Functionality in Trade Dress Prosecution and Litigation: Protecting the Look and Feel of Products and Packaging

Presenting a live 90-minute webinar with interactive Q&A Functionality in Trade Dress Prosecution and Litigation: Protecting the Look and Feel of Products and Packaging THURSDAY, JANUARY 11, 2018 1pm Eastern 12pm Central 11am Mountain 10am Pacific Today s faculty features: Theodore H. Davis, Jr., Partner, Kilpatrick Townsend & Stockton, Atlanta Roberta Jacobs-Meadway, Attorney, Philadelphia Janet A. Marvel, Partner, Pattishall McAuliffe Newbury Hilliard & Geraldson, Chicago The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 1.

Tips for Optimal Quality FOR LIVE EVENT ONLY Sound Quality If you are listening via your computer speakers, please note that the quality of your sound will vary depending on the speed and quality of your internet connection. If the sound quality is not satisfactory, you may listen via the phone: dial 1-866-755-4350 and enter your PIN when prompted. Otherwise, please send us a chat or e-mail sound@straffordpub.com immediately so we can address the problem. If you dialed in and have any difficulties during the call, press *0 for assistance. Viewing Quality To maximize your screen, press the F11 key on your keyboard. To exit full screen, press the F11 key again.

Continuing Education Credits FOR LIVE EVENT ONLY In order for us to process your continuing education credit, you must confirm your participation in this webinar by completing and submitting the Attendance Affirmation/Evaluation after the webinar. A link to the Attendance Affirmation/Evaluation will be in the thank you email that you will receive immediately following the program. For additional information about continuing education, call us at 1-800-926-7926 ext. 2.

Program Materials FOR LIVE EVENT ONLY If you have not printed the conference materials for this program, please complete the following steps: Click on the ^ symbol next to Conference Materials in the middle of the lefthand column on your screen. Click on the tab labeled Handouts that appears, and there you will see a PDF of the slides for today's program. Double click on the PDF and a separate page will open. Print the slides by clicking on the printer icon.

Functionality in Trade Dress Prosecution and Litigation: Protecting the Look and Feel of Products and Packaging Theodore H. Davis Jr. Kilpatrick Townsend & Stockton LLP TDavis@KTSLaw.com

Trade Dress Prosecution Functionality in the Prosecution Context This Court... 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-reputationrelated disadvantage. Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995) (quoting Inwood Labs. v. Ives Labs., 456 U.S. 844, 851 n.10 (1982)). 6

Trade Dress Prosecution In re Morton-Norwich Prods., Inc., 671 F.2d 1332 (C.C.P.A. 1982) 7

Trade Dress Prosecution Functionality in the Prosecution Context Morton-Norwich is significant for three reasons: it clarifies the relationship between utility and functionality; it distinguishes between the related, but different, concepts of de facto functionality and de jure functionality; and it introduces the four Morton-Norwich factors. 8

Trade Dress Prosecution Functionality in the Prosecution Context From the earliest cases, functionality has been expressed in terms of utility. In 1930, this court stated it to be well settled that the configuration of an article having utility is not the subject of trademark protection. Morton-Norwich, 671 F.2d at 1338 (emphasis omitted) (quoting In re Dennison Mfg. Co., 39 F.2d 720, 721 (C.C.P.A. 1930)). 9

Trade Dress Prosecution In re Weber-Stephen Prods. Co., 184 U.S.P.Q. 509 (T.T.A.B. 1974) 10

Trade Dress Prosecution Functionality in the Prosecution Context [T]he prime and salient consideration in this case [is] whether the configuration in question is essentially functional or utilitarian in character... [I]f it is essentially functional or utilitarian in character, it is clear... that a proprietary or legal right, which is a basic requirement for registration, cannot attach thereto. Weber-Stephen Prods. Co., 184 U.S.P.Q. at 511. 11

Trade Dress Prosecution In re Reddi-Wip, Inc., 150 U.S.P.Q. 213 (T.T.A.B. 1966) 12

Trade Dress Prosecution Functionality in the Prosecution Context [E]verything that distinguishes one s goods is not, per se, a trademark. That is to say, there are certain things, such as configurations and devices which are in essence utilitarian and which may not function as trademarks regardless of the fact that they may distinguish one s goods. Reddi-Wip, 150 U.S.P.Q. at 214 (internal quotation marks omitted). 13

