Intellectual Property

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The Campbell Soup Company (“Campbell’s”) can now tell its competitors, “No CHUNKY soup for you!”  Earlier this month, Campbell’s earned the United States Patent and Trademark Office’s (“USPTO”) approval to trademark the word “CHUNKY.”  Campbell’s has long used the word to describe its more ingredient-filled soups, but now the Camden, New Jersey-based soup giant can officially add CHUNKY to its extensive list of registered trademarks.  Not only is it a major windfall for a soup company to own the rights to a word often used to describe the texture and look of soup, but it is a rare accomplishment, and Campbell’s has pop culture, its lengthy relationship with the National Football League (“NFL”), and years of successful advertising to thank.

Generally, marks considered merely descriptive of the goods for which they are associated cannot be protected until these marks achieve secondary meaning.  A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.   Secondary meaning is accomplished when consumers have come to identify a mark with a specific product over time.  While CHUNKY could be a word used to describe the hodgepodge of extra vegetables, pasta, and meat stuffed into some of Campbell’s soups, Campbell’s successfully demonstrated secondary meaning by citing to “massive unsolicited media coverage” of CHUNKY in its trademark application.  Over the years, CHUNKY has been parodied on Saturday Night Live, Family Guy, The Simpsons, and The Daily Show.  Campbell’s also reportedly spent $1 billion in advertising since 1988, including its NFL sponsorship, and put out commercials featuring NFL players like Reggie White and Donovan McNabb eating the CHUNKY line of Campbell’s soup.    Rapper Ghostface Killah referenced the soup in his lyrics to “Murda Goons” (“Leave your brain all chunky like I’m advertising soup from Campbell’s”) and Pulitzer-Prize winning author Colson Whitehead said in his novel, Sag Harbor, “We were Campbell’s men, had been for years, and nothing took the edge off like the talent in their boutique Chunky line…”  Campbell’s also presented a survey showing that 75 percent of consumers associated the word “chunky” with the soup.  In the end, the USPTO agreed that CHUNKY had achieved secondary meaning in the eyes of consumers, and granted Campbell’s the trademark rights.

But what does this mean for other companies looking to possibly use the word chunky to describe food products?  Campbell’s has reportedly said that the word will be limited in connection with soups – not other food products.  For example, a food product called “Chunky Muffins” would not violate Campbell’s trademark.  Additionally, Campbell’s has said that “non-prominent, descriptive” uses of the word, such as “chunky-style,” that are not a trademark, will not be a violation.  Finally, trademark applicants can learn a thing or two from Campbell’s CHUNKY victory.  Trademark applicants should be reminded of the importance of making meaningful and memorable connections with consumers through multiple avenues for not just products, but words used to describe products.  For it is especially through unique and standout marketing that a mark can achieve the secondary meaning necessary to secure an even stronger position in the marketplace.

The issue of intellectual property used within video games is in the news again. If you haven’t already heard, wildly popular video game Fortnite features a dance called “Swipe It” that is the center of a pending lawsuit. Brooklyn-based rapper 2 Milly is claiming he created the dance in 2015 and the game’s creators swiped it from him. 2 Milly, whose real name is Terrence Ferguson, filed the lawsuit in federal court in Los Angeles against Epic Games, the maker of Fortnite, alleging copyright infringement, right of publicity, and unfair competition claims.  Additionally, the lawsuit accuses Epic Games of appropriating several dances in Fortnite (“emotes”) without permission, including Alfonso Ribeiro’s “Carlton Dance” from “The Fresh Prince of Bel-Air” (renamed Fresh), Snoop Dogg’s 2004 dance from “Drop It Like It’s Hot” (retitled “Tidy”), and Donald Faison’s dance from the TV show “Scrubs,” (renamed “Dance Moves”).

2 Milly’s dance, dubbed the “Milly Rock,” consists of a left arm swing, a right arm swing, a circular motion of both arms, and simultaneous alternative hip swings – repeated over and over again.  But is it copyrightable?  To successfully state a copyright infringement claim and collect damages, 2 Milly will generally have to show that he owns a valid copyright to the dance and that Epic Games copied constituent elements of the dance that are original. There is also the question of whether Fortnite’s Swipe It dance infringes on 2 Milly’s brand as an artist. After all, 2 Milly became known and recognized for his Milly Rock dance and gained fame and popularity for it on a viral level. While the Fortnite avatars participating in the dances do not use 2 Milly’s name and do not appear to look like 2 Milly, there could be an argument that the use of Swipe It infringes on the rapper’s likeness and persona as an artist, who is particularly known for a particular dance. On top of all of this, Epic Games gains a commercial advantage by its use of Swipe It since gamers are prompted to pay approximately $9.50 to “unlock” the Swipe It emote on Fortnite.

