Trademarks and the World Wide
Web and Trade Dress in Mobile Tech
IM 350: Intellectual Property Law and
New Media
Oct. 6, 2015
Steve Baron
• Cited in the dissent in Multi Time Machine v.
Amazon.com
• https://screen.yahoo.com/olympia-restaurant000000640.html
Agenda
• A new look at “initial interest confusion” in
online retail
• Another look at Apple v. Samsung and Apple’s
trade dress claims
Multi Time Machine v. Amazon.com
No. 13-55575 (Ninth Cir. 2015)
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MTM makes “Special Ops” watches
MTM own tm in MTM SPECIAL OPS
Amazon does not sell MTM’s watches
Unlike Amazon’s competitors, when users
search for MTM Special Ops watches on
Amazon, Amazon does not state that it does
not carry the watches
• Amazon displays Luminox and Chase-Durer
watches
Multi Time Machine v. Amazon.com
No. 13-55575 (Ninth Cir. 2015)
• “MTM Special Ops” appears on Amazon:
– In search field
– In quotation marks immediately below search field
– In the phrase “Related Searches: MTM special ops
watch”
– On a static page stating, “At Amazon.com, we not only
have a large collection of mtm special ops watch
products, but also a comprehensive set of reviews
from our customers.”
– Amazon uses behavior based search (BBS) technology
Multi Time Machine v. Amazon.com
No. 13-55575 (Ninth Cir. 2015)
• MTM sues Amazon.com for infringement
• District Court finds no likelihood of confusion
and grants summary judgment for Amazon
• MTM appeals to Ninth Circuit
Multi Time Machine v. Amazon.com
No. 13-55575 (Ninth Cir. 2015)
• From labeling or failure to label, a jury could infer:
– users who are confused by the search results are confused
as to why MTM products are not listed.
– users who are confused by the search result will wonder
whether a competitor has acquired MTM or is otherwise
affiliated with or approved by MTM.
• A customer might think that MTM and Luminox are
manufactured by the same parent company.
• The possibility of initial interest confusion here is likely
much higher than if, for instance, a customer using an
online grocery website typed “Coke” and only Pepsi
products were returned as results.”
Multi Time Machine v. Amazon.com
No. 13-55575 (Ninth Cir. 2015)
• Factors that influence likelihood of confusion:
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Strength of mark
Proximity or relatedness of goods
Similarity of marks
Evidence of actual confusion
Marketing channels
Degree of consumer care
Defendant’s intent
Likelihood of expansion
Multi Time Machine v. Amazon.com
No. 13-55575 (Ninth Cir. 2015)
• Factors that influence likelihood of confusion:
1. Strength of mark (Jury should assess)
2. Proximity or relatedness of goods (Jury should
assess)
3. Similarity of marks
4. Evidence of actual confusion (Jury should assess)
5. Marketing channels
6. Degree of consumer care (Jury should assess)
7. Defendant’s intent (Jury should assess)
8. Likelihood of expansion
Multi Time Machine v. Amazon.com
No. 13-55575 (Ninth Cir. 2015)
• Use of a trademark as a search engine
keyword that triggers the display of a
competitor’s advertisement is “use in
commerce”
Multi Time Machine v. Amazon.com
No. 13-55575 (Ninth Cir. 2015)
• Implications of ruling:
– On line big-box retailers must exercise greater care
in informing users about products they carry and
don’t carry.
– Use of BBS technology algorithms is not illegal, but
a retailer must be able to disclose whether it sells
the merchandise and not simply forward users
who are searching for “X” over to “Y”
Trademark Reg. 3470983
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The mark consists of the configuration of a rectangular handheld mobile digital electronic device
with rounded silver edges, a black face, and an array of 16 square icons with rounded edges. The
top 12 icons appear on a black background, and the bottom 4 appear on a silver background. The
first icon depicts the letters "SMS" in green inside a white speech bubble on a green background;
the second icon is white with a thin red stripe at the top; the third icon depicts a sunflower with
yellow petals, a brown center, and a green stem in front of a blue sky; the fourth icon depicts a
camera lens with a black barrel and blue glass on a silver background; the fifth icon depicts a tan
television console with brown knobs and a gray-green screen; the sixth icon depicts a white graph
line on a blue background; the seventh icon depicts a map with yellow and orange roads, a pin with
a red head, and a red-and- blue road sign with the numeral "280" in white; the eighth icon depicts
an orange sun on a blue background, with the temperature in white; the ninth icon depicts a white
clock with black and red hands and numerals on a black background; the tenth icon depicts three
brown-gray circles and one orange circle on a black background with a white border, with the
mathematical symbols for addition, subtraction, multiplication, and the equal sign displayed in
white on the circles; the eleventh icon depicts a portion of a yellow notepad with blue and red
ruling, with brown binding at the top; the twelfth icon depicts three silver gears over a thatched
black-and-silver background; the thirteenth icon depicts a white telephone receiver against a green
background; the fourteenth icon depicts a white envelope over a blue sky with white clouds; the
fifteenth icon depicts a white compass with a white- and-red needle over a blue map; the sixteenth
icon depicts the distinctive configuration of applicant's media player device in white over an orange
background.
The Apple “SMS” Trade Dress
Apple also claims unregistered trade
dress
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a rectangular product with four evenly rounded corners;
a flat, clear surface covering the front of the product;
a display screen under the clear surface;
substantial black borders above and below the display
screen and narrower black borders on either side of the
screen; and
• when the device is on, a row of small dots on the display
screen, a matrix of colorful square icons with evenly
rounded corners within the display screen, and an
unchanging bottom dock of colorful square icons with
evenly rounded corners set offfrom the display’s other
icons.
Apple v. Samsung
2014-1335, 2015-1029 (Fed. Cir. 2015)
• Trade dress cannot be “functional”
• Four factors:
(1) whether the design yields a utilitarian
advantage,
(2) Whether alternative designs are available,
(3) whether advertising touts the utilitarian
advantages of the design, and
(4) whether the particular design results from a
comparatively simple or inexpensive method of
manufacture.
Apple v. Samsung
2014-1335, 2015-1029 (Fed. Cir. 2015)
• Federal Circuit rules for Samsung and says:
• Four factors:
(1) iPhone design yields a utilitarian advantage,
(2) Alternative designs to iPhone did not provide
exactly the same features,
(3) Apple’s advertising touts the utilitarian
advantages of the design of the iPhone, and
(4) Apple points to no evidence to show the
particular design results from a comparatively
simple or inexpensive method of manufacture.