Last week, the Federal Circuit ruled partly against Apple in its patent and trademark infringement case against Samsung, concluding that while Apple’s design patents were infringed by Samsung, the trade dress and trademark rights that Apple asserted were not infringed because the underlying subject matter was not trademarkable. Essentially, the elements of the iPhone design that Apple argued were trademarkable (the rounded edges of the phone, the home screen design with the grid-like pattern of icons, and the flat screen surrounded by a beveled frame) were found to be influenced by functional considerations, including a concern that the features made the phone simpler for a consumer to use. In other words, the design of the phone was driven by intuition, an idea that was apparently injected into the design process decades ago when Steve Jobs first founded the company. The question is whether a company’s legacy for simple, intuitive design can be implemented into the trade dress and product design in such a way that it becomes a source identifier. Furthermore, if those types of design characteristics are source-identifiers, is there any way that a company could develop the characteristics such that they are not functional?

To really answer this question, it helps to understand this maxim: the essence of a trademark is source identification. Always has been, and always will be. Even in the face of technology, which always seems to be pushing the envelope of how a company can truly engage a consumer, trademarks must maintain their source identifying capability. The beauty of the statutory definition of a trademark is that there are no restrictions on the form of the trademark, just so long as it serves the purpose of source-identification (and usually nothing more). For example, there is no statute or public policy that requires trademarks to cater exclusively to one of the five senses; any type of identifier that can be discerned by consumers is fair game for a trademark. This gives companies a lot of freedom in defining their brand. Given enough creativity and vision, a company could be quite unique in their branding endeavors. 

The phrase “ice bucket challenge” has taken the world by storm this summer. Videos of people dousing themselves in ice water and nominating friends and family to do the same have inundated social media pages for millions, helping ALS reap the benefits in the form of millions of dollars of donations and increased awareness. I have personally done the ice bucket challenge and you can consider this blog post a virtual douse for the blog (electricity and water, in reality, don’t mix so well).

ALS has clearly profited from this campaign that began as a way for golfers to raise money for assorted charities and any group that garnered that kind of attention could be expected to “press its luck” to find more success. This may have been the motivating factor behind the ALS Association’s decision earlier this month to file trademarks applications in the U.S. for the phrase “Ice Bucket Challenge” for services related to charitable giving. Is this attempt to capitalize on a wave of attention and recognition enough to throw ice water on charitable motives? Some of my fellow members of the bar seem to think so. Erik Pelton, a trademark attorney in the Washington D.C. area thinks that the attempt by ALS is a move that will prevent other people from using the trademark for charitable drives. 

In case you hadn’t heard: the Trademark Trial and Appeals Board (TTAB, an administrative body affiliated with the trademark office that hears all appeals directly from the United States Trademark Office regarding the decisions of trademark examiners) dropped a real whopper of an opinion yesterday when it concluded that a series of trademarks containing the word “REDSKINS” must be cancelled because the trademark was disparaging to Native Americans at the time it was registered. I have a few issues with how the press has been covering this story along with some additional comments on the general soundness of the opinion (although a decision this substantial will surely be appealed by the Redskins). So here is my take.

So…. I decided to elaborate a little more on the previous post on store designs after a weekend spent at the mall with my significant other (yes I found myself, again, in Victoria Secret where many a man has met supreme disappointment when he attempts to pass the time or even find a place to sit). Actually, I was planning on writing another post on store design because the topic is just that complex.

In the previous post I talked a lot about how a store design could be protectable. I even discussed some of the hurdles that a company could face in its bid to obtain protection for store designs. The main hurdle is the difficulty of demonstrating that store design is inherently distinctive or that it has acquired secondary meaning. And the difficulty inherent in demonstrating inherent distinctive is that store designs aren't generally that unique or different from store-to-store. Most store layouts and designs incorporate many "essential" elements like shelving, lighting arrangements, tables, walls and glass. Where a store presents a design and layout that can be specifically defined and linked to a particular source because it has a different arrangement or distinctive, it can acquire distinctiveness over time. Distinctiveness is acquired through continuous use of the same design, active promotion of the design, widespread consumer recognition of the design as associated with a particular source.

But secondary meaning is hard to prove and usually requires providing some pretty compelling evidence (consumer surveys, extensive media attention, significant foot traffic). Another difficulty that even Apple faced: proving that variations in a store's design across different locales did not modify the character of the mark. Almost by necessity, Apple store designs vary by location. This is perfectly understandable, especially when you consider the multitude of factors influencing the design and layout of a store front. Consider the two images below (both images courtesy of apple.com)

As a trademark attorney, I am constantly trying to figure out ways that I can help clients see the value in protecting a certain symbol or word, an identifier that ties to the client and distinguishes them in some sense. This is, after all, the most fundamental purpose of a trademark: to distinguish, to identify. Some call this heightened awareness by an attorney “over lawyering”. I would like to think that it is simply doing my due diligence!

More and more businesses seem to be warming to the idea of trademark rights in store designs. Yes, store fronts and interiors, you know the distressed facades showing exposed bricks, the marquee sign on top of the store with a funny looking arrow pointing in no direction whatsoever, the arrangement of merchandise display tables. Those designs. True, a store design is not necessarily a word or solitary logo like we think of when we think about ordinary trademarks (ordinary meaning plain old words, phrases, and logos). The fact remains that store designs make just as compelling an impact on consumer perceptions than a word or logo flashing across the television screen or calling out to you from a billboard.