Trade Dress Prosecution In re Deister Concentrator Co., 289 F.2d 496 (C.C.P.A. 1961) 14

Trade Dress Prosecution Functionality in the Prosecution Context A feature dictated solely by functional (utilitarian) considerations may not be protected as a trademark; but mere possession of a function (utility) is not sufficient reason to deny protection. Deister Concentrator Co., 289 F.2d at 502. 15

Trade Dress Prosecution In re Oscar Mayer & Co., 189 U.S.P.Q. 295 (T.T.A.B. 1975) 16

Trade Dress Prosecution Functionality in the Prosecution Context [T]he fact that a configuration may possess some utility or function is not sufficient to deny protection if it is otherwise entitled thereto. Oscar Mayer & Co., 189 U.S.P.Q. at 296. 17

Trade Dress Prosecution Functionality in the Prosecution Context [I]f the designation functional is to be utilized to denote the legal consequence, we must speak in terms of de facto functionality and de jure functionality, the former being the use of functional in the lay sense, indicating that although the design... is directed to performance of a function, it may be legally recognized as an indication of source. De jure functionality, of course, would be used to indicate the opposite-such a design may not be protected as a trademark. Morton-Norwich, 671 F.2d at 1337. 18

Trade Dress Prosecution Functionality in the Prosecution Context Assuming [this court s prior 1930 opinion in Dennison Mfg.] intended [to invalidate the rights to any] article whose configuration has utility, its statement is... too broad. Under that reasoning, the design of a particular article would be protectable as a trademark only where the design was useless, that is, wholly unrelated to the function of the article. Morton-Norwich, 671 F.2d at 1338. 19

Trade Dress Prosecution Functionality in the Prosecution Context [F]unctionality is determined in light of utility, which is determined in light of superiority of design, and rests upon the foundation essential to effective competition... Morton-Norwich, 671 F.2d at 1340. 20

Trade Dress Prosecution Functionality in the Prosecution Context The four Morton-Norwich factors: the disclosure of a related utility patent; 21

Trade Dress Prosecution TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001) 22

Trade Dress Prosecution Functionality in the Prosecution Context Results of past litigation involving the TrafFix patents: closely spaced springs do not literally infringe the patents; but closely spaced springs do infringe the patents under the doctrine of equivalents. See Sarkisian v. Winn-Proof Corp., 203 U.S.P.Q. 60 (D. Or. 1978), aff d, 697 F.2d 1313 (9th Cir. 1983). 23

Trade Dress Prosecution TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001) 24

Trade Dress Prosecution Functionality in the Prosecution Context The Court held that if the trade dress was the subject of an expired utility patent and disclosed in the patent claims, there is a strong evidentiary presumption that the trade dress falls... is therefore functional. Robert G. Bone, Enforcement Costs and Trademark Puzzles, 90 Va. L. Rev. 2099, 2164 n.190 (2004). 25

Trade Dress Prosecution Functionality in the Prosecution Context [L]argely because of concerns about the potential for trade dress protection to extend the patent period, the Court held that expired utility patents give rise to a strong presumption of functionality. Mark P. McKenna, The Rehnquist Court and the Groundwork for Greater First Amendment Scrutiny of Intellectual Property, 21 Wash. J. L & Policy 11, 16 (2006). 26

Trade Dress Prosecution Functionality in the Prosecution Context 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. TrafFix Devices, 532 U.S. at 29-30. 27

Trade Dress Prosecution Functionality in the Prosecution Context 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. Section 43(a)(3) of the Lanham Act, 15 U.S.C. 1125(a)(3) (2012). 28

Trade Dress Prosecution Functionality in the Prosecution Context [E]ven if there has been no previous utility patent the party asserting trade dress has the burden to establish the nonfunctionality of alleged trade dress features. TrafFix Devices, 532 U.S. at 31 (emphasis added). 29

Trade Dress Prosecution Functionality in the Prosecution Context The significance of a related utility patent: it may be strong factual evidence of functionality, but it does not create a presumption of functionality, see TrafFix Devices, 532 U.S. at 29-30; its entire disclosure, and not just its claims, can weigh in favor of functionality, see, e.g., In re Dietrich, 91 U.S.P.Q.2d 1622, 1627 (T.T.A.B. 2009); it need not be owned by the claimant to be relevant, see, e.g., In re Virshup, 42 U.S.P.Q.2d 1403, 1405 (T.T.A.B. 1997); and 30

