PRODUCT CONFIGURATION
AND COLOR TRADEMARKS
Orrick Library Series
April 24, 2012
ByJoseph A. Calvaruso
Orrick, Herrington & Sutcliffe LLP
Orrick, Herrington & Sutcliffe LLP
1
Background
The term “trademark” includes any word, name,
symbol, or device, or any combination thereof . . .
a)
used by a person . . .
to identify and distinguish his goods, including a
unique product, from those manufactured or sold
by others and to indicate the source of the goods,
even if that source is unknown.
2
Background
“[t]he language of the Lanham Act describes [the
universe of things that can qualify as a trademark]
in the broadest of terms . . . 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 v. Jacobson Prods. Co., 514 U.S. 159, 115
S. Ct. 1300 (1995)
3
The Coca-Cola Company
4
Apple Computer, Inc.
5
Tiffany and Company
6
Color Marks
If a color has acquired distinctiveness
as the indicator of source for
particular goods or services, and the
color is not functional, the color by
itself can be registered as protected
just like a traditional word mark.
7
Qualitex Co. v. Jacobson Prods. Co., 514
U.S. 159, 162 (1995)
• Goods: “machine parts; namely, press pads and
covers for press pads for commercial and industrial
presses”.
• Color: “a particular shade of green-gold applied to
the top and side surfaces of the goods”.
• The USPTO registered the plaintiff’s color mark but
when suit was brought to enforce the mark against a
competitor, the courts initially held the registration to
be invalid.
• The Supreme Court reversed the decision.
8
Qualitex Co. v. Jacobson Prods. Co., 514
U.S. 159, 162 (1995) (cont’d)
• When a color meets “ordinary legal trademark
requirements” “no special legal rule prevents color
alone from serving as a trademark.”
• Without distinctiveness, there is no trademark, but
color on a product or its packaging can signify a
source and be an enforceable mark.
• If the color has some function in connection to
product, it is not protectable; the color must be
available to competitors.
9
Color Mark Must Have Acquired
Distinctiveness
• Color cannot be inherently distinctive.
• Color must have acquired secondary meaning, i.e., source
indicating significance in the minds of consumers.
• Owens Corning* Factors
— OC advertised its color pink mark for home insulation for about
30 years
— Over 42 million was spent on advertising (Super Bowl, World
Series, U.S. Open, prime time TV)
— The advertising emphasized the pink color of the product (Pink
Panther, Pink Waves)
10
*In Re Owens-Corning Fiberglass Co., 774 F2d11116,1127, Fed. Cir. 1985
Color Cannot Be Functional
Color is functional if it:
—is essential to the use or purpose of the
product, or
—it affects the cost or quality of the product
and
—would put competitors at a significant
non-reputation related disadvantage.
11
Color That Is Merely Ornamental or
Decorative Is Not Protected
USPTO Factors
—Would consumers perceive the color as a
trademark or just as a decorative feature?
—Use of the same or similar colors by
competitors in the industry indicates color is
ornamentation rather than source indicator.
—Is there evidence of acquired
distinctiveness?
12
Louboutin v. Yves Saint Laurent America Inc.,
IICIV 2381, NYLS 1262510 869174 (S.D.N.Y. Decided August 10, 2011)
Background
—Louboutin owns U.S. Reg. No. 3,361,597 which
covers the color red as used on shoe soles.
—YSL sold shoes having a single color, including
red, where the sole color matched the upper
portions of the shoe.
—Louboutin sued and sought a preliminary
injunction.
13
Louboutin v. Yves Saint Laurent America Inc.,
IICIV 2381, NYLS 1262510 869174 (S.D.N.Y. Decided August 10, 2011)
14
Louboutin v. Yves Saint Laurent America Inc.,
IICIV 2381, NYLS 1262510 869174 (S.D.N.Y. Decided August 10, 2011)
• The court denied the injunction because the asserted trademark
rights were not likely protectable.
• Whatever commercial purposes may support extending
trademark protection to a single color for industrial goods do not
easily fit the unique characteristics and needs ― the creativity,
aesthetics, taste and seasonal change ― that define protection
of articles of fashion.
• [I]n fashion markets color serves not solely to identify
sponsorship or source, but it is used in designs primarily to
advance expressive, ornamental and aesthetic purposes.
• The law should not countenance restraints that would interfere
with creativity and stifle competition by one designer . . .
15
Acquired Distinctiveness of Product
Configuration
• Secondary meaning requires proof that the
consuming public associates the mark with
a single source, although the source may
be unknown.
