Trademarks Are Magic

"IP in the Metaverse: Protecting IP Rights in the Virtual World" IDEA Symposium at UNH Franklin Pierce School of Law (November 4th, 2022)

Big real world thanks to IDEA, the law review of the Franklin Pierce Center for Intellectual Property, especially the entire editorial board for Volume 63, for the opportunity to talk about trademarks as part of the symposium, “IP in the Metaverse.” 

If you were too cheap actually to register for the Alt Legal Connect Conference you can still enjoy my slides (minus the witty banter) by clicking here.

Added to the Supplemental Register at the U.S. Patent & Trademark Office on September 18th, 2018:

“The colors gray and red as applied to storage containers for fabric cleaning fluid”

as capable of indicating the source of 

“Cleaning agents, namely, fabric cleaning fluids”

According to the registration records, both marks shown below have been used in commerce in connection with fabric cleaning fluid since at least as early as December, 2000.

(U.S. Registration Number 5567345)

Applying to register something as a trademark can have significant legal implications. In addition, applications for registration often seem to exhibit elements of social commentary (for example, see the application to register the image below as a trademark for clothing). If First Amendment analysis made any sense in the context of federal trademark registration (spoiler: it doesn’t), an interesting tension might develop between registration of (or the refusal to register) certain applications for registration as social commentary and the principles of Free Speech. For more on this subject, particularly in the context of when consent for registration is required, feel free to peruse my slides for Applications for Registration as Social Commentary (and thanks very much to the Paralegal Division of the North Carolina Bar Association for the opportunity to talk trademarks).     

Applying to register trademarks that exist in three dimensions can be challenging. For more on this subject, feel free to peruse my slides on the subject of applying to register trade dress trademarks at the U.S. Patent & Trademark Office. (Alternate title: Trade Dressing for Fun & Profit.) Thanks very much to AIPLA for the opportunity to talk trademarks (and in such good company!) as part of their Design Rights Boot Camp.

As a follow-up to last week’s Flying-V post, this week we’re looking at the Flying-V’s sibling, the Explorer:

When it was introduced in 1958, The Explorer (though not initially commercially successful) stood apart from other solid body electric guitars, not least because the body didn’t resemble a traditional guitar at all:

Based on the readily-recognized shape (bolstered by long use in the marketplace), Gibson applied in 1994 to register the “fanciful configuration of a guitar body” as a trademark for guitars: 

On April 22, 1997, the shape of the Explorer was added to the Principal Register at the U.S. Patent & Trademark Office as a trademark for guitars from Gibson: 

In order to be registered as a trademark (in the United States), subject matter must be capable of indicating the source of goods- that is to say, it must be distinctive. Where the subject matter is the shape of the goods, the shape must be sufficiently unusual or notable in order for consumers to recognize it as an indicator of source. In this context, solid body electric guitars have an interesting history. 

Unlike amplified acoustic guitars, solid body electric guitars are specifically designed not to be overly resonant (in order- at least initially- to avoid problems with feedback). Since the tone derived from the instrument is no longer determined primarily by the design and dimensions, it is now possible to achieve a perfectly serviceable amplified sound from solid body electric guitars in almost any shape. Rather than merely functioning to secure strings, the shape of a solid body electric guitar can also be employed to indicate the source of the guitar. Which brings us to the Gibson Flying V:    

From the time it was introduced in 1958, The Flying V (though not initially commercially successful) has stood apart from other solid body electric guitars, not least because the V-shaped body doesn’t resemble a traditional guitar at all:

Based on the readily-recognized shape (bolstered by long use in the marketplace), Gibson applied in 1994 to register the “fanciful configuration of a guitar body” as a trademark for guitars: 

On April 15, 1997, the shape of the Flying V was added to the Principal Register at the U.S. Patent & Trademark Office: 

First displayed in 1904 (as part of the Louisiana Purchase Exposition's "Palace of Mines and Metallurgy"), this 56-foot tall, cast-iron statue depicts the Roman god Vulcan, god of the fire and forge:

The statue was commissioned to symbolize the rich mineral resources and industrial abilities of the city of Birmingham, Alabama, and was registered in 2008 as a trademark for:

Promoting economic development, business, chamber of commerce, services in the nature of convention, and tourism in and around the city of Birmingham, Alabama; Retail gift shop services featuring articles relating to the Vulcan park statue the "VULCAN" and the history of Birmingham, Alabama; Promoting and enhancing the image of the city of Birmingham by arranging for the licensing of the Vulcan park statue, its likeness, and the Vulcan name in connection with goods such as wearing apparel, foods, and novelties

and

On this day in 1997, years after being introduced but years before ownership was transferred to Apple Computer, the following logo at Apple Corps was registered at the U.S. Patent & Trademark Office as a trademark for (among other things) “gramophone records featuring music”:

The logo employed for B-sides of records had been registered on February 11, 1997:

Both images were the work of graphic designer Gene Mahon, based on the painting “Le jeu de mourre” by René Magritte:

This strip of “dark fabric attached to the interior side of a hem of a sleeve placket of a button down dress shirt” has been deemed capable of indicating the source of goods and added to the Supplemental Register at the U.S. Patent & Trademark Office:

While the description of the mark specifies “a button down dress shirt,” the identification goods includes, simply, “shirts.”

Also worth noting is the fact that, although the strip is referred to as “dark,” no specific shade is mentioned, nor is the claim limited to fabric that would contrast with the color of the overall shirt.   

Velossa Tech Engineering Corp. has been busy filing applications to register the following items as trademarks for intake manifolds:

The mark consists of a smoothly transitioning triangular intake duct with a flared mouth piece depicted with contour lines showing depth and shading

The mark consists of a stylized swooping intake duct with a flared inlet mouth piece depicted with contour lines showing depth and shading

The mark consists of a stylized swooping intake duct with a flared inlet mouth piece depicted with contour lines showing depth and shading

The mark consists of a stylized swooping intake duct with a flared inlet mouth piece depicted with contour lines showing depth and shading

The mark consists of a stylized swooping intake duct with a flared inlet mouth piece depicted with contour lines showing depth and shading

The mark consists of a rounded rectangular big mouth intake positioned off centered within the frame of a car grill

The mark consists of a rounded rectangular big mouth intake positioned approximately in the center of the frame of a car grill

Here are my slides for “The Artist’s Dilemma: Copyright Infringement in Cyberspace,” part of the conference “The Intersection of Cybersecurity, Data Privacy, the Constitution & the Law,” organized by the Intellectual Property Law Institute at the North Carolina Central University School of Law; please feel free to follow along at home.   

It is not uncommon for registrations of marks in three dimensions to contain fairly detailed descriptions of the mark, accompanied by brief identifications of the goods.

One such registration contains the following description:

The mark consists of a three-dimensional configuration of a cupcake's swirl-shaped frosting, which is on the cupcake's top and is comprised of a spiral shape with deep grooves between the curves in the spiral

and goes on simply to identify the goods as:

Bakery goods, namely, cup cakes.

In an interesting inversion of this pattern, the description of the mark for this light bulb registration reads: 

The mark consists of the configuration of an electrical, ornamental bulb for a lamp

but identifies the goods in great detail as follows:

Electrical ornamental lamp bulbs wherein an electrical voltage is applied across one or more inert gases within each of the bulbs to create a plurality of traveling electrical arcs in one or more colors; and electrical ornamental lamps.