to register “Just Drew It!” for athletic apparel. The “Just Drew It” folks gamely tried to elude Nike’s trademark rights by arguing that the two slogans connote different things– Nike’s “Just Do It” being a call to action, versus “Just Drew It” suggesting that something had been recently drawn, But “Drew” didn’t stand a chance in the face of “Just Do It’s” exceeding fame.
And in reality, Nike’s victory had nothing to do with luck and everything to do with selecting a powerful brand and then expertly marketing it into a permanent place in popular culture along with other enduring and indelible slogans such as Diamonds Are Forever. Come to think of it, “Just Do It” might be even more valuable than diamonds and may also last forever, or at least for more than a century, like the slogan in the title of this post, When It Rains, It Pours. Morton Salt coined that one back in 1914.
The case is Nike, Inc. v. Jamin Caldwell and Courtney Miles
Quote of the Day: “Brevity is very important. If you’re going to be longwinded, it should be for a purpose. Not just because you like your words.” Patricia Marx
“If you got a mind to, you can sing. If you got a body, baby, shake that thing.” Name Droppin’ Ray Wylie Hubbard, from the album Growl
The news in trademark litigation land last week was fairly dull. Sure, the Supreme Court handed down a rare decision on trademark law–a unanimous one at that. But it concerned an arcane split among the regional circuit courts about when a trademark plaintiff can recover an infringer’s profits. Some courts had only allowed what’s known as “disgorgement” when the infringement was willful. Other courts had a more liberal standard, where willfulness was not required but was one of several factors to be factored in. Despite being split on contentious social issues, the Justices spoke with one voice. The unanimous Court called the “willfulness” requirement an “inflexible precondition “. So they endorsed the more expansive view. Going forward, every trademark case will include the possibility of a “disgorgement” remedy, even if the infringer didn’t willfully set out to commit infringement. And that can make big difference–the profits in the case the Supremes decided were over $6 million.
The case is Fromag Fasteners v. Fossil, Inc.
The development that really struck a chord last week concerned profits of a different sort–the profits earned by a superstar singer and their affect on getting two unusual trademarks. The U.S. Patent and Trademark Office has awarded two trademarks to Armando Christian Perez, better know as the hugely successful performer Pitbull. These registrations don’t cover a name, logo, or symbol–they cover a sound–Pitbull’s signature “EEEEEYOOO” yell, or “grito” in Spanish. One registration covers sound recordings. The other, live performances. Mr. Perez’s grito thus joins a rarefied club of trademarked sounds that include the MGM Lion’s roar, the NBC three-note chime, and the New York Stock Exchange’s opening bell.
How, you may ask, can a sound–something heard, not seen–be trademarked? The answer lies in the definition of a “trademark” provided by Congress in the federal trademark statute, the Lanham Act. Like the flexible standard for determining whether a trademark infringer should have to cough-up its profits, the test for what qualifies for trademark registration and protection is broad, defining “trademark” to include “any word, name, symbol, or device, or any combination thereof . . . used by a person . . . 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 unknown.” And even if it’s a sound.
But getting a registration for a sound, like Pitbull’s yell, isn’t as simple as registering a term like GOOGLE. Those types of arbitrary word marks can be registered without having to show that the public associates them with a single source. Pitbull, however, had to show more, and he did. He filed a sworn declaration showing his ten’s of millions of dollars in record sales and an equally massive amount of concert revenues, all featuring his EEEEEYOOO! grito. He acquired trademark rights in his grito the old fashioned way–he earned them.
And Pitbull did something else. Along with his trademark lawyers, he’s written an article the Spring 2020 issue of the NYU Intellectual Property and Entertainment Law Journal explaining not only the law behind sound trademarks, but also the science explaining why his grito serves so effectively as his brand. He writes ” Pitbull’s creation of a unique yell to alert friends in a loud nightclub setting was a highly effective tactic for getting their attention in the early days of his career. Today, his grito has evolved, serving a new purpose: to let people know that they are listening to a Pitbull song.” And what enabled him to win his registrations was that his grito has contributed so much to his bottom line.
Trademarking a sound is pretty rare. Trademarking a performer’s signature aural signal is unprecedented. Could it be a game changer for musicians, who until now have relied on copyright protection for their recordings? Will Pitbull’s two trademark registrations for EEEEEYOOO! lead to a chorus of new trademark filings by other performers? Perhaps even posthumously by their estates? A “circle R” for “Ring a ding ding,” has a nice ring to it!