Trade Dress Prosecution Functionality in the Prosecution Context The significance of a related utility patent: it need not actually have issued for the disclosure of the application to be evidence of functionality, see, e.g., Valu Eng g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1279 (Fed. Cir. 2002); but the patent s disclosure nevertheless can be distinguished. See, e.g., In re Weber-Stephen Prods. Co., 3 U.S.P.Q.2d 1659, 1664 (T.T.A.B. 1987). 31

Trade Dress Prosecution In re Weber-Stephen Prods. Co., 3 U.S.P.Q.2d 1659 (T.T.A.B. 1987) 32

Trade Dress Prosecution Functionality in the Prosecution Context While the drawings in the patent show a cooking grill with a round bowl, supported on a tripod leg arrangement, nothing in the patent discloses any utilitarian advantages of this particular design. Weber-Stephen Prods. Co., 3 U.S.P.Q.2d at 1664. 33

Trade Dress Prosecution Functionality in the Prosecution Context In a case where a manufacturer seeks to protect arbitrary, incidental, or ornamental aspects of features of a product found in the patent claims, such as arbitrary curves in the legs or an ornamental pattern painted on the springs, a different result might obtain. There the manufacturer could perhaps prove that those aspects do not serve a purpose within the terms of the utility patent. TrafFix Devices, 532 U.S. at 34. 34

Trade Dress Prosecution In re Becton, Dickinson & Co., 675 F.3d 1368 (Fed. Cir. 2012) 37

Trade Dress Prosecution In re Becton, Dickinson & Co., 675 F.3d 1368 (Fed. Cir. 2012) 38

Trade Dress Prosecution Functionality in the Prosecution Context The significance of a claimant s advertising: a claimant whose advertising historically has stressed the functional advantages of its design is likely to face an uphill battle in establishing nonfunctionality, see, e.g., In re Becton, Dickinson & Co., 675 F.3d 1368, 1375-76 (Fed. Cir. 2012); but such a claimant s advertising may not necessarily carry the day, particularly at the summary judgment stage, see. e.g., In re Ovation Instruments, Inc., 201 U.S.P.Q. 116, 123 (T.T.A.B. 1978); 39

Trade Dress Prosecution Functionality in the Prosecution Context The significance of a claimant s advertising: the absence of claims of functional advantage for a particular design may be evidence of nonfunctionality, see, e.g., In re Zippo Mfg. Co., 50 U.S.P.Q.2d 1852, 1854 (T.T.A.B. 1999); and even if functional claims are made for a design as a whole, they may receive less weight if they do not relate to the particular characteristics claimed as trade dress. See, e.g., In re Weber- Stephens Prods. Co., 3 U.S.P.Q.2d 1659, 1664-65 (T.T.A.B. 1987). 40

Trade Dress Prosecution Functionality in the Prosecution Context The four Morton-Norwich factors: the disclosure of a related utility patent; advertising materials in which the claimant touts the design s utilitarian advantages; the availability of alternative designs; and 41

Trade Dress Prosecution Functionality in the Prosecution Context The significance of alternative designs: in TrafFix, the Supreme Court suggested that if a feature is functional in the utilitarian sense, there is no need to examine whether alternative configurations are available to the defendant, see 532 U.S. at 33; the Federal Circuit has largely ignored this aspect of TrafFix, see Valu Eng g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1276 (Fed. Cir. 2002); which means 42

Trade Dress Prosecution Functionality in the Prosecution Context [T]he [Supreme] Court merely noted once a product feature is found functional based on other considerations there is no need to con-sider the availability of alternative designs, because the feature cannot be given trade dress protection merely because there are alternative designs available. But that does not mean that the availability of alternative designs cannot be a legitimate source of evidence of evidence of whether a feature is functional in the first place. Valu Eng g, 278 F.3d at 1276. 43

Trade Dress Prosecution Functionality in the Prosecution Context The significance of alternative designs: the availability of alternative designs can still weigh in favor of nonfunctionality in the registration context, see, e.g., In re Zippo Mfg. Co., 50 U.S.P.Q.2d 1852 (T.T.A.B. 1999); but a claimant s proffered alternative designs must indeed be alternative, i.e., distinguishable from the original, see, e.g., Greenhouse Sys., Inc. v. Carson, 37 U.S.P.Q.2d 1748, 1754 (T.T.A.B. 1995); and 44

