The way a store or restaurant looks is often central to the success of business.  It is often also an asset of the business that can be protected as trade dress.

Restaurants and stores (successful ones, at least) tend to adopt consistent layouts, color schemes, and other thematic elements that help customers realize where they are.  Think Chipotle, TGIFridays, or The Gap.  All these businesses have a stores with a design that can be easily remembered, and most consumers, if dropped into one, would know where they are without having to look at any signs.  It just “feels” like The Gap.

As Catlan McCurdy writes over at Duets Blog, the Apple Store has a specific look-and-feel to it, as well, and Microsoft apparently agreed, designing its stores to look – and operate – in an amazingly similar fashion.  Apple has filed for a trademark registration on the design of the store – trade dress, really, but the Trademark Office has made an initial rejection.  By law, trade dress is not inherently distinctive, and only inherently distinctive marks can be registered initially.  Apple responded with 122 pages of proof that the layout has acquired distinctiveness and is thus entitled to registration.

The part of the file history I like best, though, is the mark description.  I find the interior of an Apple Store to be incredibly Spartan.  In contrast to a Chipotle that is adorned with corrugated metal, browns, greys, certain floor patterns, menus, and lighting, Apple Stores have uniqueness from their very lack of “stuff.”  I would think that emphasizing and describing this lack of features as the feature to be protected would be difficult, but Apple has done it nicely with this description:

The mark consists of distinctive design and layout of a retail store featuring a primarily glass storefront, rectangular recessed lighting traversing the length of the store’s ceiling, Cantilevered shelving and recessed display spaces along the front side walls, rectangular tables arranged in a line in the middle of the store parallel to the walls and extending from the storefront to the back of the store, multi-tiered shelving along the rear walls, and an oblong table with stools located at the back of the store below video screens in the back wall.

Note that the mark was amended from its initial description: “The mark consists of distinctive design and layout of a retail store.”

I wonder, also, to what extent the Microsoft stores aren’t succeeding because they just aren’t cool.  Apple, once geeky and obscure, is cool now, and some of that coolness rubs off on you when you step into an Apple store.  I once was a Mac user, but have switched over to PCs, and I’ll admit that Microsoft has never really been cool, by anyone’s estimate – I just can’t see any cachet value in patronizing a Microsoft store.

.XXX top-level domains are due out soon. This means that you will begin to see (or not see) porn sites moving to the format www.SITENAME.xxx around the end of the year.

This new domain is intended to isolate adult websites within a red light district of the Internet, off the main .com addresses, thereby allowing parents to easily block access to the sites on their kids’ computers. It also, of course, creates a new market for website addresses. Just as a .com website name can currently be registered with a .net or a .org ending, that name can soon be registered with a .xxx ending.

While the new domain is intended only for the adult entertainment industry, trademark owners in other industries have an interest in foreclosing the possibility of their trademarks ever showing up with a .xxx address. Such an association could damage the mark and the brand.

Two mechanisms will help trademark owners prevent their trademarks from being registered as a .xxx domain, but actions must be taken within certain time frames to be effective.

The first mechanism is a “pre-reservation” service which gives trademark owners the ability to pre-reserve their .xxx domains for free. Pre-reserving a domain name doesn’t equate to owning it; instead, the business will be notified in advance of the period during which that particular domain name will go up for sale. Essentially, a pre-reservation is a way to ensure that you get a heads-up when the domain name is about to be offered for sale so that you can participate in the bidding process.

Once the pre-reservation period is over, a “sunrise period” will begin, during which domain names can be defensively registered. Currently set to start in September 2011, the sunrise period will allow trademark owners to file opt-out applications to block others from registering .xxx domain names that contain their trademarks. The applications will be effective for the life of the registry, and a one-time processing fee will be required for this service, likely around $300. The sunrise period could be as short as 30 days, so trademark owners must be ready for this opportunity.

Once the sunrise period ends, two periods begin: a “land rush” period followed by a “general availability” phase. During these stages, trademark owners will not have any rights of priority, and domains will be sold on a first-come, first-served basis. If a trademark owner fails to block its mark from being adopted within a .xxx domain name, its options are limited. It can always proceed with a UDRP arbitration to attempt to force a domain owner to transfer the name, but preventative action during the sunrise period is the cheaper, less risky alternative.

For more information about the pre-reservation process, see here.

For more information about the sunrise period, see here.

Trademark searches can be informative tools.  Yesterday, Bruno Tarabichi from Trademark Sentinel wrote about the effectiveness of a client-performed trademark search.  He noted, quite rightly, that clients often choose to do their own search instead of having one professionally run.

For word marks, clients can certainly perform their own searches.  Design marks can be much more difficult to search, because they require nuanced selection of keywords, descriptions, and design codes.  Inappropriate search keywords can lead a search astray and possibly miss relevant and similar marks.

A self-performed search – whether it is of a word or a design – creates a number of issues, however.  It introduces an aspect of risk and liability that is not present when a professional search is used.  It also likely limits the scope of the search, giving the client a much less clear picture of the registered and common-law trademark landscape.

How do these things happen?  Well, the value in a search comes primarily from two things: the thoroughness of the search and the analysis of its results.

Regarding the former, a professional search will likely be more exhaustive and may key in on common ways that a word mark can be altered – ways that a client may not realize.  This isn’t a ding on the client – searching is a skill like any other.  It takes time and experience to develop.  I can’t golf at all, so if I were betting my business’s brand on a golf shot, I’d be happy to hire Rory McIlroy to take a swing for me.  A professional search will also include many more sources of information that a client can typically access.  Beyond the USPTO records, professionals search state and local databases, online databases, phone records, and a variety of other resources that yield results not just on federally registered marks, but on common-law marks that may affect how the client’s mark can be used or expanded throughout the US.

