In 1905, the owners of Smith & Kaufman, Inc., a ribbon & silk company in New York, hit upon an idea. Wouldn’t it be great, they thought, if we made a red holiday ribbon for wrapping Christmas presents, with the words “Merrie Christmas” woven into the ribbon at intervals of about two inches in Old English script type? And wouldn’t it be even better, they thought, if we could stop our competitors from doing the same thing, so everyone had to buy the stuff from us?
In pursuit of this goal, Messrs. Smith & Kaufman registered the word mark MERRIE CHRISTMAS, as woven into ribbons and other goods, with the United States Patent Office (the words “and Trademark” weren’t officially added until 1975). Smith & Kaufman then sold the ribbon, called “Merrie Christmas Ribbon No. 2,” in 10-yard rolls. The side of each roll was marked with the words: “Smith & Kaufman, Merrie Christmas, Ribbon No. 2.”
By 1908, the upstart Holly Ribbon Design company wanted in on the action. Holly Ribbon produced its own “Merrie Christmas” ribbon with the same words written in a similar Old English script, and sold it for a few pennies cheaper. The side of the roll was marked simply: “Holly Ribbon Design.” Smith & Kaufman cried foul and filed a trademark infringement action in the Southern District of New York.
An Aesthetically Functional Christmas
To Smith & Kaufman’s surprise, the Court refused to enforce the trademark, and instead articulated something akin to the doctrine of aesthetic functionality (thirty years before the doctrine appeared in the 1938 Restatement of Torts). Under the doctrine of aesthetic functionality, certain visually attractive designs are considered “functional” and not protectable as trademarks because they are necessary to fulfill the purpose for which the good was intended. The easiest example to understand is a Valentine Day chocolate box in the shape of a heart: the heart is not just one of many available shapes, but rather the only shape that fits a certain purpose, so permitting one candy company to monopolize it would substantially hinder competition.
Here, Judge George Chandler Holt came to a similar conclusion. Judge Holt did not doubt that a MERRIE CHRISTMAS trademark could be protected in certain circumstances. In fact, he held in dicta that, had Holly Ribbon called its ribbon “Merrie Christmas” and labeled it as such on the side of the roll (i.e., imitated the plaintiff’s packaging as well as its product), it could have been an infringement. But that was not the claim; Smith & Kaufman were trying to protect the words woven into the ribbon itself. Judge Holt found that the value of the “Merrie Christmas” text on the ribbon was not to identify the source, but to make it appropriate for the packaging of a Christmas gift. Judge Holt had “no doubt that the defendants intentionally imitated” the ribbon, but held that this was immaterial because:
Anybody has the right to make such a ribbon, just as he has a right to make a Christmas box or a Christmas card, and, in my opinion, nobody, under the guise of adopting the words as a trademark, can obtain a monopoly for the manufacture of such goods. The truth is the words, when put on the ribbon, are not a trademark, but are an integral part of the ribbon, adding to its value.
HAPPY HOLIDAYS FROM…
About ninety years later, someone tried to do pretty much what Judge Holt held they couldn’t: register the text of a holiday greeting as used for a holiday greeting card. In 1994, a company from Pittsburgh filed a series of trademark applications for word marks to be affixed to “postcards,” including HAPPY HOLIDAYS FROM, SEASONS GREETINGS FROM, CHRISTMAS GREETINGS FROM and PEACE AND JOY FROM. The PEACE AND JOY FROM application actually slipped through and became a registered mark, but the rest were refused on the grounds that the public would recognize a phrase like HAPPY HOLIDAYS FROM on a postcard not as a source indicator, but merely as a holiday greeting.
On appeal to the TTAB with respect to the HAPPY HOLIDAYS FROM application, the applicant argued that consumers would not assume the words HAPPY HOLIDAYS FROM were merely a holiday greeting because that assumption applied only to greeting cards — this was for postcards, which the applicant argued were “totally different.” The applicant also argued that the addition of the word “FROM” rendered the mark “arbitrary.” Finally, the applicant used its own successful PEACE AND JOY FROM application as precedent – if PEACE AND JOY FROM can be a registered mark for postcards, why can’t the rest as well?
The TTAB affirmed refusal. The TTAB pointed to other examples of “Happy Holidays” appearing on postcards, and rejected out of hand the notion that “Happy Holidays From” on a postcard is arbitrary. As to the PEACE AND JOY FROM mark, the TTAB, clearly not happy the application had been allowed, stated: “suffice it to say that we have no knowledge as to the record in that case . . . in any event, the Board is not bound by the actions of an Examining Attorney.”
From|Foley Hoag LLP
By|David Kluft