While a dispute over the ownership of a dance move portrayed in a video game may seem novel, it is part of a long trend of similar past – and most likely future – disputes. Indeed, the 2 Milly lawsuit was followed shortly thereafter by a lawsuit from Alfonso Ribeiro. Copyright infringement lawsuits have been filed and some are currently pending from tattoo artists against video game studios over the reproduction of players’ tattoos in games. College athletes have battled over the unpaid use of their likenesses in college sports video games. Even Lindsay Lohan tried to sue Rockstar Games over the use of a character she says was based on her likeness.

As video games become more realistic and more intertwined with popular culture (and social media), the issues of intellectual property being used within other intellectual property will show their face again and again. This is especially true as game studios push virtual reality and as consumers expect to see their real worlds reproduced faithfully in video game format. Intellectual property licensing has been a part of the video game world for a long time. But as the content being incorporated into those games transitions from traditional properties like music and brands to more nebulous properties like dance moves and personal likenesses, creators on both sides of the divide need to be aware of their rights and need to be aware of where their properties are being used. In many circumstances, the law is unsettled or there are issues of first impression. Creators who sleep on their rights may miss out on potential revenue streams or may risk the loss of their rights to the public domain. Creators who utilize third-party works may face disruptions or event litigation as works they thought were in the public domain are claimed by their creators. Intellectual property licensing is here to stay in the video game world, and those who are aware of this fact and use it to their advantage are more likely to find themselves in the winner’s circle.

 

On October 23, 2018, the Patent Trial and Appeal Board (the “PTAB”) invalidated a design patent over the shape of an aircraft lavatory, because it had been on-sale prior to the filing date. U.S. Design Patent No. D764,031 S (“the ‘031 patent”) concerned the ornamental design of an aircraft lavatory where the walls were slightly recessed.

Whereas a utility patent covers the way an invention is used and how it works, a design patent solely protects the ornamental appearance of an invention.

The On-Sale Bar
Under 35 U.S.C.A. § 102(a)(1), an inventor is not entitled to a patent if the claimed invention was “described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” This is known as the “on-sale bar.” Here, the PTAB invalidated the ‘031 patent because the patent holder B/E Aerospace, Inc. (the “Patent Owner”) was selling the design prior to the filing date of the patent.

The patent challenger, C & D Zodiac, Inc., specifically pointed to a slide show presentation created by the Patent Owner, as evidence that the lavatory design was on sale and in public use prior to the date of filing. The Patent Owner’s presentation noted that it had received an $800 million contract to sell its lavatory design to Boeing. Photographic evidence showed the lavatory which was being sold to Boeing was virtually identical in design to the ‘031 patent.

Thus, the PTAB found, based on preponderance of the evidence, that the design claimed by the ‘031 patent was embodied by the product that the Patent Owner was already selling, prior to the filing date of the patent. Accordingly, the ‘031 patent was invalidated pursuant to the on-sale bar of 35 U.S.C.A. § 102(a)(1).

 

This article was originally published in the New York City Bar Association’s Aeronautics Committee Newsletter. The views expressed herein are those of the author and not necessarily of the City Bar.

The decision of the PTAB is available at: C&D Zodiac Inc. v. B/E Aerospace, Inc., No. PGR2017-00019, 2018 WL 5298631 (P.T.A.B. Oct. 23, 2018).

Two manufacturers of large inflatable swan-shaped pool floats made a splash in a New York appeals court earlier this month.  The Second Circuit rejected a New York company’s attempt to claim exclusive trade dress rights to a swan-shaped pool float, calling the endeavor “impermissibly overbroad.”

In August 2016, Long Island based pool products enterprise, Swimline International Corp., filed a claim for trade dress infringement against Funboy LLC, a California based pool float manufacturer, in the United States District Court, Eastern District of New York.  Swimline (formerly known as International Leisure Products, Inc.) alleged that Funboy was selling “knock-offs” of Swimline’s inflatable swan pool float. (Both products are pictured below).  While Swimline acknowledged that it holds no registered trademark in its swan design, Swimline alleged its swan float’s trade dress was a protectable composite of various swan-themed elements, including the orange coloration of the swan toy’s beak and the conical shape of the swan toy’s tail.  Ultimately, the District Court dismissed Swimline’s claim in November 2017 after concluding that Swimline failed to adequately allege protectable trade dress in its pool toy.  On appeal this month, the Second District agreed and affirmed the District Court decision.

