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5/14/2015
1
™Trade Dress
© 2015 Peter S. Menell
Expanding Scope
Key Issues:
2. Functionality: Fostering Innovation and Competition
1. Threshold for Protection
Trade DressMarksUS PTO Reg. No. 4277913
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Marketing Themes Protected As “Trade Dress”
Phillip Morris Inc. v. Star Tobacco Corp., 879 F.Supp. 379 (SDNY 1995)
47 UC Davis L. Rev. 787 (2014)
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1. Threshold for Protection
Can Trade Dress Be Inherently Distinctive?
Trade Dress
Product Packaging
ProductDesign
Cocktail Shaker
Secondary Meaning RequiredCan be
Inherently Distinctive
1. Threshold for Protection
Packaging
Design
How do you categorize close cases?
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1. Threshold for Protection
Can Trade Dress Be Inherently Distinctive?
Trade Dress
Product Packaging
ProductDesign
Cocktail Shaker
Secondary Meaning RequiredCan be
Inherently Distinctive
2. Functionality
Utilitarian
Kellogg v. National Biscuit Co.,305 U.S. 111 (1938)
“The patented machines were designed to produce only the pillow-shaped biscuits. . . . Hence, upon expiration of the patents the form . . . was dedicated to the public.”
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2. Functionality
Supreme Court Jurisprudence
200 mg CYCLOSPLASMOL®Cyclandelate (Inwood Labs)
“In general terms, a product feature is functional if it is essential to the use or purpose of the article or it affects the cost or quality of the article.” Inwood Laboratories v. Ives Laboratories, 456 U.S. 844, 850 n.10 (1982)
Cyclandelate200 mg
400 mg CYCLOSPLASMOL®Cyclandelate (Inwood Labs)
Ives 4148
Cyclandelate400 mg
1982
2. Functionality
Supreme Court Jurisprudence
1982
“In general terms, a product feature is functional if it is essential to the use or purpose of the article or it affects the cost or quality of the article.” Inwood Laboratories v. Ives Laboratories, 456 U.S. 844, 850 n.10 (1982)
Cyclandelate200 mg Cyclandelate
400 mg
1995
Expands upon Inwood defn by noting that a functional feature “would put competitors at a significant non-reputation-related disadvantage.” Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 165 (1995)
Competitive Necessity Element?
®: green-gold color?
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WINDMASTER®
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2. Functionality
Utilitarian Aesthetic
Definition: A product feature is functional if:
• it is essential to the use or purpose of thearticle; or
• it affects the cost or quality of the article.
Burden of Proof: Claimant must establish nonfunctionality of trade dress (if unregistered)
• Patent protection creates a strong inferenceof functionality
• can be overcome by showing design featureis ornamental, incidental, or arbitrary.
• recognizes aesthetic functionality
Suggests that Qualitex observation (“would put competitors at a significant non-reputation-related disadvantage”) creates a competitive necessity requirement in aesthetic functionality cases
TrafFix Devices v. Marketing Displays, Inc., 532 U.S. 23 (2001)
Backdoor
©
?
Restat. Torts §742, comment a
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TM?
Advertising touted its fan grill shape as a “true achievement in aerodynamic efficiency accomplishing “a high degree of safety and functionality.”
“applicable to ventilators and the like”
DUCTED FAN
The “principal object” of the invention was “a new and improved grill and duct structure which increases the fan’s capacity and efficiency while decreasing its sound over the prior art grills.”
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Vornado Air Circulation Systems v. Duracraft Corp., 58 F.3d 1498 (10th Cir. 1995)
™
Leatherman Tool Group, Inc. v. Cooper Industries, Inc., 199 F.3d 1009 (9th Cir. 1999)
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Restat. Torts §742, comment a
Pagliero v. Wallace China Co.,198 F.2d 339 (9th Cir 1952)
“When goods are bought largely for their aesthetic value, their features may be functional . . .” Restat Torts §742 (1938)
Test: functional if TM protection would“substantially hinder competition”
Test: important ingredient in commercial success
Aesthetic Functionality
Price: $16.95
Silverplated Napkin Holder
Baroque
Wallace Int’l Silversmiths v. Goldinger Silver Art Co., 916 F2d 76 (2d Cir 1990)
Rejects Pagliero Test (“important ingredient in commercial success”) as too broad;
Requires evidence of foreclosure of alternatives
Aesthetic Functionality• Pagliero test criticized and narrowed by many circuits; rejected entirely by some
Aesthetic functionality only if the configuration “confers a significant benefit that cannot practically be duplicated by the use of alternative designs.” Restatement (Third) Unfair Competition §17, comment c
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Basket design is NOT necessary to compete
Villeroy & Boch v. THC Sys., Inc., 999 F.2d 619 (2d Cir. 1993)
Louboutin Registration
Louboutin Red Sole sec. 2(f)Registration 3,361,597. Jan. 1, 2008for women's high fashion designerfootwear.The color(s) red is/areclaimed as a feature of themark. The mark consists ofa lacquered red sole onfootwear. The dotted linesare not part of the mark butare intended only to showplacement of the mark.
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CHRISTIAN LOUBOUTIN RED OUTSOLES
Louboutin shoes are“instantly identifiable by hissignature red soles.”Geo. Malkemus, Pres. OfManolo Blahnik U.S.A.:“You wore a red sole andeveryone knew you spent$1,200 or $1,400 for yourshoes.”
The Color Red
. . . gives my shoes “energy.”
. . . “is engaging, flirtatious, memorable and the color of passion.”
. . . “appeals to everyone and is sexy.”
Christian Louboutin
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v.
Maker’s Mark Bourbon Cuervo Reserve Tequila
Maker’s Mark Distillery Inc. v. Diageo North America Inc., 676 F.3d 410 (6th Cir. 2012)
Dripping Red Wax Seal• NOT utilitarian functional• NOT aesthetically functional• NOT generic
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Functionality of Some Elements Does Not Necessarily Doom Trade Dress Protection
Trade Dress Is Evaluated Based on Overall Appearance
Trade Dress Infringement Frequently Shown by Surveys
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Preconceived Beliefs Survey Questions
Survey Procedures
Market ShareBrand Popularity
Other Factors
Guessing
Trade Dress Infringement Frequently Shown by Surveys:But Surveys Require Controls
Trade Dress Infringement Frequently Shown by Surveys:But Surveys Require Controls
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TEST CELL CONTROL CELL
Trade Dress Infringement Frequently Shown by Surveys:But Surveys Require Controls
Trade Dress Infringement Frequently Shown by Surveys:But Surveys Require Controls