Variations on a Theme

A few attempts have been made to protect a “theme” rather than a specific mark. U.S. Reg. No. 4834592 protects  “a three dimensional trade dress depicting the appearance and design of the interior of a restaurant evoking a Mexican wrestling theme.”

However it is doubtful that the the protection afforded by this registration is as broad as the optimistic description.  The registrant is unlikely to be able to protect this “theme” apart from the various features depicted in the drawing.

Similarly, Reg. Nos. 4783688 and 4830189 protects the “three-dimensional trade dress configuration depicting the interior of a retail beverage store evoking the theme of an aviation airfield.”


Again, despite the broad reference to theme, the registered marks are not likely to be infringed unless the pictured elements are present.


Getting the “Feel” of Trademarks

Sometimes the texture or feel of a product can be a trademark.  For example Reg. No. 4953855 protects “a stamped metal texture design of stylized flowers and curved lines in a repetitive pattern” for bird feeders:


Reg. No. 4375463 protects “the three dimensional configuration of a surface texture on a surface of a football kicking tee”:


Reg. No. 3995345 protects the distinctive wood-grain texture design utilized as a surface feature on packaging and displays:


Reg. No. 3348363 protect a spherical personal fragrance dispenser that resembles a basketball, which: 1) contains lined marking that run throughout; 2) contains a flattened bottom for balancing purposes; 3) contains a “pebble-grain” texture; and 4) contains a rubberized “soft-touch” feel:


Reg. No. 3896100 The mark consists of a leather texture wrapping around the middle surface of a bottle of wine:


Reg. No. 3845630 protect the configuration of a bottle that is rectangular in shape with a rounding of the edges of the corners below the neck of the bottle. The texture of the neck and body of the bottle has a three-dimensional rippling:


Reg No. 2716919 protects the irregular patterned texture containing leaves in relief on a perfume bottle:


Reg. No. 2751476 protects the flocked texture on a label to be used on a glass bottle:





Some Trademarks Lose Their Luster; Some Trademarks are the Luster

A trademark or service mark can be anything that is distinctive of the source, including the luster of the the product.  Thus a trademark might be a metallic surface:

metallica pearlescent surface:


a matte surface:

mattea glossy finish:

glossya frosted surface:

frosteda sparkly surface:

glitterya shiny surface:

shinyand a reflective surface:


Whether incorporated into a product for that purpose, or a happy accident of design, any feature of a product that customers can recognize as indicating source, can be a trademark.

What’s In Store for Trademarks and Services

Virtually anything that identifies one product or service, and distinguishes them from the products or services of others can be a trademark or service.  This includes the configuration of retail stores.  Apple has registered the design and layout of their retail stores, owning Reg. No. 4,277,913 and 4,277,914:



Oro Gold owns Reg. No. 4,948,104 on the configuration of their cosmetics store:

4948104Floyd’s 99 Holdings owns Reg. No. 3,467,850 on the configuration of a hair salon:

3467850Forever 21 owns Reg. No. 3732928 on the configuration of it clothing stores:

3732928Flight 001 Holdings owns Reg. No. 3453856 on the configuration of its travel store:


Clothes Make the Man; They Sometimes Make the Trademark

Costumes and uniforms may be distinctive of a business, and thus may function as a trademark or service mark, identifying the business and distinguishing it from other business.

Thus, there are registrations on the uniforms of “entertainers” for entertainment services.  Reg. Nos. 3234488, 3319643, 3353308, 3392817, 3848988 and Application Nos. 86690033 and 86731130 protect the three dimensional bunny costume used by Playboy Enterprises.86698833

Reg. No. 2694613 protects the “costume” (or lack thereof) of the Chippendales:


There are registrations on the uniforms of food servers for restaurant services.  Reg. No. 4058758 protect the server uniforms at the Tilted Kilt:


And, to be fair, Reg. No. 4936100 protects  a kilt for cleaning and maintenance services by Men in Kilts:


There are registrations on the uniforms of sports teams for entertainment services.  Reg. Nos. 4962486 and  4962487 protect the uniforms of the Washington Bullets:










Reg. Nos. 2015037 and 2188043 on the uniforms for the New York Knicks; Reg. No. 2020341 on the uniforms for the Chicago Bulls; Reg. No. 1812445 on the jerseys of the Philadelphia Flyers; Reg. No. 2029421 on the pinstriped uniforms for the New York Yankees.