With respect to the latter, analysis represents the attorney’s education and experience at your disposal.  The attorney will give an opinion of registrability and will inform the client whether certain parts of the country present obstacles to expansion.  If similar registered marks are found, the attorney can review the file history of the marks, see their status, and decide whether they pose real or substantial risks.

The risk of a self-performed search includes not only an underinclusive search, but also an incorrect analysis.  Clients may err in their analysis in two important ways.  First, they may feel that two marks that are legally similar aren’t that similar.  This happens all the time and is problematic because the USPTO often doesn’t draw the fine distinctions between two marks that a client does.  On the other hand, the client may feel that two marks that are legally different are similar, and may then falsely conclude that it can’t obtain a registration.

So, while I agree that a client can perform its own search, it should be aware that there will be inherent limitations in the search.  One of the best reasons for having a professional search made is the ability to go back time and again and ask questions of the searcher when you are unsure about something.  When you do a search yourself, that option isn’t there.

Trade dress is the protectable dress, design, packaging, or look-and-feel of a product or service. Because trademark rights are all about use and signaling in the consumer’s mind the source of the product, nearly anything that functions as such a symbol can operate as trade dress, unless, of course, it is more appropriately considered a trademark.

Companies often focus solely on their names and logos, but trade dress can represent a valuable type of protection, one that can help prevent other from riding off the goodwill that the dress represents.

Consider these two examples:

- A delivery company arrives in a large brown truck. A driver clad in brown shirt and shorts hops and brings a package. You don’t notice the name on the side of the truck, but you assume it is UPS. Turns out the company’s name is Speedy Delivery and its uses a flying pigeon for its logo. If UPS had only sought protection in its name and its shield emblem, then it would have no recourse against Speedy Delivery, because the names and logos are totally different. But clearly, the consuming public associates brown delivery trucks with UPS, as UPS has taught it to do. Because UPS has made efforts to establish its brown trade dress in the mind of the consumer, it can rightfully prevent other delivery companies from using that color in confusing ways.

- Your boyfriend bows down on one knee in front of you and presents a small light-blue box. Your eyes get watery as he slips a shiny diamond ring onto your finger. You’re excited to have him and a new Tiffany ring. But in actuality, your misty eyes kept you from seeing that you’ve just gotten engaged with a ring from Canterby’s, a completely acceptable local jeweler in the mall. Clearly, the name Canterby’s is very different from Tiffany’s, and no consumer is likely to confuse the two. Had Tiffany & Co. not invested significant marketing dollars in developing that little blue box to an icon of its jewelry and diligently sought protection in the color, it wouldn’t be able to do much: any jeweler could just wrap its rings up into a blue box and ride Tiffany’s goodwill. But Tiffany has taught consumers to associate light blue boxes with Tiffany products, and it thus has one mechanism to prevent confusion where it might otherwise have none.

So trade dress can be a valuable method of distinguishing your company from others in a way that trademark law – as most typically think of it – cannot. But trade dress rights don’t come about by accident. To receive the benefit of trade dress protection, a company should deliberately plan and consistently execute a trade dress strategy.

Trade dress can be federally registered. For longer-existing trade dress to register, the USPTO may require proof of acquired distinctiveness, which can be shown by advertising and marketing campaigns, customer surveys, or historical documentation of the trade dress. Newly-adopted forms of dress can be rejected initially, though, and they can generally be copied freely at the outset, since they don’t have the acquired distinctiveness that consumers recognize and that provides the basis for protection.

As a result, the media blitz is sometimes used to quickly establish rights in trade dress. Large scale advertising campaigns, multiple forms of media, and the use of look-for advertising can form part of the media blitz strategy. Look-for advertising is incredibly effective. Think: “What can brown do for you?” When you hear that line, you immediately think of UPS and you reinforce the connection between the color brown and UPS.

Ok, I am guilty of it.  Last week, I complained that everyone and their mother was sticking “i” in front of a word and calling it a brand, but darn’d if I can’t help but do it too – and find it a little bit fun.

I wrote last week that the family of i-marks that Apple was building (or buying) was being eroded by other companies using the “i” introduction.  But today, Dan Kelly wrote a piece that helped me realize another part of the story, one which I am a bit embarrassed I didn’t think of earlier.

In most instances, I imagine the application of an “i” to the front of a word is simply a hope to seem edgy, hip, and electronic.  But, for some, this has to be a simple buyout strategy.  As Dan points out, “there is probably no trademark dispute that [Apple] cannot afford to fight or settle,” and that creates a great market for a potential trademark owner.  Dan notes a number of cases in which Apple was the second user of the mark and ultimately prevailed.  They mostly all involve larger companies.  But when the days of dot-com buyouts are far in the past, perhaps the exit plan of some companies is much cheaper and simpler – file an intent-to-use application on an i-mark and wait for Apple to deliver.

I’ve written before about invention promotion scams, and when my clients file trademark applications, I always warn them about receiving official-looking documents requesting payments for various kinds of registration and monitoring services.  However, to this point, the scams I was aware of were limited to the US.  Now, apparently, the problem is appearing with an international flair.

Michael Atkins points out a company in the Slovak Republic which sent a notice of a private registration option to a recent trademark filer…for $2,327.  Ouch.  Always be cautious when you receive a correspondence that appears to be almost official.  Almost.