Part-2 Functionality and why trademark, why not patent?
In my previous article, I discussed how a mark/color/feature cannot attain a trademark registration if the color/feature is the essential element of the product and it will require other manufacturers of similar products to spend more money to get the basic function in their goods/services.
This was the question that was raised by the Examining Attorney (EA) of the USPTO in the office action. The EA argued that the blue rings of Alexa were not serving as a source identifier and was merely a functional feature of the device. It was merely an indication that the device was performing a function. EA compared the blue ring with the “buffering-circle” that is indicative that a software or application is loading. Thus, the consumers would not exclusively relate the blue rings to the device, Alexa. Amazon, in its response, submitted that while deciding whether a mark should be registered as a trademark or not, the commercial impression of the mark is taken into consideration. Amazon argued that the commercial impression of the blue ring over a cylindrical figure was indicative of the Echo/Alexa, a personal assistant introduced by Amazon Technologies. The Applicant, further, draws a similarity with Apple’s “Siri”, which has a similar registration over its personal assistant.
Further, claiming color as a source identifier was very popularly discussed in Qualitex Co v Jacobson Products Co, where it was held that a color may be registered as a trademark, if it serves as a source-identifier, or if has acquired a secondary meaning among the consumers. In this case, the defendant here argued that the color of the dry-cleaning pads was a functional feature since it covered up the bronze marks left behind by iron, whereas the applicant argued that the golden-green pads were recognized as only produced by Qualitex Co.
Other famous marks that may be considered functional, but are now registered trademarks are “Hershey’s chocolate bar” design. Hershey Chocolate and Confectionary Corporation tried to trademark the design of its chocolate bar, which was opposed by the EA. The EA produced an expired patent on the design. However, in today’s date, Hershey successfully defends its trademark for its chocolate bar design. (You may find the application here). Few other quasi-functional famous trademarks are the three-pronged water spray of a Yamaha jet ski and the vertical flipping doors of a Ferrari, Microsoft’s registered trademark for the rectangular shaped curved sides (cancelled registration in 2014), the X-box’s glowing ring. Similar to Amazon’s description of the blue ring lighting up, and not describing that it lights up when it is taking instructions from the user, X-box 360’s console ring (here, and here) did not mention that the ring glowed to show connection to a controller or glowed red when there was an error.
Why trademark, why not patent
A patent may be defined as a grant by the USPTO that allows the patent holder to maintain a monopoly for a limited period of time on the use and development of an invention. Amazon could have filed for a utility patent over the blue ring. A utility patent may be granted to a new, non-obvious, useful invention that falls into one of the five categories- a process, a machine, a manufacture, a composition of matter, or an improvement of an existing idea. A utility patent is valid for a period of 20 years. If Amazon did file a utility patent for its artificially intelligent Alexa, it would not be able to renew the device after a period of twenty years. Amazon wants to establish a brand image of Echo, as it has done for kindle. This could be done only trademarking it. Further, the benefit of a trademark is that it will be alive as long as the Registrant wants to keep it alive, that is, as long as Amazon keeps using the “blue ring” for its Alexa devices, the trademark for the blue rings will be alive on the USPTO Register. This period may very well be more than twenty years or not. It is difficult to trademark user interface and that’s why companies choose to patent the user interfaces, as user interfaces are real world utility items, which cannot be trademarked by an organization.
The response submitted by Amazon has been accepted by the EA and Amazon is awaiting the publication of its mark on October 03, 2017. Once the mark is published, and there is no opposition to the mark, the mark will attain registration and Amazon would be able to protect the blue rings from any kind of infringement by any party. Once and if, Amazon attains registration, it will not be able to stop any other manufacturer from manufacturing a moving/lighting up circle, but it would definitely be able to protect the trademark if anyone else tries to place such a glowing/moving/lighting up circle on the top of a cylindrical device for a personal assistant device.
P.S. You can watch the Amazon Echo commercial video here.
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.