• It is not necessary to prove that the relevant
public can identify the source of the
product by name.
16
Proof of Secondary Meaning
Factors for proving secondary meaning include:
— Direct evidence
•
testimony from individual purchasers
•
consumer surveys showing that the mark is associated with a
single source
— Indirect evidence
17
•
amount of advertising expenditures
•
types and extent of advertising
•
length, manner and exclusivity of use
•
sales success
•
unsolicited press coverage mentioning the mark
Functionality
• “The functionality doctrine serves as a buffer between patent
law and trademark law by preventing a competitor from
monopolizing a useful product feature in the guise of
identifying itself as the source of the product.”
― Frosty Treats, Inc. v. Sony Computer Entertainment, 426 F.3d1001
(8th Cir. 2005)
• The purported trademark owner has the burden of proving
non-functionality of an unregistered product shape mark.
• For registered marks, functionality is an affirmative defense
which, if proved, trumps distinctiveness.
18
What Is Functional?
• A product feature is functional if it is essential to the use or
purpose of the article or if is affects the cost or quality of the
article.
― Inwood Labs. v. Ives Labs, 456 U.S. 844, 850 n.10 (1982)
• Where the case involves aesthetic functionality, i.e. where
the product configuration gives a competitive advantage
because of its visual appeal rather than its practical value,
the court will examine whether “use as a mark would permit
one competitor (or a group) to interfere with legitimate
(nontrademark-related) competitors through actual or
potential exclusives use of an important product ingredient.”
• ― TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, (2000)
19
Factors for Determining Functionality
Courts have considered:
— Expired patents
— Alternative designs
•
But even if a particular shape is not the only possible shape,
it may be functional if it represents one of many solutions to
a problem.
— Promoting the usefulness in advertising
— Competitive necessity/aesthetic functionality
•
20
A product feature that is visually appealing to consumers
may be aesthetically functional where competitors need to
use that feature to compete (Valentine’s Day hearts).
Combination of Functional Components?
• The fact that separate elements are, by themselves,
functional, does not necessarily render the trade dress as a
whole functional and, thus, unprotectable.
• But the inclusion in a design of a nonfunctional feature does
not render the design as a whole nonfunctional.
• Some courts are very wary and they have held:
— “[W]here the whole is nothing other than the assemblage of
functional parts, . . . it is semantic trickery to say there is
still some sort of separate “overall appearance” which is
nonfunctional.
21
Tractel, Inc. v. Wuxi Shenxi Construction
Machinery
Background
— Plaintiff claimed trade dress rights in
the design of a hoist
— Plaintiff asserted non-functionality
•
•
•
22
The design ― wherein the
component parts meet each other at
right angles ― demonstrates a
“cubist” look and feel.
The fins are “modern” and “flashy”.
The design’s square edges and
rectangular look is easily
distinguishable from competitors.
Tractel, Inc. v. Wuxi Shenxi Construction
Machinery
The 9th Circuit affirmed the District Court’s finding of
functionality
—Rectangular components that meet at right angles
are insufficient to warrant trade dress protection.
—The fins serve a functional purpose.
—Cube shaped gear box is simply a housing.
—The design is nothing more than an amalgamation
of functional components.
23
Aesthetic Functionality
Betty Boop: Iconic Cartoon Starlet
• Created in 1930 by Max Fleischer.
• Featured in animated cartoons and
comic strips.
• Symbol of the United States Depression
era.
• Extensive use in mass merchandising,
including toys, dolls, t-shirts, and handbags.
24
Aesthetic Functionality
25
Aesthetic Functionality
26
Fleischer Studios, Inc. v. A.V.E.L.A.,
Inc., et al.
Background
— Plaintiff Fleischer Studios — Company set up by family of
creator Max Fleischer. Licenses Betty Boop character for
use in toys, dolls, and other merchandise.
— Defendants — Also license Betty Boop merchandise based
on a copyright to vintage posters featuring Betty Boop’s
image that Defendants had restored.
— Plaintiff sued Defendants in 2006 in U.S. District Court for
the Central District of California for copyright and trademark
infringement.
27
The Ninth Circuit Decision
U.S. Court of Appeals for the Ninth Circuit,
(Feb. 23, 2011)
—Three-judge panel of Ninth Circuit affirmed
dismissal.
—Held that Fleischer could not prove ownership of
copyright because of missing link in the chain of
title.
—Held that Defendants were not using the Betty
Boop character as a trademark, but as a
functional feature. Therefore, no infringement.
