Establishing Protection
Intro to IP – Prof. Merges
3.15.2012 [originally scheduled
for 3.12.2012]
Categorizations
Trademark
Category
•
•
•
•
•
•
•
•
•
•
•
•
•
•
•
•
•
•
•
•
TENDER VITTLES (cat food)
ROACH MOTEL (roach trap)
CHAP STICK (lip balm)
VISION CENTER (optical store)
BEER NUTS (snack food)
FAB (laundry detergent)
BOLD (laundry detergent)
STRONGHOLD (nails)
CITIBANK (banking services)
NUTRASWEET (sweetner)
Descriptive
Suggestive
Descriptive
Descriptive
Descriptive
Arbitrary
Suggestive
Suggestive
Suggestive
Descriptive
Statutory basis: registration of
descriptive marks
Except as expressly excluded in paragraphs . . .
of this section, nothing in this chapter shall
prevent the registration of a mark used by
the applicant which has become distinctive of
the applicant’s goods in commerce.
-- Lanham Act sec. 2f, 15 USC 1052(f)
Trade Dress & Product Design
Trade Dress
Product Design
Trade Dress Protection
Lanham Act § 43(a), 15 USC 1125(a)
Any person who shall affix, apply, … or use in
connection with any goods or services … a
false designation of origin … , and shall
cause such goods or services to enter into
commerce … shall be liable to a civil action
….
Two Pesos v. Taco Cabana
505 U.S. 763 (1992)
Taco Cabana Trade Dress
Word Mark
TACO CABANA
Goods and Services IC 042. US 100 101. G & S:
FAST FOOD RESTAURANT SPECIALIZING IN
MEXICAN FOOD. FIRST USE: 19870615. FIRST
USE IN COMMERCE: 19870615
Standard Characters Claimed
Mark Drawing Code (4) STANDARD
CHARACTER MARK
Serial Number 85531206
Filing Date February 1, 2012
Prior Registrations
1581970;1778181;1978245;AND OTHERS
Serial Number 85531206
Mark Drawing Code (3) DESIGN PLUS WORDS,
LETTERS, AND/OR NUMBERS
Design Search Code 26.03.17 - Concentric
ovals; Concentric ovals and ovals within
ovals; Ovals within ovals; Ovals, concentric
26.03.21 - Ovals that are completely or partially
shaded
Serial Number 85234033
Filing Date February 4, 2011
IPNTA 5th p 764 n. 1
Trade dress’ is the total image of the business.
Taco Cabana’s trade dress may include the
shape and general appearance of the exterior
of the restaurant, the identifying sign, the
interior kitchen floor plan, the decor, the
menu, the equipment used to serve food, the
servers’ uniforms and other features
reflecting on the total image of the
restaurant.
Two Pesos (cont’d)
• Findings of the District Court
– Taco Cabana has an identifiable trade dress
– The trade dress is non-functional
– The trade dress is inherently distinctive
– The trade dress has not acquired secondary
meaning
Sec. 1114 (Lanham Act sec. 32). Remedies;
Infringement; Innocent Infringement by
Printers and PublishersSec. 1114 (Lanham Act
sec. 32)
(1) Any person who shall, without the consent
of the registrant —
(a) use in commerce any reproduction,
counterfeit, copy, or colorable imitation of a
registered mark . . . .
• [I]t is common ground that §43(a)
protects qualifying unregistered
trademarks and that the general
principles qualifying a mark for
registration under §2 of the Lanham
Act are for the most part applicable in
determining whether an unregistered
mark is entitled to protection under
§43(a) – IPNTA 5th ed p. 765
IPNTA 5th at 767
The protection of trademarks and
trade dress under §43(a) serves the
same statutory purpose of
preventing deception and unfair
competition. There is no persuasive
reason to apply different analysis to
the two.
Sec. 1125 (Lanham Act sec. 43).
(1) Any person who, on or in connection with
any goods or services, or any container for
goods, uses in commerce any word, term,
name, symbol, or device, … or any false
designation of origin, … which —
(A) is likely to cause confusion, or to cause
mistake, or to deceive as to the affiliation,
connection, or association of such person
with another person, or as to the origin,
sponsorship, or approval of his or her goods
... Shall be liable
Inherently Distinctive?