But enough pontificating. Let’s take a case-in-point: the Apple Store.

We live in America (a wonderful enterprising nation filled with witty comedists and weekend-stand-ups), so it only seems natural that someone would come up with the idea of putting a choice phrase on a t-shirt in the hopes of striking it big and becoming the top seller on CafePress or at those shops in popular tourist shops where the merchandise all looks the same. I’m talking about phrases like “More Cowbell”, “Free Hugs”, and “Kind of a Big Deal”, all of which have become immortal as a result of their connection to some sort of event or pop-culture phenomenon.

That next big phrase could be connected with Anthony Weiner. In case you hadn’t heard, Anthony Weiner has done it again. Check out this trademark application filed two years ago for the mark RE-ERECT WEINER for t-shirts.

How clever is that! The trademark application has since been abandoned by the applicant because they failed to respond to an office action. The office action cited the fact that the trademark included the name of a person as an invalidating characteristic of the trademark (I wonder who that person could be…..) According to the USPTO, the mark identified Anthony Weiner, although no direct reference to Weiner was made in the trademark application. I guess the reasoning of the USPTO was that no one could possibly NOT get the obvious reference to Weiner based on the “erect” portion of the mark (whoever wrote this office action must have had a heck of a laugh) and Anthony Weiner’s flap (don’t read any innuendos into that last phrase, I beg you!). According to the well-supported argument of the USPTO, to use the “WEINER” name as a trademark would require the written consent of Mr. Weiner. Yeah right, like that was going to happen.

But, but…… what of my chances of making it big with this awesome phrase printed on every cheap $2 item known to man!? This gets us to the next portion of the office action, the portion dealing with the ornamental appearance issue. You see, for a phrase to be considered as a trademark, it has to, you know, actually indicate some source. It cannot be used as some sort of decorative phrase on merchandise. It has to say something about where the goods came from. This is why Anthony Weiner would have had to have given his consent to use of a phrase containing his name: people may have thought that the shirts came from him. So when you see a million other people on Café Press using phrases on all kinds of tchotchke items, the phrases on the shirts don’t have any trademark significance because nobody knows SalamanderShirts’ coffee mugs with “I Love N.Y.” from AlibabaTheGreat’s iPod cases bearing the same phrase. 

So how can a phrase like VOTE FOR PEDRO be trademarked? After all isn’t that phrase too merely ornamental and don’t you see it used on T-shirts and license plate frames and the like? Well, not quite. You see, when somebody encounters another person wearing one of those shirts, they probably put the shirt to a particular source. In this case, the source is the movie studio that produced Napoleon Dynamite. Nobody knows who the heck Joe Smith from Anywhere in the U.S. is who makes shirts on Cafe Press that say “Gun’s Don’t Kill People, I Do”. But even the "VOTE FOR PEDRO" mark faced opposition from the USPTO initially, on the basis that the phrase was not a trademark. The lawyers for 20th Century Fox wisely pointed out that even if the phrase was considered ornamental, it can still be registered as a trademark if it operates to identify a source. The phrase "VOTE FOR PEDRO" did bring to mind a source, the character in the movie Napoleon Dynamite. Indeed, this kind of source designation has found favor with the TTAB in the past,name in the decision of In Re Paramount Pictures Corporation where the TTAB reversed the USPTO examining attorney's refusal of the mark MORK & MINDY for decals for t-shirts. This choice phrase is worth highlighting:

"it is a common merchandising technique in [the U.S.] to license the use of character names and images as trademarks for a variety of products collateral to the product or services in respect of which the name or images are primarily known. Thus, while purchasers may be accustomed to seeing characters' names and images as part of the ornamentation of decals, T-shirts, and the like, they are also accustomed to seeing characters' names and images used as trademarks to indicate source of origin"

Besides, VOTE FOR PEDRO was tied to a very successful film that was critically acclaimed, mentioned numerous times in news reports, and grossed over $100 million between box office ticket sales and DVD sales. So there was likely significant secondary meaning between the phrase and the underlying film.

RE-ERECT WEINER, by contrast, is not tied to any particular source (except Anthony Weiner himself, which is why the USPTO demanded some sort of approval by Weiner for his name to be used as a mark). Perhaps the applicant for "RE-ERECT WEINER" would have been in better shape if he/she had applied for a different mark that wasn’t so obviously connected with Weiner, say the word “WEINER” itself (with the tagline Re-Erect being applied during the production of various items). However the applicant would still likely get an ornamental objection, if they were just using the word as a tagline on a shirt and not in the same way that HOLLISTER or ABERCROMBIE puts their names on the front of shirts. So trademark probably doesn't work (absent a showing of secondary meaning, that people equate the phrase with ONE source).

Thus the applicant would probably have to settle for copyright protection in the designs. Copyright protection in the phrase "Re-erect Wiener" itself is most likely out since the phrase is so short (no puns intended, get your mind out of the gutter!). This works out better for all those t-shirt entrepreneurs who want to make a buck quickly off their political satire because they can make their own shirts too with the phrase.

Sidenote: In case you thought you were going to pick up the phrase that is the subject of this blog post and run with it (no hurt feelings on my part, I don’t even have a Café Press site), it looks like somebody has already beat you to the punch. Somebody on Café Press is selling T-shirts, hats, and other tchotchke items with the phrase “RE-ERECT WIENER”. Nevertheless, the owner of this particular store has taken note of the proper I.P. protection for this particular creation by indicating that all designs are ©.