Establishing Protection

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Establishing Protection

• Intro to IP Prof. Merges
• 3.15.2012 originally scheduled for 3.12.2012

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Categorizations

• Trademark
• 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)

• Category
• Descriptive
• Suggestive
• Descriptive
• Descriptive
• Descriptive
• Arbitrary
• Suggestive
• Suggestive
• Suggestive
• Descriptive

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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
  applicants goods in commerce.
• -- Lanham Act sec. 2f, 15 USC 1052(f)

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Trade Dress Product Design
Trade Dress
Product Design
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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 .

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Two Pesos v. Taco Cabana505 U.S. 763 (1992)
Taco Cabana Trade Dress
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• 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 158197017781811978245AND
  OTHERS

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Serial Number 85531206
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• 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

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IPNTA 5th p 764 n. 1

• Trade dress is the total image of the business.
  Taco Cabanas 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.

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Two Pesos (contd)

• 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

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• 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 . . . .

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• It 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

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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.

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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

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Inherently Distinctive?
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Defendants argument

• Factual finding No secondary meaning has been
  established
• In the relevant market
• Consumers do not associate this trade dress with
  a unique source

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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

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Qouting 5th Cir with approval

• the legal recognition of an inherently
  distinctive trademark or trade dress dress
  acknowledges the owners legitimate proprietary
  interest in its unique and valuable informational
  device . . . IPNTA 5th at 766

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What about depletion argument?

• Sup Ct We always have functionality . . .
• Functional trade dress cannot be protected

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Korean Barbecue
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What about product designs?

• Same issues?
• Any distinctions?

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Inherently Distinctive?
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Jeans Pocket design secondary meaning must be
proven
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Walmart v Samara

• Childrens clothing designs
• Product design as opposed to packaging or trade
  dress
• What are the requirements for establishing
  protection for trade dress?

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Samara Clothing Design
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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).

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• 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 meaningthat in every category
  some marks are inherently distinctive.

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• 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.

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• Trade dress in a single color or in product shape
  or design can never be inherently distinctive.

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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

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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

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• And in Wal-Mart, we were careful to caution
  against misuse or over-extension 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)

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Consumer predisposition

• We 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

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• 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

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Err on the side of . . .

• Caution classify trade dress as product design
• Do not allow inherent distinctiveness in a close
  case

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• 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.

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Registered Thermostat Design
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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

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• 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

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Zippo Lighter Design
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Trademark Reg. No. 1,959,544 (Reg. March 5, 1996)
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Beebe, Cotter, Lemley, Menell Merges