Trade Dress Prosecution Functionality in the Prosecution Context The significance of alternative designs: the alternative designs must work as well, and at an equivalent cost, as that of the claimant to support a finding of nonfunctionality. See, e.g., Kistner Concrete Prods. Inc. v. Contech Arch Techs. Inc., 97 U.S.P.Q.2d 1912, 1929 (T.T.A.B. 2011). 45

Trade Dress Prosecution Functionality in the Prosecution Context The significance of manufacturing efficiencies: If a plaintiff s claimed trade dress is a direct result of an efficient manufacturing process, this factor will weigh in favor of a finding of functionality, see, e.g., In re Peters, 6 U.S.P.Q.2d 1390, 1392 (T.T.A.B. 1988); but evidence that alternative configurations are cheaper to produce than the plaintiff s claimed trade dress weighs in favor of a finding of nonfunctionality. See, e.g., In re Honeywell Inc., 8 U.S.P.Q.2d 1600, 1604 (T.T.A.B. 1988). 47

Trade Dress Prosecution Functionality in the Prosecution Context Two additional factors coming into play in the registration context are: the existence of a related design patent; and 48

Trade Dress Prosecution Functionality in the Prosecution Context The significance of a design patent: it is not evidence of functionality, see, e.g., In re World s Finest Chocolate, Inc., 474 F.2d 1012, 1015 (C.C.P.A. 1973); and, indeed, it can be evidence of nonfunctionality, see, e.g., In re Honeywell Inc., 8 U.S.P.Q.2d 1600, 1603 (T.T.A.B. 1988); but 49

Trade Dress Prosecution Functionality in the Prosecution Context It is interesting to note that appellant... owns [a] design patent...for the design in issue, which, at least presumptively, indicates that the design is not de jure functional. In re Morton-Norwich Prods. Inc., 671 F.2d 1332, 1342 n.3 (C.C.P.A. 1982). 50

Trade Dress Prosecution Functionality in the Prosecution Context The significance of a design patent: the drawing of the design patent must match up to the claimant s design in the marketplace to have any evidentiary significance. See, e.g., In re Becton, Dickinson & Co., 675 F.3d 1368, 1375 (Fed. Cir. 2012). 52

Trade Dress Prosecution In re Becton, Dickinson & Co., 675 F.3d 1368 (Fed. Cir. 2012) 53

Trade Dress Prosecution Functionality in the Prosecution Context Two additional factors coming into play in the registration context: the existence of a related design patent; and the claimant s intent. 54

Trade Dress Prosecution In re Jockey Int l, Inc., 192 U.S.P.Q. 579 (T.T.A.B. 1976) 56

Trade Dress Prosecution In re Mars Inc., 105 U.S.P.Q.2d 1859 (T.T.A.B. 2013) 57

Trade Dress Prosecution Functionality in the Prosecution Context The significance of the claimant s intent: the adoption of a design with an intent that it serve as a protectable trade dress can be probative evidence of nonfunctionality, see, e.g., In re Jockey Int l, Inc., 192 U.S.P.Q. 579, 582 (T.T.A.B. 1976); but the Board has more recently held that whether [an] applicant s primary purpose or intent in settling upon [its] design was source identification is beside the point. In re Mars Inc., 105 U.S.P.Q.2d 1859, 1865 (T.T.A.B. 2013). 58

Trade Dress Prosecution Thank You Ted Davis Kilpatrick Townsend & Stockton LLP Tdavis@KTSLaw.com 59

Trade Dress In the Courts Roberta Jacobs-Meadway Eckert Seamans Cherin & Mellott, LLC jacobsmeadwayr@gmail.com

Product v. Package Product trade dress can never be inherently distinctive Package trade dress may be inherently distinctive Question is the exterior of a building in which services are rendered a product or package for the purpose of this analysis? The shapes of buildings have ben protected as trade dress. Fotomat Corp. v. Houck, 166 USPQ 271 (Fla. Cir. Ct. 1970); White Tower System, Inc. v. White Castle System, 90 F2d 67 (6th Cir. 1937) cert. denied, 302 U.S. 720 (1937). 61

Product v. Package Question is restaurant theme/decor the product or the package? 62

