2.04 TRADEDRESS Flashcards
TRADE DRESS
Source of Law
Section 43(a) Lanham Act, Same as Trademark
“Trade Dress” Flows from Lanham Act to Distinguish a Producer as Source of Product = Applies Same Law as Trademark
Overtime the Packaging or “Trade Dress” was allowed, expanding to include product design itself, or design features of location where service is provided … can refer to totality of features or product or package or some subset (shape, color, etc.).
HISTORY … C.L. = Always “unfair competition” … Lanham Act = gen. unfair competition § 43(a) … 1958, Registration Allowed
DISTINCTIVENESS
Two Pesos, Inc. v. Taco Cabana (1992)
FACTS: Large Restaurant Chain Actually Copying Smaller Local Chain’s Retail Location Concept / Trade Dress Wholesale
“PACKAGING” / COMPETITORS
- Store Design
MEANING: Abercrombie Distinctions Apply Nothing Requires Trade Dress Under § 43(a) to Have Higher Standard IF / CAN BE Inherently Distinctive
PRODUCT DESIGN / PACKAGING = “[G]eneral rule … An identifying mark is distinctive [IF]
(1) is inherently distinctive; OR
(2) has acquired distinctiveness through secondary meaning.”
POLICY = Protect Start-Ups from Being Pushed Out of Markets by Large Competitors … Basic Fairness
DISTINCTIVENESS
Wal-Mart Stores v. Samara Bros. (2000)
FACTS: JC Penny Buyer Thinks Samara Kids Clothes Sold Under MSRP at Walmart, Sent Photo of Samara Products to Supplier
PRODUCT DESIGN / CONSUMERS
HELD: “In the case of product design … we think consumer predisposition to equate features with the source does not exist. Consumers are aware of the reality that, almost invariably, even the most unusual of product designs … is indented not to identify the source, but to render the product itself more useful or more appealing” = REQUIRES SECONDARY MEANING [ Echo Travel ]
POLICY: “Consumers should not be deprived of the benefits of competition with regard to the utilitarian and esthetic purposes that product design ordinarily serves by a rule of law that facilitates plausible threats of suit against new entrants based upon alleged inherent distinctiveness.”
SOLUTION: Design Patents Protecting Idea AND Copyright Protecting Expression
DISTINCTIVENESS
Qualitex Co. v. Jacobsen Products (1995)
FACTS: Color of Ironing Board (Green-Gold) Copied by Competitor
COLOR = Requires Secondary Meaning
HELD: Statute is Broad … any “symbol or device” that distinguishes … Color has no special legal rule, color alone can identify producer IF meets normal standard for distinctiveness … IF Color Serves to Identify Producer
POLICY: “It is the source distinguishing ability of the mark—not its ontological status as color, shape, fragrance, word, or sign—that permits it to serve these basic purposes. And, for that reason, it is difficult to find, in basic trademark objectives, a reason to disqualify absolutely the use of color as a mark.” BUT REQUIRES SECONDARY MEANING
REJECTED ARGUMENTS
- Shade = Presents NO More Difficult a Question Than Any Other Distinction
- Color Depletion = NOT a Blanket Problem … Functionality § 2(e)(5) Prevents Undermining Competition
- Precedent = Dicta PREDATING Lanham Act
SECONDARY MEANING
Echo Travel
x
FUNCTIONALITY
STATUTORY BAR = C/N Show 2d Meaning
NOTE: Functionality D/N Identify Who Produced the Product … [ AD: It Defines the Product ] … NOT Unfair Competition [ AD: To Compete ].
A. Utility
B. Aesthetic
FUNCTIONALITY
Burden of Proof
Sec. 1125(a)(3) [Registered]
Sec. 1125 (b) [Unregistered]
FUNCTIONALITY - UTILITY
Traffix Devices v. Marketing Displays (2001)
FACTS: Expired Utility Patent for Dual Spring Traffic Signs, Asserting Trade Dress for Appearance
POLICY: “Trade dress protection must subsist with the recognition that in many instances there is no protection against copying goods and products.”
HELD: “Where the expired patent claimed the features in question, one who seeks to establish trade dress protection must [show] the feature is not functional, for instance by showing that it is merely an ornamental, incidental, or arbitrary aspect of the device.”
FUNCTIONAL = “If it is …
[1] essential to the use or purpose of the article, or
[2] if it affects the cost or quality [or]
[3] … Exclusive use of [which] would put competitors at a significant non-reputation-related disadvantage.”
FUNCTIONALITY - UTILITY
Traffix Devices v. Marketing Displays (2001)
Evidentiary Status of Patents
Patent is a Presumption NOT Requirement … I
Issue is Functionality, Patent is Evidence of Such Functionality
Other Evidence of Functionality Exists With or Without Patent
FUNCTIONALITY (AESTHETIC)
THREE WAYS TO BAR / THREE PART TEST
- Distinctive (General Requirement)
- Mere Ornamentation (Policy)
- Aesthetic Functionality (Proper Test)
NOTE: Trademark Manuel of Examining Procedures 1202.02(a)(iv) … Tries to Avoid Using “aesthetic functionality” because doctrine is confusing … Look at Ornimentation
- DISTINCTIVE
[Inherent or Secondary Meaning] ? … If it not distinctive there is no need to examine the statutory bar.
- POLICY [MERE ORNIMENTATION] Pub. Int’l v. Landoll (7th 1998)
“[A] seller should not be allowed to obtain in the name of trade dress a monopoly over the elements of a products appearance that either are not associated with a particular producer or that have value to the consumers that is independent of identification.”
“[I]f consumers derive value from the fact that a product looks a certain way that is distinct from the value of knowing at a glance who made it, then it is a nonappropriable feature of the product. So there cannot be an objection in principle to the concept of aesthetic functionality as a limitation on the legal protection of trade dress.”
- TEST [AESTHETIC FUNCTIONALITY] Wallace Int’l Sliversmiths v. Godinger (2d 1990)
FACTS: Baroque Style Silverware … Competitor Entering the Market
POLICY: Cannot Claim Trademark for “basic elements of style that is part of the public domain”
TEST [ Looking at Whether Competitors Can Compete in the Market]:
[ 0. Market Definition ]
- Item must be purchased for aesthetic reasons
- Product design must have aesthetic appeal
- There must be no viable design alternatives that would have similar esthetic appeal
NOTE: If Competitors Can Compete … Probably Not Going to Cut Off Protection
COLOR IN FASHION
NOTE: Color in Fashion ~ Esthetic Function > Identification Function, e.g., Louboutin v. YSL (Red Sole TD, Not Red Shoe)
