Apple Obtains U.S. Trademark Registration for Layout and Design of Retail Stores

Last week the United States Patent & Trademark Office issued a registration to Apple, Inc. for the design and layout of the Apple retail stores. The registration issued as U.S. Registration No. 4,277,914, and protects the totality of the features of the retail store, including but not limited to the clear glass storefront, paneled facade, rectangular recessed lighting units, cantilevered shelves. The Trademark Office determined that this combination of elements had acquired distinctiveness, and that consumers recognize these elements as an identifying symbol of Apple.

U.S. Registration No. 4,277,914

 

The look of Apple's retail stores is protectable as trade dress. In its 1992 Two Pesos, Inc. v. Taco Cabana, Inc. decision, the U.S. Supreme Court held that trade dress that is inherently distinctive is protectable under Lanham Act § 43(a) without a showing that the trade dress has acquired secondary meaning.  However, the Trademark Office found that the design of the Apple store was not inherently distinctive.  When a mark is refused registration on the basis that it lacks distinctiveness, the applicant must submit evidence to the Trademark Office showing that the public associates the mark as the source of the goods or services promoted under that mark.  This is precisely what Apple did. Apple strenghtened its claim of acquired distinctiveness by claiming that the trade dress had been in use in commerce for more than 5 years.

The issuance of this registration is just one step forward in Apple's fight against copy cat retail stores, which have been popping up around the world at a surprisingly high rate. Apple's U.S. trademark Registration in its retail store design provides prima facia evidence of Apple's rights in the look and feel of the popular retail stores.

© Mari-Elise Taube, Stites & Harbison, PLLC, 2013

Send email feedback- mtaube@stites.com

The Kit Kat shape is protectable? Give me a break.

Love the Kit Kat?  Who doesn't, really?  Part of what I love most is that you can break apart each of the "four fingers" while eating it.  This "four finger" design is a trademark of Nestle and the Board of Appeal at the Community Trade Mark Office recently acknowledged Nestle's rights in this design.

Nestle obtained a Community Trade Mark registration of the unique four-finger Kit Kat in 2006, but Nestle's rival Cadbury (now owned by Mondelēz International, a recent split from Kraft Foods) won an appeal which invalidated that registration.  Nestle fought back, and the Board of Appeal at the Community Trade Mark Office reinstated the trademark on the four-finger chocolate bar shape.  This registration prevents other confectionars from selling chocolate bars with a similar four-bar structure anywhere in the EU.

Here in the U.S., the shape and design of a product is referred to as its "trade dress", and if trade dress satisfies the federal standards of trademark protection as identifying and distinguishing a product, it is registerable. To be registerable as a trademark, the elements of the trade dress must be capable of definition such that the public will know the exact parameters of what is being claimed as trade dress. One example of this is the Hershey Bar. Last summer, the United States Patent & Trademark Office granted Hershey's a registration for its signature candy bar shape.

In 2000, the U.S. Supreme Court ruled that product design trade dress can never be classified as "inherently distinctive."  Those claiming rights in product design trade dress, such as the Kit Kat shape or the Hershey shape, must always prove that the design has acquired secondary meaning in the market.  The USPTO found that Hershey’s had presented evidence to show that the design of the Hershey bar had acquired distinctiveness and was therefore registerable.

However, those who can't prove secondary meaning in their product design shouldn't fret.  Design patent and copyright protection are usually available as alternatives to obtain protection for a design that is source identifying but has not yet obtained secondary meaning.

Next time you "have a break", grab a Kit Kat and check out this protected four-finger design.

© Mari-Elise Taube, Stites & Harbison, PLLC, 2013

Send email feedback- mtaube@stites.com

"Beware the Ides of March" or "Much ado about nothing!"

"Beware the Ides of March" or "Much Ado About Nothing!"