In Two Pesos v. Taco Cabana, 112 S.Ct. 2753 (1992) the design of a restaurant was found to be protectable trade dress in spite of the fact that many of the elements relied on cause be deemed fairly commonplace in Mexican-style restaurants. Taco Cabana Two Pesos The court there used the Abercrombie test, based on a stated spectrum of distinctiveness, which was developed for use with word marks and never fit well ant analysis of product or package designs. In Two Pesos, the petitioner accepted the classification scheme which the Fifth Circuit had used. 63

A different result obtained some years later in Miller s Ale House v. Boynton Carolina Ale House, 702 F.3d 1312 (11th Cir. 2012), highlighting the importance of the presentation of facts and the marshalling of the arguments. The issue in Miller s Ale House was whether the plaintiff could establish the asserted trade dress was distinctive. The appellate court answered the question in the negative. 64

Product Configuration Trade Dress Establishing Acquired Distinctiveness The issue to be addressed in assessing whether package dress is or is not distinctive is whether the asserted dress is: - a common basic shape or design or whether it is unique or unusual in a particular field or whether it is - a mere refinement of a commonly adopted and well-known form for a particular class of goods (or services). See Brooks Shoe v. Suave Shoe Corp., 716 F.2d 854 (11th Cir. 1983). 65

Package Trade Dress Establishing Acquired Distinctiveness Role of experts industry experts survey experts Survey evidence different formats for surveys standards for assessing adequacy of recognition 66

If the Trade Dress is Functional, the Inquiry (and case) is Over Utilitarian Functionality The Supreme Court has held that a product s feature is functional if it is essential to the use or purpose of the article or if it affects the cost of quality of the article. Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850 n.10 (1982). Primary Test for functionality of trade dress is whether feature of product serves any significant function other than to distinguish firm s goods or identify their source, or if it affects cost or quality of product, and additional competitive-necessity test characterizes feature of product as functional if exclusive use of that feature would put competitors at significant non-reputation-related disadvantage. Aesthetic Functionality The doctrine of aesthetic functionality considers whether purely aesthetic features might be considered functional because they confer a marketing advantage unrelated to the reputation of the party claiming rights (e.g., color coding where maroon signifies a black cherry flavor or gold a caffeine free soda). 67

Louboutin v. Yves St. Laurent 68

Christian Louboutin S.A., owner of a U.S. trademark registration for shoes with a red-lacquered outsole, sued Yves Saint Laurent (YSL) for trademark infringement when YSL introduced a line of entirely monochromatic shoes, including red shoes with red outsoles. The trial court found, the flash of a red sole is instantly recognizable today as Louboutin s handiwork. Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., 778 F. Supp. 2d 445, 447-48 (S.D.N.Y. 2011). Nonetheless, the trial court held that Louboutin s red outsole was not protectable as a trademark. The single question, as the court saw it, was whether the Trademark Act extends protection to a trademark composed of a single color used as an expressive and defining quality of an article of wear produced in the fashion industry. Id. at 451. Holding that it did not, the court concluded that, in the fashion industry, single-color marks are aesthetically functional, and therefore not protectable as trademarks. 69

Determining Functionality of Product Configurations The Second Circuit reversed the district court s decision, explaining that it was error to subject the fashion industry to a different standard than that used for any other industry. Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc., 696 F.3d 206 (2d Cir. 2012). This, said the appellate court, conflicted with the Supreme Court s decision in Qualitex v. Jacobson, in which the Court held that no special legal rule prevents color alone from serving as a trademark. A determination of aesthetic functionality involves the fact-sensitive test of whether the element in question has a significant effect on competition. Thus, the Second Circuit held that a mark is aesthetically functional, and therefore ineligible for trademark protection, if: (1) the design feature is essential to the use or purpose of the article, (2) the design feature affects the cost or quality of the article and (3) protecting the design feature would significantly undermine a competitor s ability to compete. The decision found that YSL could continue to sell red shoes with red outsoles, although it could not sell shoes in other colors than red with a red outsole. The decision has been cited for the proposition that in the Second Circuit, fashion brands can successfully acquire distinctiveness in a color in at least some configurations and protect those designs. 70

TrafFix Devices, Inc. v. Marketing Displays, Inc. 71

The Supreme Court recognized an additional test for functionality in TrafFix. Under the competitive necessity test, [a] functional feature is one the exclusive use of which would put competitors at a significant non-reputation-related disadvantage. TrafFix, 532 U.S. at 32. The competitive necessity test is a supplement to the traditional test. Id. There is no need to consider competitive necessity when a product feature is functional under the traditional definition. Competitive necessity includes circumstances where the design yields a utilitarian advantage, where alternative designs are not available in order to avoid hindering competition, and where the design achieves economies in manufacture or use. 72

