Part-1- The USPTO Application analysis
Almost three years back, in the year 2014, Amazon Technologies Inc. (Amazon) introduced Amazon Echo, popularly known as Echo. Echo is an artificially designed personal assistant that can be controlled by voice commands. It answers to the name “Alexa”, which is the wake word for the device. Echo is a personal assistant, similar to Apple Inc’s Siri, that can be used to do a variety of things including voice interaction, music playback, setting alarms, streaming podcasts, playing audiobooks, playing books from Kindle, providing information on the weather, traffic and other real-time information. This device can also be used to control several smart devices using Echo as an automation hub in the house.
The device comes in various sizes, with a blue ring on the top of all the devices. The blue ring is recognized as the face of “Alexa” that glows in blue when it is listening, thinking or speaking. Amazon is trying to trademark the blue ring that lights up when the device “Alexa” is performing any of the aforementioned functions. Amazon submitted its application in the year 2016 to the USPTO (United States Patents and Trademarks Office) for the following mark:
The Examining Attorney at the USPTO (hereinafter referred to as “EA”) reviewed the application and issued an Office Action in December 2016. An Applicant has six months from the date of issue of the Office Action to submit its response. Here, the EA stated that there are no similar existing marks on the USPTO Register, however, there are other reasons why Amazon cannot trademark the blue rings of Alexa. The major reasons in the Office action were:
- Amazon was trying to trademark multiple marks in one application,
- There is no consistent motion of the lighting up of the blue ring, and
- The blue ring fails to function as a trademark.
Multiple marks in one application and Motion not consistent
The EA stated that Amazon was trying to trademark multiple marks in its one application, which is not permissible under the Trademarks Law. The application submitted by Amazon does not appropriately describe the different rings, hence it seems like Amazon is trying to trademark different colored rings which would each function as a separate trademark. The office action also states that there is no particular pattern that is being followed by the device and randomly lights up. In its response, Amazon submitted evidence stating that the lighting up of the device is a consistent motion. Further, the pattern of different circles is one mark and they would together function as a trademark. It is not several marks under the application, rather it is the pattern of lighting up of the device that is to be considered as a source identifier.
The major point that EA focused on, and also which gathered a lot of public attention in the Trademarks world, was that the blue rings of Alexa were functional, i.e., it is an essential feature for the device to work. For a trademark to be registered, it must function as a source identifier of the brand. Also, it must not be a functional element that is essential for the basic functioning of the device. Functional features may be defined as a requirement for the operation of the goods/services, and thus cannot serve as a trademark, a source-identifier. A functional feature, if trademarked, will require other manufacturers of a similar product to invest more money for the basic functioning of goods/services.
The blue rings of Alexa light up when it is listening, speaking or thinking. Is this a functional feature? Would other manufacturers of personal assistant devices not be able to manufacture a similar device if Amazon attains trademark registration of the blue rings? We shall be discussing more about functionality in the next issue of this article.
Sanghmitra Sahai is a licensed Indian Attorney who earned her Master of Laws in Intellectual Property from George Washington University Law School. She has a Bachelor of Laws and Bachelor of Business Administration (BBA-LLB) degree from Symbiosis Law School, Pune (India). After graduating in 2014 from Symbiosis Law School, she worked as a Trademarks Associate Attorney at one of the top IP law firm in India. During her free time, Sanghmitra loves to solve Su-doku and Kakuro puzzles.