Quote of the day: “Yelling is a form of publishing.” Margaret Atwood
“Tempted by the fruit of another. Tempted but the truth is discovered. What’s been going on now that you’ve been gone.” Tempted, music and lyrics by Glenn Tilbrook and Chris Dilford, performed by Squeeze
What’s been going on since this advertising legend left us is practically a national disgrace. Desperate shoppers from coast to coast have been hoarding Charmin and every other brand of toilet paper known to mankind—even Euro-grade single ply. There’s no shortage of supply. Just raging demand provoked by FORO—fear of running out in the age of shelter in place. Five weeks into Covid-19 quarantine, the paper goods aisles remain barren. And as many of us come to the ends of our last rolls, there’s no end in sight to the toilet paper panic of 2020.
Would this have happened if George Whipple had been on the job? Mr. Whipple, (pictured above), is of course the fictional supermarket manager who admonished shoppers with one of the most successful ad slogans of all time: “Please don’t squeeze the Charmin.” Played by veteran character actor Dick Wilson, Mr. Whipple appeared in over 500 Charmin commercials. In each one, he confronted someone who simply could not resist prodding, groping, and crushing the “squeezably soft” Charmin brand. Mr. Whipple was dedicated and vigilant, like a toilet paper Inspector Javert. He was also a bit of a hypocrite. Most Charmin commercials ended with someone catching Whipple in squeezit delecti—proving that not even Mr. Whipple could resist the squeezably soft charm of Charmin.
From a trademark perspective, both the character of George Whipple and his signature slogan “Please Don’t Squeeze The Charmin” would qualify for trademark protection. Indeed, any word, symbol, or “device” can be the subject of a federal trademark registration, so long as it is used on or in connection with a product or service or on displays associated with them. So a cardboard cut out of Mr. Whipple next to a stack of Charmin would conceivably have qualified. Sadly, Charmin’s maker never obtained a trademark registration for old George Whipple. But trademark rights can exist even if a mark or symbol is never registered. That’s because trademark rights flow from using a mark or symbol on goods in commerce, not from registration. Federal registration confers many substantive and evidentiary benefits. Even so, use not registration is the fundamental prerequisite to generating and maintaining trademark rights.
Enough tutorial detour. Back to our current community crisis, the epic run on toilet paper that’s making everyone paranoid about contracting well, er, the runs. We can only imagine WWMWD (What would Mr. Whipple Do) in the time of Corona. He would be patrolling the paper goods aisle with his watchful eye and acid stare. And, as surely as a virus can mutate, Mr. Whipple would surely be adapting his trademark slogan to our current crisis. He’s be scolding rabid shoppers to “Please don’t hoard the Charmin.” And true to his ingrained hypocrisy, Mr. Whipple would likely be loading up a pallet of toilet paper into his minivan to hoard it at home.
Quote of the day: “The worst job in the whole world must be recycling toilet paper.” Chuck Palahniuk, Fight Club
“Oh what can I do, my Buccaneer? Can you help me get my truck in gear?” Island of Lost Souls, Blondie
At the end of the 2019 NFL season, the handwriting seemed on the wall for the New England Patriots. Coach Bill Belichick, impatient with failure, seemed ready to move on from his 6 time Super Bowl champion quarterback. And the quarterback himself began signalling that his days of throwing soul-crushing strikes to the likes of Julian Edelman and “Gronk” at Gillette Stadium were coming to an end. But not his career.
Down south on I-95, Super Bowl nemesis (and for many outside of Big Blue nation a dubious Hall of Fame candidate) Eli Manning called it quits after 16 years leading the Giants. Although drafted by San Diego, Eli’e entire career had been spent in Blue, with two improbable Super Bowl W’s over the Patriots, the two gems in an otherwise quotidian career. It was a foregone conclusion that the junior Manning would not emulate big brother Peyton and continue his career in another uniform.
But what about the King of New England? The guy had entered his mid-forties in elite condition, thanks largely to a strict diet of eating absolutely nothing anyone would classify as “delicious,” He gave no hint that the Patriots would be his one and only stop on the NFL train. Indeed, he entered 2020 as an unrestricted free agent. And many teams needed a boost at the QB position and the box office.
So what factors and criteria would guide the soon to be former Patriot’s rebellious decision to leave the cradle of the Revolution? How was the Pats undisputed GOAT to choose where to take his talents?
Well, based on filings at the USPTO, one of those criterion apparently was trademarks! Last week, the new QB for the Florida team called The Buccaneers filed two applications for trademarks that could not have been coined if he had signed with any other team: TOMPA BAY and TAMPA BRADY. Both applications were filed based on Mr. Brady’s sworn bona fide intent to use each mark on “Clothing; Headwear; Footwear.” Both appear to have been “audibles,” strategically filed to preempt others from cashing-in on Brady’s lucrative persona. Mr. Brady now will have up to 36 months to begin selling his new signature product line once the Trademark Office approves his applications.