Defendant’s argument
• Factual finding: No secondary meaning has
been established
– In the relevant market
– Consumers do not associate this trade dress with
a unique source
Supreme Court: Irrelevant
• Inherently distinctive trade dress is as
protectible as inherently distinctive words or
symbols
• No basis in statute to distinguish trade dress
from other types of trademarks
Qouting 5th Cir with approval
• “… the legal recognition of an inherently
distinctive trademark or trade dress
dress acknowledges the owner’s
legitimate proprietary interest in its
unique and valuable informational
device . . .” – IPNTA 5th at 766
What about “depletion”
argument?
• Sup Ct: We always have functionality . . .
• Functional trade dress cannot be protected
Korean Barbecue
What about product designs?
• Same issues?
• Any distinctions?
Inherently Distinctive?
Jeans Pocket design – secondary
meaning must be proven
Walmart v Samara
• Children’s clothing designs
• Product design as opposed to packaging or
trade dress
• What are the requirements for establishing
protection for trade dress?
Samara Clothing Design
IPNTA 5th 771
• These courts have assumed, often without
discussion, that trade dress constitutes a
‘‘symbol’’ or ‘‘device’’ for purposes of the
relevant sections, and we conclude likewise.
‘‘Since human beings might use as a ‘symbol’
or ‘device’ almost anything at all that is
capable of carrying meaning, this language,
read literally, is not restrictive.’’ Qualitex Co.
v. Jacobson Products Co., 514 U.S. 159, 162
(1995).
• Nothing in §2, however, demands
the conclusion that every category
of mark necessarily includes some
marks ‘‘by which the goods of the
applicant may be distinguished from
the goods of others’’ without
secondary meaning—that in every
category some marks are inherently
distinctive.
• It seems to us that design, like color, is
not inherently distinctive. The
attribution of inherent distinctiveness to
certain categories of word marks and
product packaging derives from the fact
that the very purpose of attaching a
particular word to a product, or
encasing it in a distinctive packaging, is
most often to identify the source of the
product.
• Trade dress in a single color or in
product shape or design can
never be inherently distinctive.
Wal-Mart
“Competition is deterred, however, not
merely by successful suit but by the
plausible threat of successful suit, and
given the unlikelihood of inherently
source-identifying design, the game of
allowing suit based upon alleged
inherent distinctiveness seems to us not
worth the candle”
Rule against inherent
distinctiveness
• Designed to facilitate SJ in favor of
defendant/trade dress copier
• NOT the same as saying that trade dress may
never be registered
• But – must prove secondary meaning
And in Wal-Mart, we were careful
to caution against misuse or overextension of trade dress. We
noted that ‘product design
almost invariably serves purposes
other than source identification.’
TrafFix Devices, Inc. v. Marketing Displays, Inc.
532 U.S. 23 (2001)
Consumer predisposition
“[W]e think consumer predisposition
to equate the feature with the
source does not exist. Consumers”
do not associate product design
with source, but with product
features. -- IPNTA 5th 772
• “Consumers should not be
deprived of the benefits . . . .”
• Difficult to design a test for
inherent distinctiveness
• Functionality should also be a
defense in relevant cases
Err on the side of . . .
• Caution: classify trade dress as product
design
• Do not allow inherent distinctiveness in a
close case
Aromatique, Inc. v. Gold Seal, 28 F.3d
863, 31 U.S.P.Q.2d 1481, 1483 (8th
Cir. 1994): “The difference between
trade dress and trademark is no
longer of importance in determining
whether trade dress is protectable
by federal law. … Indeed, trade
dress may now be registered on the
Principal Register of the PTO.”
Registered: Thermostat Design
Registration No.: 1622108
Filed: 1986-05-09
Registered: 1990-11-13
Published: 1988-11-29
Renewal Accepted: 2000-11-13
Will Expire: 2010-11-132000-11-13
First Used: 1952-00-00
OG Renewal: 2010-07-132001-03-06
Goods - Services:
(INT. CL. 9) THERMOSTATS
International Class(es):
09 (Electrical and scientific apparatus)
First Used: 1952-00-00
HONEYWELL INTERNATIONAL INC.
101 COLUMBIA ROAD
MORRISTOWN, NEW JERSEY 079622245
Affidavit Section: REGISTERED - SEC. 8 (10-YR)
ACCEPTED/SEC. 9 GRANTED
Affidavit Date: 2010-06-04
Zippo Lighter Design
Trademark Reg. No. 1,959,544
(Reg. March 5, 1996)
Beebe, Cotter, Lemley, Menell &
Merges
Descargar

Establishing Protection