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
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
Lanham Act Section 43(a)
Trade Dress
• What is “trade dress”?
• How, if at all, does it
differ from a trademark?
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
Lanham Act Section 43(a)
Trade Dress
• Nonfunctionality
A feature is functional if any are true —
Essential to use or purpose of the article
Affects cost or quality of the article
Protection would impose a “significant nonreputation-related disadvantage” on others
– No comparable alternatives
– Protection would hinder effective competition
Lanham Act Section 43(a)
Trade Dress — Distinctiveness — Cases
• Two Pesos v. Taco Cabana
Dress can be inherently distinctive
• Wal-Mart v. Samara Brothers
seersucker
Dress can“one-piece
be inherently
distinctive for
outfits with appliqués
packaging
(and flowers,
Mexican
restaurants)
of hearts,
fruits
like”
Dress cannotand
bethe
inherently
distinctive
for product designs (default if in doubt)
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?
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 valuepriced, to appeal to wine novices
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
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?
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
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?
Federal Trademark Registration
Trade Dress as Trademark
• Is there a trademark here?
Federal Trademark Registration
Trade Dress as Trademark
• Is there a trademark here?
Federal Trademark Registration
Trade 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
Federal Trademark Registration
Functionality
• In re Howard Leight Indus.
Functionality analysis
• In re Gibson Guitar
Functionality analysis
• In re Slokevage
Distinctiveness analysis
Functionality issue?
TM & Unfair Comp — Up Next
Topics 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)