In the US, color alone may be protectable as a trademark when it identifies and distinguishes a particular brand. This type of color, trademark protection is most common with industrial goods like fiberglass insulation that must conform to strict regulatory standards. For example, ‘pink’ fiberglass is a trademark of Owens Corning.
FASHION, however, is another world entirely and the high-end shoe designer, Louboutin, was recently denied a monopoly over the color RED used on the soles of designer footwear. Even though Louboutin was granted a US trademark registration for red soled shoes in 2008, a Manhattan judge recently held that Louboutin could not prevent Yves Saint Lauren (and other designers) from designing and selling red-soled shoes. The judge also stated that Louboutin’s ‘Red Sole’ trademark registration was likely to be cancelled. (This holding is likely to be challenged, appealed… and possibly overturned).
Wouldn’t it be strange to think of only one designer or fashion house owning an exclusive right to use a particular color? The court thought so and held the fashion industry is a highly creative industry dependent on access to the full spectrum of colors.
(Interestingly, the judge did create a distinction between Louboutin’s Red Sole mark and other fashion color marks like the Burberry Plaid because the plaid is an arrangement of different colors and not a specific, single color.)
Enjoy this new freedom to paint your soles red.
BY: Vanessa Kaster, Esq., LL.M.
For more information: NY Law Journal: http://www.law.com/jsp/nylj/PubArticleNY.jsp?id=1202510810474 and Judge Marrero’s 8/10/11 Decision: http://www.nylj.com/nylawyer/adgifs/decisions/081111marrero.pdf. Red Sole USPTO Registration # 3361597. @iplegalfreebies and www.kasterlegal.com.
Fashion exhibits often have strong trademark connections due to the popularity of iconic fashion labels and brands; however, archeology exhibits are less likely to be ‘name branded’ with trademarks. Generally speaking, anything that can be exhumed from an ancient resting place predates trademark registration systems.
The times are changing… and ‘The Mummies of the World’ exhibit, currently on display at the Franklin Institute in Philadelphia, has submitted trademark registration applications for the term: MUMMYOLOGIST in several classes. The MUMMYOLOGIST trademark applications are ITU (Intent to Use) applications and it will be interesting to see how the MUMMYOLOGIST brand is developed to establish the requisite USE for trademark registration.
Every trademark registration application must designate at least one class of goods or services where the mark is ‘used in commerce’ (as a brand) in order to qualify for trademark registration. The MUMMYOLOGIST trademark applications designate 4 classes: 2 classes of services (‘educational exhibitions’ and ‘providing information on archeology’) and 2 classes of goods (‘clothing’ and ‘printed material’). The two service classes for which ITU applications are pending could be a good fit for developing a MUMMYOLOGIST brand; because, it seems likely that a MUMMYOLOGIST brand can be developed and used to promote and sell the services of ‘educational exhibitions’ and ‘providing information on archeology.’ However, the two classes of goods for which ITU applications are pending could be a bit trickier; since, the mark will need to be used as a brand and not merely as ornamentation on clothes and other goods to qualify for trademark registration.
USPTO rejections for ‘merely ornamental use’ are difficult to overcome and often leave popular graphics without the protection of a trademark registration. (Just because a graphic or logo is printed on a t-shirt that is bought by a lot of people, doesn’t means that it is operating as the trademark or BRAND of the shirt. The brand is generally the mark that’s on the inside label in the back of a shirt.) It will be interesting to see how USE will be claimed for the MUMMYOLOGIST trademark applications.
That’s a wrap on the MUMMYOLOGIST trademark applications. Let’s see if they dig up the requisite use requirement to register this neat mummy mark.
Info on the exhibit: http://www.fi.edu/mummies/info.html and the trademark serial numbers: 77829439; 77829436; 77829434; 77829430; @iplegalfreebies and www.kasterlegal.com.
BY: Vanessa Kaster, Esq., LL.M.
A major benefit of registering a Trademark is the exclusive right to use the Trademark, which comes with registration. Ownership of a registered Trademark bestows an exclusive right to use the Trademark with or on ALL similar goods and services. This exclusive right restricts other people, companies and businesses from using your Trademarked term or logo on similar goods and services. This exclusive right can be a powerful tool in the marketplace.
For example, POPSICLE is a registered Trademark of Unilever and only Unilever has the authority to use the word POPSICLE when selling, advertising and promoting frozen treats on a stick. This means that the word POPSICLE is off limits to any other person or company selling frozen treats on a stick. POPSICLE cannot be used on other companies’ product names, blogs, napkins, merchandising, or advertising. As you can see, this carries a lot of weight in the market place against competitors. The unauthorized use of the mark POPSICLE recently put a small shop in Brooklyn in a bind when they started making and selling a product called ‘People’s Popsicles.’ Since the shop did not have permission from Unilever to use the POPSICLE trademark, the shop had to rename their product, print new merchandising, and erase every use of POPSICLE from their menu and blog.
Exclusive use rights that come with owning a registered Trademark are powerful. Don’t underestimate their value in the market place.
BY: Vanessa Kaster, Esq., LL.M.
More information on this subject: ‘NAME Brand’ – Using your Name as a Brand and Trademark; Is Unilever’s Popsicle Trademark Melting Away? at http://www.kasterlegal.com/storage/NYSBA%20Electronically%20In%20Touch.%20%20Article%20by%20Vanessa%20Kaster.pdf and http://www.nysba.org/Content/NavigationMenu24/ElectronicallyInTouch/2010Issues/September2010/default.htm; @iplegalfreebies and www.kasterlegal.com
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