Clearly Not a Trademark

Originally posted 2012-01-31 00:01:06. Republished by Blog Post Promoter

Clear Bottle.3The glass is half-empty for Pennzoil. John Ottaviani, guest-blogging on Eric Goldman’s Technology & Marketing Law Blog, picked up a pretty interesting decision in the trade dress department (which, not surprisingly, John Welch was all over — in vivid detail — when it hit the TTAB in January):

[T]he Federal Circuit recently affirmed, per curium, the 2004 decision by the Trademark Trial and Appeal Board that Pennzoil is not entitled to register its clear plastic bottle for motor oil as a trademark. In its decision, the TTAB found that the use of the clear bottle was functional, and that, even if it was not functional, Pennzoil has not demontrated sufficent “secondary meaning” or “acquired distinctiveness” to warrant trademark protection.

In this case, the most damaging evidence to Pennzoil’s position that the clear container is not functional is that Pennzoil introduced its clear container after it determined that there was an obvious competitive advantage to displaying the colorization of its synthetic oils and blends in a transparent bottle. Because there were numerous non-reputation related reasons for adopting a clear container, and these were competitive reasons that should not be denied to Pennzoil’s competitors, the Board found that Pennzoil did not have a right to appropriate the use of a clear container exclusively for its motor oils.

Unlike Ottaviani, who says in the piece that he “tend[s] to like ‘non-traditional’ trademarks, such as color, sound, buildings, furniture designs, etc.,” I don’t. I think it’s bad enough that the lexicon is being gobbled up by trademark rent-seekers. I’m not crazy about the rest of the universe being up for grabs for the cease-and-desist bar (of which I have from time to time been a member, I must admit). On the other hand, gee, wouldn’t you think putting the motor erl in a clear bottle is a classic example of a clever package meant to establish secondary meaning, i.e., consumer identification with a single source?

Here’s the whole decision (HT to Ernest Miller).

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Ron Coleman

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