This week’s blog post comes courtesy of the independent U.S. government agency responsible for spending hundreds of millions of dollars delivering junk mail and solicitations to our doorsteps each and every year. Yes, I’m talking about the United States Postal Service, the agency in charge of processing all the mail that (a) you didn’t want in the first place, (b) couldn’t be emailed straight to your inbox, and (c) was mistakenly placed in your mailbox instead of your neighbor’s. But, despite its diminishing relevancy and soaring operating deficits, the Postal Service managed to recently “deliver” a knock-out blow to a trademark application filed by a Florida company called Lost Key Rewards (“Lost Key”), and “stamped” out all doubt that the physical configuration of the Postal Service’s blue mail collection boxes is famous and entitled to a broad spectrum of protection.
The Postal Service owns a 2003 trademark registration for the three-dimensional configuration of its ubiquitous mailboxes as depicted below:
According to the registration, the Postal Service has been using these collection boxes since at least as early as 1908 in connection with “sorting, handling, and receiving packages, letters, and advertisements” and “pickup, transportation, and delivery of packages, documents, letters, and advertisements by various modes of transportation.” The mark was registered under what is called “2(f),” meaning that the mailbox configuration was not really a trademark at the time it was first adopted by the Postal Service, but as a result of the Postal Service’s exclusive and continuous use of the configuration for approximately a century, it acquired distinctiveness in the minds of the general public such that the public now associates the configuration with only the Postal Service. This is not surprising since there are approximately 180,000 mailboxes of this type located across the United States. And my research indicates that the mailboxes have been colored blue for the past 40 years, like the one shown below:
So, about 100 years after the Postal Service commenced use of its mailbox configuration, Lost Key filed a trademark application on February 27, 2008 seeking to register the following mark for a wide range of products and services having to do with the encoding, registration, tracking, and retrieval of lost keys and other property:
Needless to say, the Postal Service went postal when it learned of Lost Key’s application and filed an opposition against it on the basis that the mark was likely to cause confusion with its registered mailbox configuration trademark. In the alternative, the Postal Service alleged that Lost Key’s mark falsely suggests a connection or association with the Postal Service.
After two years of litigation, the Trademark Trial and Appeal Board issued its decision on November 15, 2010. The Board found that the Postal Service’s mail collection box had become “famous” as a result of its exceedingly broad exposure among the American public and that Lost Key’s mark incorporates a prominent representation of the Postal Service mailbox. In addition, the Board noted that the services provided by Lost Key will utilize the services of the Postal Service and its mailboxes. At the end of the day, the Board held that Lost Key’s mark was confusingly similar to that of the Postal Service and, furthermore, that the mark falsely suggested an association with the Postal Service.
Even though this was certainly a “first-class” win for the Postal Service, I do question the prudence of the Postal Service spending tens (if not hundreds) of thousands of dollars on legal fees and litigation expenses to enforce its rights when it is running a deficit of $8.5 billion, is laying off hundreds of employees, and is generally becoming obsolete due to the advent of fast and efficient electronic communication. Although the Postal Service should defend its trademarks against unauthorized and infringing uses, I wonder if there may have been more creative, cost-effective ways to resolve this issue considering the dire straits in which the Postal Service currently finds itself. One thing is for sure and that is all of us will be paying for this litigation in the form of higher postage rates. Better go stock up on those stamps that are good forever (or at least until the Postal Service goes belly up).