Written by: Susan Neuberger Weller

The City of Houston, Texas has filed a Petition For Writ Of Certiorari with the Supreme Court of the United States asking the Court to interpret Section 2(b) of the Lanham Act to determine whether it prohibits a government entity from federally registering its own flag or coat of arms or other insignia as a mark with the US Patent and Trademark Office.  The City of Houston v. Acting Director, U. S. Patent and Trademark Office, 13-784 (S.Ct. December 30, 2013). As was noted in our previous post on emoticons, US trademark law prohibits the registration of marks which fall into many different categories, including any mark which “consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.”  The original Examining Attorney for Houston’s application for registration, and the US Trademark Trial and Appeal Board and the US Court of Appeals for the Federal Circuit in subsequent appeals, all agreed that the “plain meaning” of the statutory language prohibited such registration. Does this make sense?

Continue Reading Houston, We Have a Problem: City Petitions the US Supreme Court to Register Its Official Seal as a Trademark

Written by Susan Neuberger Weller

A recent TTAB case addresses the issue of functionality and protection of design.  In the case In re Navy Exchange Service Command, (“NEXCOM”), the TTAB issued a non-precedential decision on September 29, 2012 in which it reversed the Examining Attorney’s refusal to register four irregular block-shaped, multi-colored pixilated pattern design marks that the US Navy used on clothing and fabric. The grounds for the Examining Attorney’s refusals were that the pattern designs were functional.  The functionality finding rested not on the conclusion that the patterns served any camouflage function, but that the patterns masked stains and wear-and-tear, thereby making them essential to NEXCOM’s requirements for a neat and clean Navy uniform. Continue Reading Pattern Designs on US Navy Uniforms and Fabric Are Non-Functional Protected Trademarks

Written by Susan Neuberger Weller

On July 2, 2012, the U. S. Patent and Trademark Office Trademark Trial and Appeal Board (“TTAB” or “Board”) granted Hershey’s request to register the design and shape of a chocolate bar as a trademark on the Principal Register. The design was described as “a configuration of a candy bar that consists of 12 equally-sized recessed rectangular panels arranged in a four panel by three panel format with each panel having its own raised border within a large rectangle.” The drawing for the mark is set forth below:

The issue in “product configuration” trademark cases is whether the design features sought to be protected are “functional”. If the overall design is functional, trademark protection is barred. In this case, the TTAB held that although the rectangular shape of the entire candy bar and the individual rectangular shapes scored within the bar were functional, since they made it more convenient to easily divide the bar into equal pieces, the overall design, when considered in its entirety, was not purely functional. Rather, the Board determined, based on the evidence presented that reflected a wide variety of shapes and decorative designs used for candy bars, that the particular combination of recessed rectangles with a raised border in the Hershey bar was not functional and, therefore, could be protected as a trademark. Continue Reading Hershey Thinks Outside the Box (or the Candy Wrapper) in Seeking Trademark Protection for a Product Shape