Back in April, I wrote about a client of mine who invented the wheel – a new, lightweight, stable, good-looking bicycle wheel. Several patents were awarded to Toledo inventor Rolf Dietrich for his high end wheels that are sold under the Rolf trademark. In April, I noted that the patents have expired and that anyone can make those wheels, but also that no one else can sell them under the Rolf trademark. That is not entirely accurate. There is a particular spoke configuration, born of Rolf’s once patented, paired spoke, bicycle wheel invention, that is protected under trademark law or, more specifically, trade dress law.
Rolf calls it the four diamond trade dress. In June, 2003, the US Patent and Trademark Office issued US Registration No. 2720572 for the trade dress consisting of a bicycle wheel spoke pattern that appears to consist of a first set of pairs of parallel spokes and a second set of pairs of parallel spokes arranged so that each pair of spokes from the first set appears to intersect an adjacent pair of spokes from the second set to define diamond shaped regions. (No one of the spokes in this wheel is parallel to any other spoke but, when viewed from the side, voilà – they appear to be parallel)
In 2013, the registration was renewed and it’s due for renewal in 2023. The registration can be renewed so long as wheels having the trade dress appearance are being sold.
In 1985, Toledo’s Owens Corning was the victor in the seminal case establishing trademark protection for the appearance of a product where the appearance was the color of the product itself. The function of a trademark is to identify the source of a product. The function of a product color is an aesthetic function. However, Owens Corning succeeded in establishing that the pink color of its fiberglass insulation had transcended aesthetics and that, through relentless promotion, the public had learned to associate pink fiberglass with its source – Owens Corning.
In a very interesting decision, the relatively new Court of Appeals for the Federal Circuit catalogued prior cases involving color trademarks. The Court then reviewed the reasons why, in the normal course, trademark rights in the color of a product should not be recognized. The Court noted that, in some cases, competitors would be at a disadvantage if they were prohibited from using a color. As made, however, fiberglass has a dirty yellow hue and Owens Corning’s competitors were not known to dye their products. Therefore, there was no competitive need to use the color pink. The Court considered whether Owens Corning had met its burden of proving that the public recognized the pink color of the insulation as indicating that it came from a single source. The evidence showed that Owens Corning had spent enormous sums of money promoting its pink fiberglass and, in advertising its insulation, Owens Corning emphasized the unique color pink. Remember “Think Pink”? Remember the Pink Panther? These advertising hooks were intended to establish in the public’s mind a trademark meaning for the pink color of insulation and, in the Court’s opinion, Owens Corning achieved its goal.
Trade dress falls into many different categories including the appearance of a product, like the spokes in a bicycle wheel, the color of a product, like pink fiberglass, and the appearance of packaging for a product. Are there many here among us who are not aware that good things come in blue boxes?
US Trademark Registration No. 2,359,351 – Tiffany’s – indicates that the mark consists of a shade of blue often referred to as robin’s-egg blue which is used on boxes.
Companies keep finding interesting and clever ways to distinguish their products in the marketplace. In many cases, trademark law – trade dress law – will confer exclusive rights to distinctive features of product packaging and product appearance.