It’s not unusual for sporting legends to brand themselves and use their brands to sell merchandise. Michael Jordan with his AIR JORDAN comes to mind. But it’s either a lucky coincidence or sheer marketing genius for a player to choose to write the last chapter of a legendary career at the one place that synched with his first and last name to provide such potent brand potential.
Maybe Eli Manning would still be looking forward to another season if the NFL had accelerated its UK expansion plans with a team in Manchester?
Quote of the Day: “It’s a blessing for a man to have a hand in determining his own fate.” Blackbeard
“Greensleeves was all my joy, Greensleeves was my delight,Greensleeves was my heart of gold,” Greensleeves, traditional
As we head towards Easter Sunday having polished off the last of the Manischewitz from Passover, the void left in our daily lives by Covid-19 continues to expand exponentially, like the virus itself. Working from home and self-quarantining, mired in Netflix, Amazon, and Hulu, the absence of professional sports from our TV and news landscapes feels particularly stark this weekend.
In normal times, sports fans would be feasting not just on Passover brisket and Easter lamb, but on the first major tournament of the professional golf season–the Masters, held each year in the same place, Augusta National in Georgia. It’s one of the premier events in all of sport, and perhaps the sporting world’s toughest ticket. Even getting a pass to attend a practice round is considered a real coup. Past champions include all of the greats–Palmer, Nicklaus, Player, Watson, Michelson, Mcilroy, and Tiger.
Along with the money and prestige that comes with winning, each Masters champion gets to don and wear the event’s signature wardrobe item–the Green Jacket, like the ones Arnie, Jack, and Gary are sporting above. There’s one caveat. The green jacket stays at the club, where its stored until the former champion returns and can wear it at the annual Champion’s dinner that precedes the tournament’s first round.
It’s only fitting for such a tailor made symbol that it’s become a registered trademark. In March of this year, (which now feels like an eternity ago), the U.S. Patent and Trademark Office issued Registration No. 6,000,045 shown below.
“How can a garment be a trademark ?”, you may ask. Well, standing alone, it can’t. Minnie Pearl, the legendary star of the Grand Ole Opry, was certainly known by her “trademark” straw hat with its band of fake flowers and dangling price tag. (Indeed, “hat” is the answer to the NY Times crossword puzzle clue “Minnie Pearl’s trademark.”) But although Ms. Pearl talked about branding and trademarks when she was the keynote speaker at the International Trademark Association’s annual meeting when it was held in Nashville, she never secured a registration for signature wardrobe accessory. (It does however, reside today at the Smithsonian on the National Mall, not too far from the Trademark Office in Alexandria. Virginia.)
So how was Augusta National able to trademark the green jacket? Two reasons. First, it used the Green Jacket symbol in connection with actual services, namely, ““promotion of goods and services through sponsorship of sports events” and “organizing and conducting golf tournaments.” Second, Augusta National proved that the Green Jacket had acquired trademark significance–what we in the trademark game call secondary meaning–though over 70 years of use. Indeed, Augusta National convinced the Trademark Office that this was no ordinary item of haberdashery, but has long served as the famous brand symbol of Augusta National and the Masters tournament.
There will be no Green Jacket awarded this weekend. With the county not feeling up to par, the Masters has been moved to November, with fingers crossed that the sporting world will eventually reopen for business. This may be frustrating news for players and fans, but there’s one possible silver lining. Last year’s champion and five-time Masters winner Tiger Woods will have six more months for his aching back to heal and be ready to defend his title. If he does, it will not only be another dazzling career achievement, it will save Augusta National several hundred bucks and Mr. Wood’s Green Jacket will fit like a glove. Past winners simply slip on their own jacket. Membership has its privileges.
Quote of the day: “The most rewarding things you do in life are often the ones that look like they cannot be done.” Arnold Palmer
“There’s colors on the street. red, white, and blue.” Rockin’ In The Free World, music and lyrics by Neil Young
On a grey day towards the end of week 4 of our Covid conundrum, a little color is a welcome diversion–even if it comes from a trademark case. The latest development in this vibrant sub-set of trademark law concerns the packaging for Forney Hacksaw Blades and other hardware products. Forney claims that its particular packaging palette, shown at the top, featuring a black band at the top and then morphing from yellow to red, is as much of a trademark as the FORNEY name itself.
Now, claiming color is a trademark is nothing new. Way back when, Owens Corning registered “pink” as the trademark for fiberglass insulation, riding the popularity of TV commercials featuring the Pink Panther to prove that the color pink had achieved a “secondary meaning”–i.e., had acquired trademark distinctiveness– besides being a nice color.
Owens Corning had to go all the way to the U.S. Court of Appeals for the Federal Circuit to get its registration.
