Trademark

Should Colors Be Protected as Trademarks? If Not, Should Letters? How Shoe Soles and Mobile Apps Might Be Related

One of the pleasures of practicing law, perhaps especially in the technology space –is in observing how technology trends and legal theories n Qualitex v. Jacobson, determined that single colors could be protected as trademarks—as long as the color, as applied to the relevant products, was not merely functional. Previously, some feared that granting trademark protection to single color (even if the color was non-functional) would be anti-competitive because colors were in short supply. Hence, no one should own one color exclusively. The Qualitex ruling seemed to provide closure on the issue by focusing the analysis on the functionality of the color shade rather than the potential for that color to be removed from the designer’s pallet.

But recently, as the trademark community knows, the Second Circuit Court of Appeals took up the appeal in Louboutin v. Yves Saint Laurent, a case that revisits the protectability of color, this time as used to identify a brand of shoes. The District Court opined that the use of red on a shoe sole (or on any fashion item) was “functional” by its very nature and that granting a monopoly to color on a fashion item was outside the bounds … Keep reading

Settlement

As of July 2, 2012, the World Trademark Review and its blogger, Helen Sloan, are reporting that Apple has agreed to pay $60 million to Proview Technologies for the IPAD mark in China.  As I previously summarized in an earlier post, Apple thought it had already acquired all the rights to the IPAD mark, but it learned after a transaction with Proview’s sister company that it had not (allegedly) obtained a complete assignment in China from the record owner of the rights there.  Apple’s proffered settlement is quite a bit larger than the $16 million it was rumored to be offering, but given the popularity of the Apple device and the potential market in China, the sum is a worthy investment.

Lessons from Apple’s experience include:

1)  Diligence needs to be thorough.  Mixed ownership of assets in related, sister and subsidiary names is not uncommon.  Making sure the papers are signed by the right entity is critical to finalizing a deal and getting genuine closure on the acquisition of any intellectual property right.

2) Negotiating through an acquisition subsidiary can be perilous.  Apple used a separate corporation to purchase rights to the IPAD mark in various countries … Keep reading