There are registrations on the uniforms of services providers for various other services, such as flight attendants (Reg. No. 3773705 by Korean Airlines):


parcel delivery (Reg. No. 2159865 by United Parcel Service):


and (Reg. No. 3061549 by U.S. Postal Service):


(the US Postal Services also owns Reg. Nos. 3,061,544, 3,061,545, 3,061,546, and 3,061,547); Cheerleading (Reg. No. 2906113 by Dallas Cowboys):


Other examples are Reg. No. 2135563 on a taco costume for restaurant services; Reg. No. 1999006 on uniform for tour guides; Serial No. 87007353 on a duck costume for car wash services; Reg. No. 4986282 on a robot costume for DJ services; Serial No. 86640889 on a blue cheese costume for baseball mascot; Reg. No. 4221509 on a costume for performers; Reg. No 4558197 on a showgirl costume for casino services; Reg. No. 4558198 on a lobster costume for casino services.

While they say that clothes make the man (or woman); they sometimes make the trademark.

Shining a Light on Trademarks

Lighting can be visually distinctive, so it is not surprising that various service businesses have registered the exterior lighting of there premises as a services.


U.S. Reg. No. 3697306 protects “green lighting formed by four light fixtures placed in a symmetrical fashion near the entryway of the building” for hotel services — Holiday Inn.


3697305-1U.S. Reg. No.3697305 protects “blue lighting formed by four light fixtures placed in a symmetrical fashion near the entryway of the building” for hotel services — Holiday Inn Express.


U.S. Reg. No. 4594685 covers the three-dimensional configuration of a sidewalk canopy with lighting that creates “a red glowing effect” for hotel and motel services:



When Trademark Registration is a Nice Gesture

Representations of gestures can be trademarks.  For example Facebook’s Application No. 85020073 covers a depiction of a thumbs up gesture followed with the word “LIKE” in a rectangle:


However, Reg. No. 4735632 arguably covers a gesture itself (“The mark consists of a thumbs up hand gesture with the thumb having a face wearing a ninja mask.”):


There is precedent for gestures being a mark: Reg. No. 2520312 (now expired) covered the sign language symbols for the numbers 2520; Reg. No.  2643221 (also expired) covered the sign language symbol for C; Reg. Nos. 1350018 and 2028426 (also expired) covered the sign language symbols for H and D.

If 15 USC 1052(a)’s prohibition against the registration of “immoral, scandalous, or disparaging marks” is affirmed as unconstitutional, one has to wonder what kinds of “gestures” might be registered as trademarks and service marks.

That’s the Way the Cookie Crumbles

On December 2, 2016, Pepperidge Farm sued Trader Joe’s for infringement and dilution of the “famous and unique Milano® cookie configuration trademark.  Civil Action 3:15-cv-0174-AWT in the District of Connecticut.  While the jury is still out on whether or not a typical cookie-munching consumer can tell the difference between  Milanos and Crispy Cookies:


The lesson to be learned from this cookie clash is Pepperidge Farms’ foresight in getting a federal trademark registration on the Milano® cookie configuration:


The registration is “prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce.”  15 USC §1115(a).  It is far easier and less expensive to establish rights in a trade dress ex parte before the U.S. Patent and Trademark Office, than in a contested proceeding in a district court.

While Pepperidge Farms may not have the same success it had against Nabisco back in the 1990’s when it asserted rights in the shape of its Goldfish® crackers (Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 51 U.S.P.Q.2d 1882 (2nd Cir. 1999)), having the registration on the Milano®  trade dress gives it a big advantage in its current contest with Trader Joe’s, saving it from having to establish ownership of the trade dress, and allowing it to focus on proving infringement.

Brand X, Where X = ?

Many of us remember advertising of the sixties, seventies, and eighties, featuring the ubiquitous Brand X.  The guys at Brand X where admirable for fielding a product in almost every conceivable industry, yet pitiable, because time after time Brand X’s offering failed in the 30 second experiments that punctuated our television programming.

Brand X is now gone from the marketplace, not because of its many, many failures, but because manufacturers no longer need to refer to  competitive product as Brand X; they can specifically mention a competitor’s brand in advertising, and even use the mark on product packacing.  There are three (deceptively) simiple rules govering the proper use of a competitor’s mark:

  1. The use must be truthful.
  2. The use must not cause unnecessary confusion.
  3. The use should not alter or deface the trademark.

The use of the mark must be trutthful and accurate.  The use should be literally true, but it should also not leave consumers with a false impression.

The use of the mark also must not cause unnecessary confusion.  It should be clear that there is no relationship with the competitor.  The competitor’s mark should not be so large or prominent that consumers mistakenly beleive that the competitor sponsors or endorses the use of tis mark.

Lastly, the competitor’s mark should not be altered or defaced.  While this last rule is not always essential, a violation will almost certainly bring a complaint from the owner. The status of the mark, and its true owner, should be properly identified, for example “ACME is the registered mark of Acme Company.”

Competitors trademarks can be used in advertising and on product packaging, and when done properly, the public benefits from the ability to make a fair comparison and a better purchasing decsion.  However, because of the sensitivity all brand owners have toward their marks, the use must be carefully crafted and reviewed by experienced counsel.