Trademark Law. Prof. Madison University of Pittsburgh School of Law

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Rolf White
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1 Trademark Law Prof. Madison University of Pittsburgh School of Law

2 A growing glossary of trademark law terms and concepts: 1. The mark, as a general concept (vs. symbol, vs. brand) 2. The mark in a particular instance (define the mark) 3. Mark X for Product or Service Y 4. Distinctiveness ( distinctive of source or distinctive as to source ) 5. Goodwill (trademark law is intended to protect which interests?) 6. Confusion (what is the harm associated with unauthorized use of a mark?) 7. Search costs and free riding 8. Lanham Act of 1946 (federal statutory scheme) 9. Common law of unfair competition (and common law basis of TM rights) 10. Abercrombie spectrum 11. Inherent distinctiveness 12. Acquired distinctiveness and secondary meaning 13.Trademarks; service marks; word marks; design marks; sound marks (smell, texture, taste marks); color marks; combination marks; trade dress 14. Product packaging v. product configuration trade dress; tertium quid 15. A cocktail shaker shaped like a penguin 16.Proving distinctiveness: Abercrombie spectrum and the Seabrook Foods factors 17. mere ornamentation as an argument against TM protection and/or as a conclusion supporting the denial of TM protection 18. Strong marks and weak marks

3 A growing glossary of trademark law terms and concepts: 19. Bars to protection 20. Utilitarian functionality and aesthetic functionality

4 Lanham Act 2(e)(5): No trademark shall be refused registration unless it -- (e) Consists of a mark which, (5) comprises any matter that, as a whole, is functional Lanham Act 43(c)(3): In a civil action for trade dress infringement under this chapter for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional.

5 Why bother with functionality analysis? (when distinctiveness analysis is difficult enough!)

6 (Registrable) In re Morton-Norwich Products (CCPA 1982) Applicant owns design patents on configuration & spray top Court reverses TTAB on functionality; remands for determination of distinctiveness. Why? Chief perspective: Is the fundamental right to compete impaired? Exhaustion of available designs as a concern. 1/ Start with the facts: Focus on utility of the claimed mark: does the mark [design] have de facto utility (it is useful as a thing)? a/ If no, then evaluate for distinctiveness. b/ If yes, then evaluate competitive need: Is the mark de jure functional, so that it cannot be protected as a mark? Do competitors need to have access to this design feature in order to exercise their rights under copyright and patent effectively? A design may be de jure functional if it is the best or one of the few superior designs available? Is it essential to effective competition? 2/ If the mark is not de jure functional, then evaluate for distinctiveness. What is the relevant evidence?

7 In re Morton-Norwich Products (CCPA 1982) Morton-Norwich factors: 1. Existence of expired utility patent 2. Utilitarian advantages touted in advertising 3. Availability of alternative designs 4. Manufacturing advantages (Registrable)

8 Ridged Neck for stability when pouring Easy pour offset neck minimizes spillage. PERFECT BY DESIGN Ridged neck bottle for stability when pouring The new and improved ridged offset neck Fun-L- Fil plastic bottle... A revolutionary ribbed neck plastic bottle. In the age of consumer convenience Kendall leads the competition with our new improved offset neck design plastic Fun- L- Fil bottle.... Extensive research has shown that consumers prefer the Kendall ridged neck bottle because it helps prevent spillage while pouring. Fun-L-Fil is a great consumer package that is easy to open, easy to pour with a special ribbed neck. (Not registrable) Applicant's counsel dismisses these statements in the promotional materials as puffing.

10 (Registrable) "There's no rotisserie needed, and no electric cord... the round kettle lets you circulate the heat, not the meat" and on page 3 the following (emphasis in original): It's round for a reason! Forget the rotisserie and electric cord that ordinary grills need! Round means rotate the heat, not the meat. Cook faster, more evenly, and save energy.

12 Inwood Laboratories, Inc. v. Ives Laboratories, Inc. (U.S. 1982)

13 Qualitex Co. Jacobson Products Co., Inc. (U.S. 1995) [T]his Court consequently has explained that, "[i]n general terms, a product feature is functional," and cannot serve as a trademark, "if it is essential to the use or purpose of the article or if it affects the cost or quality of the article," that is, if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage. Inwood Laboratories, Inc., supra, 456 U.S., at 850, n. 10

14 TrafFix Devices, Inc. v. Marketing Displays, Inc. (U.S. 2001) The principal question in this case is the effect of an expired patent on a claim of trade dress infringement. A prior patent, we conclude, has vital significance in resolving the trade dress claim. A utility patent is strong evidence that the features therein claimed are functional. If trade dress protection is sought for those features the strong evidence of functionality based on the previous patent adds great weight to the statutory presumption that features are deemed functional until proved otherwise by the party seeking trade dress protection. Where the expired patent claimed the features in question, one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional, for instance by showing that it is merely an ornamental, incidental, or arbitrary aspect of the device.

15 TrafFix Devices, Inc. v. Marketing Displays, Inc. (U.S. 2001) Two definitions of functionality: One -- the traditional definition of functionality: a product feature is functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of an article. If a product feature is the reason the device works, then the feature is functional. The availability of alternative designs is irrelevant. Utilitarian test. Two -- a functional feature is one the exclusive use of which would put competitors at a significant nonreputation-related disadvantage. Competitive necessity test.

16 TrafFix Devices, Inc. v. Marketing Displays, Inc. (U.S. 2001) The dual-spring design on a wind-resistant road sign was functional because the dualspring design provides a unique and useful mechanism to resist the force of the wind.

mechanism or a tri or quad-spring mechanism that might avoid infringing [MDI s] trade dress.

17 Marketing Displays, Inc. TrafFix Devices, Inc. 6 th Circuit observes that it would take little imagination to conceive of a hidden dual-spring mechanism or a tri or quad-spring mechanism that might avoid infringing [MDI s] trade dress. Hindering competition somewhat is not enough; [e]xclusive use of a feature must put competitors at a significant non-reputation-related disadvantage... (quoting Qualitex).

18 Gibson Les Paul PRS Singlecut

19 Gibson Les Paul Paul Reed Smith

20 (Registrable) (Not registrable) Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP (6 th Cir. 2005)

21 Dreadnought Les Paul Standard Fender Stratocaster

22 Can Zippo register the design of its lighter as a mark? Zippo s utility patent on this design has expired.

Trademark Law. Prof. Madison University of Pittsburgh School of Law

Trademark Law. Prof. Madison University of Pittsburgh School of Law Trademark Law Prof. Madison University of Pittsburgh School of Law A growing glossary of trademark law terms and concepts: 1. The mark, as a general concept (vs. symbol, vs. brand) 2. The mark in a particular