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Law 227: Trademarks & Unfair Competition

Law 227: Trademarks & Unfair Competition. Trade Dress June 30, 2009 Jefferson Scher. TM & Unfair Comp — Day 10 Agenda. Trade Dress What is it? Requirements for Protection Distinctiveness Functionality LOC Analysis Registration as a trademark.

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Law 227: Trademarks & Unfair Competition

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  1. Law 227: Trademarks &Unfair Competition Trade DressJune 30, 2009Jefferson Scher

  2. TM & Unfair Comp — Day 10Agenda • Trade Dress • What is it? • Requirements for Protection • Distinctiveness • Functionality • LOC Analysis • Registration as a trademark

  3. Lanham Act Section 43(a)False Designation of Origin, etc. • Section 43(a)(1) encompasses many potential causes of action • (A) Likelihood of confusion (FDO) • For unregistered marks and trade names • For “trade dress,” whether registered or unregistered • (B) False advertising • Materials in Chapter 8.B

  4. Lanham Act Section 43(a)Trade Dress • What is “trade dress”? • How, if at all, does it differ from a trademark?

  5. Lanham Act Section 43(a)Trade Dress • Distinctiveness • Abercrombie spectrum • Seabrook: is the asserted dress — • A common basic shape or design; unusual or unique in the field; a mere refinement of commonly used ornamentation • Capable of creating a distinct commercial impression(separate from wording on package) • Secondary Meaning

  6. Lanham Act Section 43(a)Trade Dress • Nonfunctionality • A feature is functional if any are true — • Essential to use or purpose of the article • Affectscost or quality of the article • Protection would impose a “significant non-reputation-related disadvantage” on others • No comparable alternatives • Protection would hinder effective competition

  7. Lanham Act Section 43(a)Trade Dress — Distinctiveness — Cases • Two Pesos v. Taco Cabana • Dress can be inherently distinctive • Wal-Mart v. Samara Brothers • Dress can be inherently distinctive for packaging (and Mexican restaurants) • Dress cannot be inherently distinctive for product designs (default if in doubt) “one-piece seersucker outfits with appliqués of hearts, flowers, fruits and the like”

  8. Lanham Act Section 43(a)Trade Dress — Functionality — Cases • TrafFix Dev. v. Marketing Displays • Works better = functional, even if there are alternatives (patent = works better) • Tie Tech, Inc. v Kinedyne • Eco Manufacturing v. Honeywell • Qualitex v.Jacobson Products • Aesthetic functionality?

  9. Lanham Act Section 43(a)Trade Dress — Infringement and Relief • Best Cellars cases • Dress asserted: 14 elements, including: • 8 taste categories designated by (1) a word, (2) a color, and (3) an icon; • Display system creating a backlit “wall of wine,” in light wood and stainless steel; • Limited number of wines, mostly value-priced, to appeal to wine novices

  10. Lanham Act Section 43(a)Trade Dress — Infringement and Relief • Best Cellars cases • Grape Finds • Extensive copying, limited differences, same overall “wall of wine” appearance • Wine Made Simple • Significant copying, but also significant differences, particularly in materials and signage; Bacchus name quite different

  11. Lanham Act Section 43(a)Trade Dress — Infringement and Relief • Store brands/private label copies • Conflicting results • Conopco v. May Dept Stores • McNeil Nutraceuticals v. Heartland • Are the courts getting it right in these cases?

  12. Lanham Act Section 43(a)Trade Dress — Infringement and Relief • Conopco v. May Dept Stores • Can consider lack of actual confusion after long concurrent use • 10 years coexistence with copy of previous Vaseline Intensive Care dress • Precedent supports it: Oreck, 17 months {seems short to me}; Amstar, 15 years; Life Industries, period not stated

  13. Lanham Act Section 43(a)Trade Dress — One More Case • Kendall-Jackson v. E&J Gallo • Leaf design • Distinctiveness analysis • Similarity analysis • Bottle configuration: California look • Functional? • Descriptive?

  14. Federal Trademark RegistrationTrade Dress as Trademark • Is there a trademark here?

  15. Federal Trademark RegistrationTrade Dress as Trademark • Is there a trademark here?

  16. Federal Trademark RegistrationTrade Dress as Trademark • Examiner will be concerned with at least three issues (see TMEP §1202.02) • Distinctiveness • Especially for product configurations • Functionality • Expect to be asked for any related patents and advertising materials • Use as a trademark

  17. Federal Trademark RegistrationFunctionality • In re Howard Leight Indus. • Functionality analysis • In re Gibson Guitar • Functionality analysis • In re Slokevage • Distinctiveness analysis • Functionality issue?

  18. TM & Unfair Comp — Up NextTopics and Reading for Day 11 • Dilution — Thursday, July 2nd • Ch. 9, pp. 619-635, Supp. pp. 57-76 • Ch. 9, pp. 640-661 • Ch. 9, pp. 613-619 (opt)

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