In a little pink bag
My friend Christine Farley has it in the bag:
USPTO put this damning piece of evidence in the file: pic.twitter.com/cVPvGO14Gp— Christine Farley (@Prof_Farley) January 28, 2020
Or does she? Appearing for the applicant (at least on Twitter), it’s Gaston Kroub!
I just asked my 11 year old daughter if she knew what a pink ziploc bag means. Her answer: “Its Glossier. I love Glossier. Wanna buy me?”. Secondary meaning proven in the tween sector…— Gaston Kroub (@gkroub) January 28, 2020
OK, one 11-year-old’s testimony doesn’t prove secondary meaning, right?
Well, it tells us something — namely that a survey may very well be called for. But what about those “TSA-approved” generic-looking pink bags? Well, they could prove genericness. Or they could be infringements. They do appear to be a slightly different color… but is that the hill Glossier wants to die on?
OK, hip grampa or not, I have no idea what Glossier is except Google showed me this. So, acknowledging that we are doing this in classic LIKELIHOOD OF CONFUSION fashion and writing the post backwards, let’s go to the original source post by the inestimable Julie Zerbo:
In every order that a consumer makes on Glossier’s e-commerce site or in its small network of brick-and-mortar outposts, the products – whether it be the Generation G blotted lipstick, the cult-favored Boy Brow eyebrow product, or the brand’s Balm Dotcom and Cloud Paint multi-purpose skin salves, etc. – come packaged in a ziplock pouch. Millennial pink, of course, the pouches are unique in that they are composed almost entirely of bubble wrap.
In furtherance of Glossier’s quest to become “the Estee Lauder of the future,” as founder Emily Weiss put it, the New York-based direct-to-consumer brand has raised nearly $200 million in venture funding, “making it one of the most well-funded privately held beauty businesses,” per TechCrunch, and has been busy building out an arsenal of products and trademark rights, alike, filing applications for registration for its signature pink hue as applied to bubble wrap bags, among other things, such as its brand moniker and various product names, as well as the shape of its “Play” fragrance bottle and its millennial pink-lined shipping boxes.
On the heels of filing a trademark application for its pink bubble wrap-lined ziplock pouches – which it uses in connection with its marketing and sale of “cosmetics; makeup; [and] skincare products” – in the spring of 2019, the U.S. Patent and Trademark Office (“USPTO”) pushed back.
In an initial (and non-final) refusal to register the Glossier pink pouch trademark (or better yet, pink pouch trade dress) in July, an examining attorney for the trademark body held that the pink pouch is ineligible for registration because it “appears to be a functional design for such packaging” (and functionality is an absolute bar to registration), and because the mark “consists of a nondistinctive configuration of packaging for the goods that is not registrable … without sufficient proof of acquired distinctiveness.”
Well, let’s just say that the post at The Fashion Law is one more reason not to think you can learn anything, much less law — even trademark law! — by reading a couple of tweets. It’s a great post and you should read it, but to round out this blog’s derivative, and far less incisive, treatment of the matter, here’s another excerpt:
By way of a new 252-page filing this month, Glossier initially clarifies exactly what the mark at issue is: “the mark consists of the claimed color pink as applied to a very particular type and configuration of product packaging,” asserting that “the air bubbles and the packaging itself are not claimed as features of the mark.” By disclaiming any rights in the packaging, itself, and only claiming rights in the specific color pink when used on such packaging, Glossier claims that it removes any issues involving functionality.
As for the bulk of Glossier’s filing, that centers on the brand’s assertion that its use of the color pink on its packaging has acquired distinctiveness, namely “based on five years’ use of the mark, as well as extensive evidence that when the relevant consumers see the color pink on a bubble-lined, zip-top pouch, they immediately recognize it as Glossier’s Pink Pouch.”
To prove that, Glossier provides third-party media articles about its brand that make mention of its use of the pink pouch, as well as examples of consumer social media posts featuring the pink pouch, which Glossier says “demonstrate that many consumers already associate the Pink Pouch with [it], [while also] serving to educate even more consumers and reinforce the association between the Pink Pouch and Glossier.”
The brand goes on to assert that the pink pouch “has been used continuously since at least as early as 2014 [by Glossier], and in 2018, the revenue generated by sales of goods [that included use of] the mark amounted to more than $100 million.”
Ah. The specific color pink! So, it is that hill.
Well, it’s good that they’re using social media posts.
Sooner or later a circuit court will come out and explicitly admit that social media use is relevant proof of secondary meaning. It’s ridiculous that, as far as I know that hasn’t happened yet.
But I digress. Carpenter, nail, hammer, you know.
Anyway, yeah, specific color pink. Obvious problem there, and all the same an interesting question about the strategy of pulling back from a relatively common kind of sort of bubble-wrap “configuration” to, also, a “specific” one. Is that really recognizable by the average consumer as distinct from the kind being sold to travelers?
Yeah, I wouldn’t want to die on this hill — especially in the absence of a survey, which seems very absent indeed here. Surveys are a world of trouble: rather arbitrary rules about when they’re “reliable” under Daubert; what their absence does or doesn’t tend to prove by implication (answer: whatever supports the judge’s gut take on the trademark); expensive as all get-out.
But sometimes the un-submitted survey is indeed the dog that did not bark. Secondary meaning surveys are certainly admissible in the USPTO, under TMEP 1212.06(d). Based on the present states of the mark description, though, the survey here would have to demonstrate that the relevant consuming public would indeed distinguish the specific pink and the specific “configuration” shown in the amended application from .. just pink and just a bag.
That may turn out to be a tough hill for Glossier to capture after all.