Touch Trademark Update

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‘Tis the Season for billboard ads like this, sorry Nancy.

Anyway, it reminded me of a very early post of mine on touch trademarks, here on DuetsBlog.

That early blog post noted Diageo’s federally-registered purple bag non-traditional trademark, and that a third party had slipped in at the USPTO to federally register a velvet touch mark for wine:

Although Diageo appears to have made no attempt yet to federally register or protect the velvet touch or feel of the Crown Royal pouch bag, American Wholesale Wine & Spirits, Inc., obtained a federal trademark registration toward the end of 2006 for a touch mark comprising “a velvet textured covering on the surface of a bottle of wine.”

[D]uring prosecution of the “velvet touch” trademark application for wine, the Trademark Office noted the sale of velvet bags for use in carrying wine and distilled spirit bottles, particularly the Crown Royal whiskey bottle example. However, convincing the Trademark Office that the “velvety touch” of the Khvanchkara wine bottle was so unique as to be inherently distinctive, American Wholesale successfully argued the difference between the “loose fitting bag” of Crown Royal and others as compared to how Khvanchkara’s “glass bottle is tightly encased within a velvety fabric,” and perhaps most importantly, noted: ” [T]he FEEL of a LIMP bag is quite different from the FEEL of a TURGID velvety surface attached to a wine bottle.”

The Khvanchkara “velvet touch” registration served to bar registration of another company’s leather touch mark for wine, describing the claimed mark as: “[A] leather-like textured covering on the surface of a bottle of wine, brandy or grappa.” Here was the Trademark Office Examining Attorney’s analysis in refusing a leather touch based on the prior velvet touch: “Although the coverings are different materials, both are highly textured and closely cover the glass wine container. The marks are therefore highly similar in appearance . . . . The goods at issue are all wine. Purchasers could mistakenly believe that the goods come from a common source.” (Putting aside the obvious tactile differences between leather and velvet, why is the Examining Attorney comparing the “appearance” of the touch marks, shouldn’t the “texture and feel” be the appropriate point of comparison?)

Quite a bit has happened since that post from July 2009:

  1. The “velvet touch” registration for wine was cancelled under Section 8 of the Lanham Act;
  2. A different wine-maker has now federally-registered a “leather touch” trademark for wine;
  3. A fragrance dispenser with a “pebble-grain” texture and rubberized “soft-touch” feel is now inconstestable;
  4. A German company failed in its attempt to federally-register the tactile surface of a pharmaceutical pump dispenser; and
  5. Diageo apparently remains uninterested in pursuing any touch trademark registrations.

Last, the Bawls Energy Drink trade dress that includes “bumps” on the surface of the blue bottles is now “incontestable,” but functionality never goes away as a possible basis for invalidation.

All in all, it appears that touch marks remain one of the least popular type of non-traditional trademarks, at least for registration purposes — so, what is your favorite touch mark?

Topics:  Advertising, Billboards, Marketing, Trademarks, USPTO

Published In: Communications & Media Updates, Intellectual Property Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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