The availability of alternative designs is irrelevant to the primary test for functionality. TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001). Essential, as used in the traditional test of functionality is a term of art, used to distinguish product features that only serve to identify a product feature that only serve to identify a product s source from those that serve any other significant function. Poly-America, 2011 U.S. Dist. LEXIS 82657, 2011 WL 3206687, at *10 (citing Qualitex, 514 U.S. at 166). 73

In Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995), the U.S. Supreme Court held that color alone could serve as a trademark provided it had acquired secondary meaning. The Court held that a design is functional 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. Id. at 165 (emphasis added). 74

Boston Professional Hockey Ass n, Inc. v. Dallas Cap & Emblem Mfg, Inc., 510 F.2d 1004 (5th Cir. 1975) Is the emblem functional or is it source identifying? Does it identify a single source or permit the wearer to show allegiance to a particular NHL team? The doctrine of secondary source significance was created to address this issue. 75

Relationship of Product Configuration Trade Dress and Design Patent Protection Design patent protection is available for ornamental features of useful objects. For such protection, the design must be new and not obvious, but there is no requirement that the design have acquired distinctiveness or even have been used in commerce on a product in the ordinary course of business. 76

Ferrari 365 GTB/4 automobile configuration has been protected against replication as a toy car. Ferrari SpA v. McBurnie, 11 USPQ 2d 1843 (S.D. Cal. 1989). 77

Sears, Roebuck & Co. v. Stiffel Co. 78

Compco Corp. v. Day-Brite Lighting, Inc. 79

When plaintiff asked that it be granted broad trade dress rights in a baroque design on its silverware, the Second Circuit Court of Appeals declined to do so, holding the design aesthetically functional. Silverware has commonly been sold with baroque patterns. Therefore, the baroque design was aesthetically functional. Others had to replicate it to compete. Wallace International Silversmiths, Inc. v. Godinger Silver Art Co., 916 F.2d 76 (2d Cir. 1990). 80

Relationship of Trade Dress and Copyright Protection Mazer v. Stein 82

Courts will hesitate to grant broad trade dress rights in mere ornamentation because, as with mechanically functional features, doing so would stifle legitimate competition. 83

Works may be subject to both copyright and trade dress/unfair competition protection. The trade dress claim in Walmart failed because of lack of evidence of distinctiveness. (Question: whether the issue should not have been ornamentation; failure to function as a mark ) 84

Pagliero et al. v. Wallace China Co., Limited 85

Faced with claims that particular designs on a plaintiff s china should be protected under the Trademark Act, the Ninth Circuit Court of Appeals held that the designs were not protectable because they were aesthetically functional. Pagliero v. Wallace China Co., 198 F.2d 339 (9th Cir. 1952). The court understood that purchasers bought the plaintiff s china because they found the designs appealing, but there was no evidence of any source-identifying significance in the designs. 86

Kieselstein-Cord v. Accessories by Pearl, Inc. 87

The same package may be subject to protection under design patent and trademark and copyright rights in the right circumstances. 88

Establishing Trade Dress Rights in Contemplation of Possible Litigation Litigation should always be contemplated when there is an effort made to establish rights consistency in presentation there is no out of many, one look for: promotion for the aspect to be protected diligence in policing Apply for registration sooner rather than later 89

Preclusion Note that the determination of the Board on issues of registerability of trade dress may be given preclusive effect in later litigation. See, B&B Hardware Inc. v. Hargis Industries, Inc., 135 S.Ct. 1293 (2015). 91

Functionality in Foreign Jurisdictions Why does it matter? Protection of product configuration is important to innovating companies It may be easier to change the word mark used in a foreign jurisdiction than to modify the product itself for sale in that jurisdiction It may be more important to the brand owners to keep the product off the market, whatever mark that product is sold under Product sales increasingly are cross border so that inconsistent results can disrupt sales and marketing. 92

Functionality: Recent and Interesting Cases Strafford Legal Webinar January 11, 2018 Janet Marvel Pattishall, McAuliffe, LLP jmarvel@pattishall.com 312-554-7957

