Some Trademarks Lose Their Luster; Some Trademarks are the Luster

A trademark or service mark can be anything that is distinctive of the source, including the luster of the the product.  Thus a trademark might be a metallic surface:

metallica pearlescent surface:


a matte surface:

mattea glossy finish:

glossya frosted surface:

frosteda sparkly surface:

glitterya shiny surface:

shinyand a reflective surface:


Whether incorporated into a product for that purpose, or a happy accident of design, any feature of a product that customers can recognize as indicating source, can be a trademark.

What’s In Store for Trademarks and Services

Virtually anything that identifies one product or service, and distinguishes them from the products or services of others can be a trademark or service.  This includes the configuration of retail stores.  Apple has registered the design and layout of their retail stores, owning Reg. No. 4,277,913 and 4,277,914:



Oro Gold owns Reg. No. 4,948,104 on the configuration of their cosmetics store:

4948104Floyd’s 99 Holdings owns Reg. No. 3,467,850 on the configuration of a hair salon:

3467850Forever 21 owns Reg. No. 3732928 on the configuration of it clothing stores:

3732928Flight 001 Holdings owns Reg. No. 3453856 on the configuration of its travel store:


Louis Vuitton Left Holding the Bag

In Louis Vuitton Malletier S.A. v. My Other Bag, Inc., [16-241-cv] (December 22, 2016), the Second Circuit affirmed summary judgment for My Other Bag that its parody bag did not infringe or dilute Louis Vuitton’s trademark and trade dress rights or infringe its copyrights.

Confused? The Second Circuit Wasn’t.





On the issue of infringement the Second Circuit said that whether it reviewed the district court’s findings as to each Polaroid factor deferentially or de novo (avoiding deciding which was corrrect),  “we reach the same conclusion.”  Obvious differences in MOB’s mimicking of LV’s mark, the lack of market proximity between the products at issue, and minimal, and unconvincing evidence of consumer confusion compelled a judgment in favor of MOB.

On the issue  on dilution, the Second Circuit observed a parody must convey two simultaneous—and contradictory—messages: that it is the original, but also that it is not the original and is instead a parody.  The Second Circuit found that this is precisely what MOB did: “At the same time that they mimic LV’s designs and handbags in a way that is recognizable, they do so as a drawing on a product that is such a conscious departure from LV’s image of luxury—in combination with the slogan “My other bag”—as to convey that MOB’s tote bags are not LV handbags.”

Finally, on the issue of copyright infringement, the Second Circuit found that MOB’s parodic use of LV’s designs produces a “new expression [and] message” that constitutes a non-infringing transformative use.



Biting the Bulleit

In a complaint recently filed in the Southern District of New York (16 CV 09747), Diageo North America, Inc., makers of BULLEIT bourbon sued Sazerac Company, Inc., alleging that Sazerac’s DR. MCGILLICUDDY’S HONEY WHISKEY infringes its trade dress:

bulleitTrade dress is a combination of features that the owner believes makes its product.  Diageo identified its trade dress as comprising:

  • Clear canteen-shaped glass bottle with rounded shoulders;
  • Embossed brand name on the top two-thirds of the bottle;
  •  Arched text in the top line of the embossed brand name;
  • Rectangular label on the bottom one-third of the bottle;
  • Product trademark (e.g. “BULLEIT BOURBON FRONTIER
    WHISKEY”) above the product designation (e.g. “KENTUCKY
    STRAIGHT BOURBON WHISKEY”) on the label;
  • Text divider with arrow and ball shapes between the product trademark and product designation on the label;
  • Border of waved lines on the top and bottom of the label; and
  • Border of waved lines around the bottle cap.

bulleit-2Diageo asserts claims for infringement of its registered trademark, trade dress infringement, federal dilution, state dilution, common law trademark infringement and unfair competition, and deceptive trade practices.  Diageo had the foresight to obtain Reg. No. 3,075,812 in on its trade dress: The registration of its trade dress will certainly help, but Diageo would probably also have benefited from registrations on some of the other features it regards as its trade dress.

The courts will protect trade dress in the absence of trademark registrations, but the many benefits of registration, including the presumption of validity of the registered mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark (15 U.S.C. §1115(a), are a strong motivation to register important trade dress features long before they are taken by others.







Clothes Make the Man; They Sometimes Make the Trademark

Costumes and uniforms may be distinctive of a business, and thus may function as a trademark or service mark, identifying the business and distinguishing it from other business.

Thus, there are registrations on the uniforms of “entertainers” for entertainment services.  Reg. Nos. 3234488, 3319643, 3353308, 3392817, 3848988 and Application Nos. 86690033 and 86731130 protect the three dimensional bunny costume used by Playboy Enterprises.86698833

Reg. No. 2694613 protects the “costume” (or lack thereof) of the Chippendales:


There are registrations on the uniforms of food servers for restaurant services.  Reg. No. 4058758 protect the server uniforms at the Tilted Kilt:


And, to be fair, Reg. No. 4936100 protects  a kilt for cleaning and maintenance services by Men in Kilts:


There are registrations on the uniforms of sports teams for entertainment services.  Reg. Nos. 4962486 and  4962487 protect the uniforms of the Washington Bullets:










Reg. Nos. 2015037 and 2188043 on the uniforms for the New York Knicks; Reg. No. 2020341 on the uniforms for the Chicago Bulls; Reg. No. 1812445 on the jerseys of the Philadelphia Flyers; Reg. No. 2029421 on the pinstriped uniforms for the New York Yankees.

There are registrations on the uniforms of services providers for various other services, such as flight attendants (Reg. No. 3773705 by Korean Airlines):


parcel delivery (Reg. No. 2159865 by United Parcel Service):


and (Reg. No. 3061549 by U.S. Postal Service):


(the US Postal Services also owns Reg. Nos. 3,061,544, 3,061,545, 3,061,546, and 3,061,547); Cheerleading (Reg. No. 2906113 by Dallas Cowboys):


Other examples are Reg. No. 2135563 on a taco costume for restaurant services; Reg. No. 1999006 on uniform for tour guides; Serial No. 87007353 on a duck costume for car wash services; Reg. No. 4986282 on a robot costume for DJ services; Serial No. 86640889 on a blue cheese costume for baseball mascot; Reg. No. 4221509 on a costume for performers; Reg. No 4558197 on a showgirl costume for casino services; Reg. No. 4558198 on a lobster costume for casino services.

While they say that clothes make the man (or woman); they sometimes make the trademark.