Come March 16, 2013, the U.S. Patent Office adopts a "first ['inventor'] to file" system from its present, "first to invent" system.  Certainly, the rules will “change” after March 15, 2013 but the effect may be minimal.  In order to see how, one needs to understand the current "first to invent" rule, how it has worked over the decades, and compare it to how the new "first to file" rule will function.

Under the current "first to invent" rule, the first person(s) to create a new invention and subsequently file a patent application, is entitled to consideration for a patent.  Although an applicant is initially granted an "effective" date of invention as the date a patent application is filed, under the "first to invent" rule, an applicant can submit evidence of an earlier date of invention.  The earlier date is beneficial if the applicant needs to prove he or she invented the invention before another as well as for eliminating references from being cited against a patent application when the Patent Office is accessing a patent application for novelty and non-obviousness (e.g. requirements for patentability).

The soon to be enacted "first to file" system will eliminate an applicant from establishing an earlier date of invention.  But, will this rule change have any real impact on most patent applications?  In other words, should applicants "Beware the Ides of March" or is this "Much ado about nothing"?

Professor Dennis D. Crouch (University of Missouri School of Law and creator and author of the blog, Patently-o) in his 2010 Michigan Telecommunications and Technology Law Review, Vol. 16, No. 1, 2010 law review article, Is Novelty Obsolete? Chronicling the Irrelevance of the Invention Date in U.S. Patent Law suggests that a first to file system will have minimal effect on patent applicants.  Based on his analysis of 21,000 patent applications, very few applicants availed themselves of or were successful in establishing an earlier filing date.  For example, only 0.1 % successfully relied (exclusively) on establishing an earlier date of invention, to overcome an Examiner's rejection.

Other provisions to take effect on March 16, 2013 may also have limited impact on most U.S. inventors.  For example, starting March 16, the applicant's invention in public use or on-sale anywhere in the world will be considered prior art against a patent application, thereby possibly limiting patentability. Under current law, the public use and on-sale are limited to the U.S.  Since most U.S. inventors would have U.S. public use and/or on-sale inventions in the U.S. first (if at all), rather than somewhere else in the world, it appears on first blush that this change in the law will also have little impact on most U.S. inventors.

One provision which may have more impact on a U.S. inventor is that starting March 16, 2013, an applicant is given a limited* one year grace period to file a U.S. patent application after his or her own public disclosure* (which may include use or on-sale activities).  After the grace period expires, an applicant will be barred from filing a patent application.

Under the current law, the one year grace period for filing a patent application after a public disclosure, use or on-sale activities is not limited to only those of the inventor.  Consequently, under the existing law, an inventor could file a patent application up to one year after any public disclosure (i.e. the inventor's or a third party's).  Non-disclosure agreements and secrecy are two ways for limiting potential pitfalls from third parties' unauthorized public disclosure, which may bar patentability under the new law. 

© Stephen J. Weyer, Stites & Harbison, PLLC, 2013

Send email feedback- sweyer@stites.com

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Are the Keebler Elves the Cookie Monster?

Are the Keebler Elves the Cookie Monster?  According to Kraft Foods (parent company of Mondelēz International and Nabisco, makers of Oreos®, Chips Ahoy®, and Fig Newtons®), the Keebler elves were found with their hands in the proverbial cookie jar.  Kraft filed suit on January 16, 2013 alleging that Kellogg Co. (parent of Keebler), is infringing its "snack 'n seal" patent, U.S. Patent no. 6,918,532* covering a resealable cookie container. 

The patent covers the "crowd pleasing" feature of a cookie container with top, resealable opening verses the conventional container with crimped end opening.  In the "old school" cookie containers with crimped and twisted end, one had to painstakingly, uncrimp and untwist one end of the container, withdraw the cookie tray, remove one or more cookies and then tediously, return the tray to its original, completely, in wrapper position, and then re-twist the crimped end.  With the patented resealable opening, one effortlessly pulls back on a tab to withdraw a resealable flap from the top of the container, grabs one or more cookies from the tray inside, and gently returns the flap to its original, sealed position on top of the cookie container.