A few years later, the U.S. Supreme Court weighed in, ruling on a single-color trademark claim for the color of a dry cleaning press pad, a color that humorist Jean Shepherd (creator of the classic film “A Christmas Story”) might have called “goat-vomit green:”
The Supreme Court confirmed that a single color of a product can be a trademark, but only if “secondary meaning” has been earned through long use, commercial success, and substantial advertising. That case was Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995).
But proving secondary meaning for a single color applied to a product or packaging can sometimes be a challenge, as General Mills discovered when it tried to register “yellow” as a trademark for this pantry staple:
Despite decades of sales and advertising, General Mills’ efforts to establish secondary meaning for its yellow box failed because many other cereals also come in yellow boxes.
Wouldn’t it be easier for aspiring trademark colorists if color marks were treated like word marks, where words that are made-up, like KODAK, arbitrary like APPLE for computers, or suggestive like BEAUTYREST for mattresses, are deemed “inherently distinctive” and instantly protected without the need to prove “secondary meaning.”
In Forney’s case, Forney argued that its non-verbal cascading colors for product packaging were likewise inherently distinctive. But the Trademark Office resisted. It’s ruling turned on the fact that Forney’s application did not include any defined package perimeter or shape. According to the Trademark Office, Forney’s application was akin to claiming a trademark in “color alone,” which the Supreme Court has said can never be an inherently distinctive trademark for a product itself.
But the Trademark Office had overlooked a critical distinction, the U.S. Court of Appeals for the Federal Circuit ruled. Fornay’s color mark was applied to packaging –not products themselves. And the Supreme Court precedents had left the door open for color to be inherently distinctive when used on packaging. The Court of Appeals said that “Fornay’s mutli-color product packaging mark . . falls firmly within the category of marks the [Supreme] Court described as potential source identifiers. The Supreme Court precedent simply does not support the  conclusion that a product packaging mark based on color can never be inherently distinctive.”
The Court of Appeals went further, rejecting the Trademark Office’s conclusion that to be inherently distinctive, multi-color marks for product packaging require a “specific peripheral shape.”
The Appeals Court sent the case back to the Trademark Office with instructions to consider whether Forney’s multi-color mark met the test for inherent distinctiveness. That review likely will focus on whether Forney’s cascading color scheme and palette are “unique or unusual” in Forney’s product category.
The takeaway from the Forney case is this: when it comes to claiming color combinations for product packaging as inherently distinctive trademarks, there are, as the saying goes, “No Borders, No Boundaries.”
The case is In re Forney Industries, Federal Circuit, April 8, 2020.
Quote of the day: ““Mere color, unspoiled by meaning, and unallied with definite form, can speak to the soul in a thousand different ways. ” ― Oscar Wilde
“Persuaded, paraded, inebriated, and down Still aware of everything life carries on without ‘Cause there’s one too many faces with dollar sign smiles”. Whiskey Bottle, Uncle Tupelo
For decades, parody and trademarks have had a fraught relationship, particularly when it come to the interface between human brands and products for man’s best friend. Back in the 90s, the luxury chocolate maker Godiva sued over a dog treat named Dogiva. And some years later, the luxury clothier and luggage maker Louis Vuitton sued over a brand of dog treats called Chewy Vuitton.
Last week, the latest decision in this line of cases came down, finding that a dog toy shaped like the iconic Jack Daniel’s whisky bottle and bearing both the name Bad Spaniels and the scatological slogan “Old No. 2” did not infringe the venerable bourbon’s trademark rights in the Jack Daniel’s name, the square bottle shape, the black and white labeling, and the slogan “Old No. 7.”
The case turned on whether Bad Spaniels name and bottle were a transformative expressive homage to Black Jack and therefore protected by the First Amendment and its stringent expressly misleading standard, or whether it just was plain old trademark use, in which case the lesser likelihood of confusion standard applies.
The judge came down on the side of parody and free expression. Acknowledging that the Bad Spaniels name, motto, and packaging were a far cry from the Mona Lisa, the judge nonetheless concluded that the canine toy maker had produced an expressive work that did not warrant being relegated to the trademark doghouse. The court explained that “[a] work need not be the expressive equal of Anna Karenina or Citizen Kane” to be considered expressive; nor is a work “rendered non-expressive simply because it sold commercially.”
The decision is sure to add to the ongoing debate on whether punsters deserve punishment when they parody a famous brand not through a cartoon or story but by putting out a product with a humorous twist.
So, when happy hour rolls around Fido, Spot, Snoopy, and Scooby Doo can enjoy their own plastic libation as their best friends break out the Jack and Ginger or have their Tennessee sippin’ whiskey nice and neat. And in these days of Work at Home and sheltering-in-place, it’s always five o’clock somewhere.