Not functional 96

Functional 97

Kohler Co. v. Honda Giken Kogyo K.K., 2017 WL 6399147 (TTAB 2017) 98

Surveys in TTAB Functionality Cases Applicant s Survey Applicant s Control 99

In re Loggerhead Tools, Inc., 119 U.S.P.Q. 2d 1429 (TTAB 2016) Motion mark depicting the product configuration of a hand tool in which six rectangularshaped jaw-like elements of the circular head of a hand tool radially move in and out. 100

In re Loggerhead Tools, Inc. 101

Poly-America, L.P. v. Illinois Tool Works, Inc. Canc. No. 92056833 102

Poly-America, L.P. v. Illinois Tool Works, Inc. The mark is lined for the color red, however, no claim is made to color. Respondent argues that the Color Line Trademark became nonfunctional over time 103

In re Change Wind, Corporation, 123 USPQ2d 1453 (TTAB 2017) 104

In re Orbit Irrigation Products, Inc., 2017 WL 665720 (2017) (nonprecedential) 105

Robert Doyle v. Al Johnson s Swedish Restaurant & Butik, Inc., 101 USPQ2d 1780 (TTAB 2012) 106

Goats on a Roof The petition is devoid of any allegation that goats on sod roofs are essential to the use or purpose of restaurant or gift shop services. Functionality must be assessed with respect in connection with the goods and services in the registration. 107

Aesthetic Functionality Deere & Company v. Fimco, Inc., 239 F.Supp. 3d 964 (W.D. Kentucky 2017) 108

Aesthetic Functionality A mark is aesthetically functional if it puts competitors at a significant non-reputationrelated disadvantage. Sixth Circuit: comparable alternatives and effective competition tests. If either test is satisfied, the mark is aesthetically functional. 109

Blumenthal Dist., Inc. v. Herman Miller, Inc., 2016 WL 6948339 (C.D. Cal. 2016) Define trademarks with specificity: 110

EAMES TRADE DRESS The EAMES trade dress is the overall appearance / visual impression of a chair having (A) BASE DESIGN+ (B) ONE OR MORE SECONDARY FEATURES The solid-line drawings below are based on actual Herman Miller chair shapes, but are not meant to be exact reproductions of the dimensions of any given Herman Miller chair. The illustrations may not cover all variants of actual Herman Miller chairs that have been sold, and are intended to be examples only. A chair need not have the exact shapes of a Herman Miller chair to evoke the trade dress. The trade dress is evoked when the Base Design and the one or more Secondary Features are similar enough in appearance to a Herman Miller chair to evoke the overall appearance / visual impression of a Herman Miller chair. How many Secondary Features are required to evoke the trade dress depends on how closely the Base Design and Secondary Features match the actual shapes of the real-life EAMES chair. The more similar the Base Design and any given Secondary Feature are to the actual EAMES shapes, the fewer Secondary Features will be required to evoke the protected trade dress. 111

112

Damages 2011: Clearline Technologies. Ltd. v. Cooper B-Line, Inc., 948 F. Supp. 2d 691 (S.D. Tex. 2013). $5.8 million 2012: Mixed Chicks, LLC v. Sally Beauty Supply, LLC, Cas No. 8:11-cv-00452 (C.D. Cal. Nov. 29, 2012) $8 million 2017: Blumenthal Dist. Inc. v. Herman Miller, Inc., $3 million. 113

Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855 (7th Cir. 2010) Judge Easterbrook asks: Does it improve the product in some way so that consumers would pay to have it, rather than be indifferent or pay to avoid it? Utility patents (here, owned by a third party) are excellent cheat sheets for determining utilitarian functionality What about aesthetic functionality? 114

Specialized Seating v. Greenwich Industries, L.P., 616 F.3d 722 (7th Alternative Designs: The existence of many alternative designs did not mean that the plaintiff s design was nonfunctional. It was not the only way to do things but it represent[ed] one of many solutions to a problem. Cir. 2010) 115

Groeneveld Transport Efficiency, Inc. v. Lubecore International, Inc., 730 F.3d 494 (6th Cir. 2013) 116

Amid v. Medic Alert Foundation, 241 F.Supp. 3d 788 (S.D. Texas 2017) Alternative designs: The word essential is a term of art; [a] feature is essential to the use or purpose of a product if it serves any significant function other than to distinguish a firm s goods or identify their source. 117

THANK YOU Janet Marvel Pattishall, McAuliffe, LLP jmarvel@pattishall.com 312-554-7957 118