(* With full disclosure, my firm was responsible for drafting and prosecuting the patent application through the U.S. patent office.)

© Stephen J. Weyer, Stites & Harbison, PLLC, 2013

Send email feedback- sweyer@stites.com

Kim + Kanye = Baby™

It appears that Kim Kardashian would like to follow in the footsteps of Jay-Z and Beyonce and seek a trademark registration her baby's name. Last year, the couple filed an application for registration of "BLUE IVY CARTER" for use on or in connection with a number of goods and services -- everything from fragrances to baby rattles to entertainment services in the nature of live musical perforances. The registration hasn't yet issued, since the couple hasn't actually used the trademark in commerce on or in connection with the goods and services listed in the application.

A federal trademark registration can only be obtained once a mark has actually been used in commerce. However, those applicants who have an "intent" to use a trademark in commerce in the future may file an application for registration of the trademark on an "intent to use basis". An applicant who files on an "intent to use" essentially gets to reserve the trademark in connection with the goods and services listed in the application, but must show actual use of the trademark in commerce on the goods and services listed in the application before a certificate of registration will issue. Keep in mind that a mark can't remain on reserve forever; applicants only have three years after the Notice of Allowance issues to prove use of their mark in commerce.

This raises another question. Can someone really register their baby's name? Suprisingly, yes. The Trademark Office will permit federal registration of a "personal name" such as BLUE IVY CARTER without proof of acquired distinctiveness. However, registration of a surname alone requires proof of acquired distinctiveness. It is also important to note that the name of a living person cannot be used as a mark or federally registered as a trademark without express authorization of that person (or their legal gardian). This begs the question -- will Kim sign or will Kanye? Sources say it surely won't be Kanye.

We'll be checking the PTO records intently to see whether the fashionista goes through with filing an application for registration of her baby's name. Will the owner of record be listed as Kimsaprincess, Inc. or Kim Kardashian? We'll have to wait and see.

High-Tech companies' patents dominate granting at the U.S. Patent Office

According to a New York Times article, "The 2012 Patent Rankings: IBM on Top (Again), Google and Apple Surging", I.B.M. ranked no. 1, for the 20th consecutive year with 6,478 patents being granted.  Samsung was ranked no. 2, with 5081 patents and Canon, no. 3 with 3174.  Honorable mention goes to Apple and Google which both had huge gains in the number of patents to issue in 2012 as compares with 2011, according to the Times article. 

A list of the top 50 U.S. patent assignees was compiled by IFI CLAIMS^® 2012 Top 50 US Patent Assignees.  From this list, the overwhelming majority are high-tech companies.  There are many reasons for this, including the nature of the technology and breadth or scope of high-tech inventions/patents verses other technologies.  What is clear is that high-tech companies value their patent intellectual property and are willing to invest time and money to secure patents for their innovations.

© Stephen J. Weyer, Stites & Harbison, PLLC, 2013
Send email feedback- sweyer@stites.com

Fighting for the Gold Glove

Rawlings Sporting Goods Co. Inc. has filed a trademark infringement suit against Wilson Sporting Goods Co. and Brandon Phillips, a second basement for the Cincinnati Reds claiming that the golden-colored baseball glove made for Phillips by Wilson infringes Rawlings' trademark rights. Rawlings asserts that the "golden glove" is a knockoff of Rawlings' famous Gold Glove award and is likely to result in consumer confusion. Rawlings also alleges that Wilson's glove with golden-colored webbing, stitching, and lettering constitutes unfair competition, trademark dilution and false advertising.

Rawlings owns trademark registration for "THE GOLD GLOVE AWARD", "GOLD GLOVE AWARD" and also "GOLD GLOVE". In early 2012, Rawlings filed an application for registration of "THE GOLD GLOVE CO." I think it's safe to say that Rawlings is trying to claim rights in . The real question is whether Rawlings' case is a home run. Phillips certainly doesn't think so; Phillips filed a motion to dismiss the case against him earlier this week.