28
The Ninth Circuit Decision (cont’d)
Aesthetic Functionality
— Betty Boop design is “functional” because it is the Betty
Boop image itself that made Defendants’ products
desirable, regardless of the source of the product.
— Defendants never stated that their merchandise was
“official” or indicated that goods were sponsored by the
Fleischer family.
— Fleischer showed no evidence of consumer confusion or
that it had received complaints about Defendants
products.
29
The Ninth Circuit Decision (cont’d)
Aesthetic Functionality (cont’d)
— Ninth Circuit relied on earlier, much criticized case, International
Order of Job’s Daughters v. Lindeburg & Co., 633 F.2d 912 (9th Cir.
1980):
•
Logo of plaintiff women’s organization was not being used as a
trademark but as functional part of the product itself:
“Trademark law does not prevent a person from copying socalled ‘functional’ features of a product which constitute the
actual benefit that the consumer wishes to purchase, as
distinguished from an assurance that a particular entity made,
sponsored, or endorsed a product.”
30
The Ninth Circuit Decision (cont’d)
Aesthetic Functionality (cont’d)
— Job’s Daughters Court found that consumers wanted the jewelry
to show their allegiance to the Job’s Daughters organization:
“We commonly identify ourselves by displaying emblems
expressing allegiances. Our jewelry, clothing, and cars are
emblazoned with inscriptions showing the organizations we
belong to, the schools we attend, the landmarks we have visited,
the sports teams we support, the beverages we imbibe. Although
these inscriptions frequently include names and emblems that are
also used as collective marks or trademarks, it would be naive to
conclude that the name or emblem is desired because consumers
believe that the product somehow originated with or was
sponsored by the organization the name or emblem signifies.”
31
Post Opinion Maneuvering
—Fleischer filed petition for rehearing or rehearing
en banc.
—Several organizations and companies, such as
the Motion Picture Association of America and
Major League Baseball filed amicus briefs urging
the Ninth Circuit to rehear case.
—Amici highlighted problems with the Ninth
Circuit’s decision and the potential impact of the
opinion.
32
New Ninth Circuit Decision
On August 19, 2011 Ninth Circuit Panel withdrew
previous opinion and issued new opinion.
33
•
Affirmed district court ruling of failure to
establish copyright ownership.
•
Affirmed district court ruling of no proof of
trademark registration of Betty Boop image.
•
Affirmed ruling of no common law trademark
rights in the image because of failure to prove
image has become identified with single source.
New Ninth Circuit Decision (cont’d)
—Vacated summary dismissal of
trademark claim based on word mark
because evidence was insufficient to
show that defendants did not infringe
the word mark.
—No reference to aesthetic
functionality.
34
Potential Impact of Aesthetic Functionality
— Potentially eliminates protection for the strongest marks.
— Potentially penalizes companies that have invested the most to
make brands and trademarks popular.
35
•
Consumers identify and associate with the most successful
brands.
•
When brand allegiance is strong, consumers often desire
clothing and other merchandise bearing the brand logo.
•
Fans of well-known brands are the most likely consumer group
who will want goods bearing the trademarks and logos of their
favorite brands, regardless of source. Under the Fleischer
ruling, unauthorized sale of merchandise would not be an
infringing use.
Potential Impact of Aesthetic Functionality
(cont’d)
—Biggest threat may be to trademarks of
professional sports teams and universities.
•
Likely to have fans who want to show allegiance
to favorite team or school.
—Also could affect entertainment companies who
license characters on merchandising.
•
36
e.g. Walt Disney, Warner Brothers.
What Brand Owners Can Do to Protect
Themselves
—Show that consumers believe the goods bearing
the mark came from a single source.
—Show that consumers believe that trademark
owner has sponsored or approved of the
infringing use.
—Conduct consumer surveys to show actual
confusion.
—Collect customer complaints of infringing
products.
37
What Brand Owners Can Do to Protect
Themselves (cont’d)
—Where possible, always register design for copyright
protection to avoid aesthetic functionality issue.
•
Depending on the unauthorized use, this would
allow potential recourse through copyright
infringement action.
—Clear Title
38
•
Ensure ownership history is clean and complete.
•
Avoid gaps in “chain-of-title.”
•
Obtain transfer of all rights to the
copyright/trademark.
Thank You
Joseph A. Calvaruso
Orrick, Herrington & Sutcliffe LLP
51 West 52nd Street
New York, NY 10019
jcalvaruso@orrick.com
1-212-506-5140
www.orrick.com/ip
Orrick, Herrington & Sutcliffe LLP
39