Swimline’s Swan Float                                          Funboy’s Swan Float

To successfully state a claim for trade dress infringement, the plaintiff bears the burden of establishing protectable trade dress rights under trademark law.  A trademark is a name, mark, figure or symbol that distinguishes the goods and services of one seller from another seller.  Trademarks function as source identifiers, which allow consumers to know where a product came from and avoid confusion.  Trademarks also function as a way for trademark owners to build a reputation and brand loyalty in the marketplace.  Trademarks can exist in things like words, designs, colors, sounds, product shapes (as claimed here), and even scents. What trademark law doesn’t allow, however, is a company to try and monopolize words or symbols or product shapes that competitors might need to conduct their own businesses. This is where Swimline’s claim went belly up.

In the Swimline case, the Second Circuit reasoned that the swan float was not protectable as trade dress for two reasons.  First, the swan float is generic – i.e., that it was a swan-shaped pool float shaped like a swan.  As the Second Circuit put it, trademark protection is “not intended to protect innovation by giving the innovator a monopoly over a useful product feature.”   The purpose of the trademark should be to identify the product’s source, and here, the court said the swan-shaped pool float represents the type of design choice that is “almost invariably” intended “to render the product itself more useful or more appealing” rather than to “identify the [product’s] source.”  Second, the court said that Swimline could not identify the elements and features that actually distinguished its trade dress.  Swimline “[appeared] to be seeking protection for a trade dress that would encompass any bird-shaped pool float with even a passing resemblance” to Swimline’s float, and trade dress rights should not be extended for the purpose of protecting “an idea, a concept, or a generalized type of appearance.”  Swimline’s use of subjective phrases to describe its trade dress like “a pleasing appearance” or “aesthetic proportion” left the Court to guess at what was actually claimed.  For those reasons, the court called Swimline’s claimed trade dress “impermissibly broad,” and affirmed dismissal of Swimline’s case.

When used correctly, trade dress can be a powerful tool to enable consumers to build special connections with products.  Trade dress is not to be used, however, as a way to monopolize on a product’s shape in an anti-competitive manner.  A protectable trade dress needs to be distinctive, non-generic, and definite enough to allow competitors, customers, and the courts to recognize it as a trademark.  So, in the end, although Funboy may have ruffled Swimline’s feathers by designing a similar swan float, Swimline did not have protectable trade dress rights to the swan float in the first place.

Hasbro, Inc. recently made headlines when it received a federal trademark registration for the scent of its Play-Doh product. While it isn’t impossible to register a trademark for a scent, it is rare, and it is a reminder of the many options business owners have to create connections with customers (and even make a big splash while doing it).

Scent trademarks – and other marks like tastes, colors, sounds, product designs, textures, and even moving images – are part of a larger family of marks often referred to as non-traditional trademarks. The USPTO has issued registrations on all kinds of non-traditional trademarks, including the scent of strawberry for toothbrushes, the “Nationwide is on your side” song for insurance agencies, the word “yummm” sung at the end of Red Robin restaurant commercials, and even a cherry scent for synthetic lubricants.

Registering a non-traditional trademark can help a business protect the exact ways it connects with its consumers. As businesses think more about these non-traditional marks, they may find more ways to set their goods and services apart from their competitors’. These marks can be powerful marketing tools in their own rights as well. For example, Hasbro has earned heaps of free press for its scent registration, and even markets the scent on its own as part of a perfume.

Part of the reason these kinds of trademark registrations are so rare is that they are difficult to get. The U.S. Supreme Court has made clear that features of a product are never inherently distinctive. As a result, trademark applicants seeking to protect non-traditional trademarks have a high hurdle to clear to show that the scent, taste, color, etc. has acquired distinctiveness and functions as a trademark. Is the purported mark a functional element of the product? Are there third parties using the same mark? Has the mark been used for a long time? Has the mark (not just the underlying product) been advertised by the business or reported on by the media? These are just some of the questions a business must ask about its purported non-traditional marks.

In the end, Hasbro was able to clear this hurdle and was granted a trademark registration for “a scent of a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough.” Will this registration redefine Hasbro or its Play-Doh product? Probably not. But non-traditional trademarks could help your business mold its marketing efforts into something special, and should be considered as part of any overall branding strategy.