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Presenting a live 90-minute webinar with interactive Q&A
Functionality in Trademark
Prosecution and Litigation Protecting Trademarks/Trade Dress and Defending Against Infringement Claims: Functionality;
Aesthetic Functionality; Related Copyright and Design Issues; Cross-Border Enforcement
Today’s faculty features:
1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific
TUESDAY, OCTOBER 10, 2017
B. Brett Heavner, Partner, Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.
Roberta Jacobs-Meadway, Member, Eckert Seamans Cherin & Mellott, Philadelphia
Janet A. Marvel, Partner, Pattishall McAuliffe Newbury Hilliard & Geraldson, Chicago
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Functionality in Trademark
Prosecution and Litigation
Strafford Legal Webinar
October 10, 2017
Janet Marvel
Pattishall, McAuliffe, LLP
312-554-7957
5
Functionality Limits Trademark
Protection
Just as words and logos can serve a
trademark function, so can product design
and shape, packaging, color, and even non-
visual sensory indicia such as sounds and
smells.
6
Product Design Trade Dress
Cinnabon cinnamon bun
Viagra tablet
Porsche Herman
Miller
desk
chair
7
Supreme Court – TrafFix on
Functionality
A product feature is functional if:
• it is essential to the product’s purpose or use, or if it affects the cost or quality of the product
TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 32 (2001).
8
Why Functionality?
There can be no perpetual quasi-
patent right.
9
The determination that a
proposed mark is
functional constitutes an
absolute bar to
registration
10
Not functional
11
Functional
12
How to Determine Functionality
(1) the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;
(2) advertising by the applicant that touts the utilitarian advantages of the design;
(3) facts pertaining to the availability of alternative designs
(4) facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.
In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA 1982). See also, Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 1275, 61 USPQ2d 1422, 1426 (Fed. Cir. 2002).
13
Utility Patent
“A utility patent is strong evidence that the features therein claimed are functional. . . . [T]he 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.”
–TrafFix Devices, 532 U.S. at 30-31
14
Touting Product Features in
Advertising
• Talking Rain Beverage Co., Inc. v. South Beach
Beverage Co., 349 F.3d 601, 604 (9th Cir.
2003) - “Get a Grip.”
15
Alternative Designs
Where the design is essential to the use or
purpose or affects the cost or quality of the
product there is no need to proceed further
to consider if there is a competitive
necessity for the feature (i.e. you don’t have
to look at alternative designs)
16
Alternative Designs
In re Morton-Norwich Products, Inc., 671
F.2d 1332 (CCPA 1982)
NONFUNCTIONAL
17
Alternative Designs
[W]e conclude that the Court merely noted that once a
product feature is found functional based on other
considerations there is no need to consider 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 in the first place.
Valu Engineering v. Dexnord Corp., 278 F.3d 1268, 1276
(Fed. Cir. 2002).
18
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Aesthetic Functionality
Problems and Solutions
B. Brett Heavner
20 20
What is Aesthetic
Functionality?
21 21
What Is Aesthetic Functionality?
Aesthetic functionality prohibits granting
trademark rights for (non-utilitarian) features that
put competitors at a significant non-reputation
related disadvantage.
TrafFix Devices v. Marketing Displays, Inc., 532
U. S. 23 (2001)
22 22
What Is Aesthetic Functionality?
• What does that mean?
– The “Mark” is an attractive ornamental feature that competitors
might want to use
– The “Mark” is synonymous with the product itself (i.e., why
you would want to purchase it)
– The “Mark” expresses a sentiment that competitors may want
to express
23 23
What Is Aesthetic Functionality?—Classic Cases
• China Pattern – Attractive floral pattern not particularly associated with single
manufacturer
– Consumers purchased that china set because the pattern
appealed to them, not because it identified the manufacturer.
– Plaintiff manufacturer was perhaps trying to make up for lack
of copyright in the China pattern (court noted that copyright
claim was not raised).
Pagliero v. Wallace China Co., 198 F. 2d 339 (9th Cir. 1952)
24 24
What Is Aesthetic Functionality?—Classic Cases
• Black Color for Flower Boxes – Black already had aesthetic associations
• Luxury
• Funerals
• Halloween
– Competing Florists would need to be able to use Black boxes
to have appealing packaging in those cases.
In re Florists’ Transworld Delivery, Inc.,
2013 TTAB LEXIS 115 (TTAB Mar. 28, 2013)
25 25
What Is Aesthetic Functionality?—Classic Cases
• Architectural Feature—Decorative Roof Vent
– Vent shaped and colored to look like ceramic roof
tile.
– Advertisements describe roof vent as “functional in
design, camouflages the existence of vents, and is
aesthetically pleasing.”
– Competing builders would need to be able to use similar
design to have appealing roof on homes.
M-5 Steel Mfg, Inc. v. O’Hagin’s, Inc., 61 USPQ2d 1086 (TTAB 2001)
Roberta Jacobs-Meadway
Eckert Seamans Cherin & Mellott, LLC
October 10, 2017
The Intersection of Rights in Trade Dress/Product Configuration
M1691988
The trademark function
of trade dress provides one avenue of
protection of package and
product designs/configurations
M1691988
27
There are other forms of
IP protection which intersect with
trademark protection and in some
instances overlap, and in some
instances supplement, the protections
afforded under trade dress/unfair
competition law
M1691988
28
Consider as parade examples
the dresses involved in Walmart/Samara
and the shape of the Toblerone candy bar
M1691988
29
Copyright protection is available for
works of authorship.
These works include:
– sculptural works
– two dimensional art
– three dimensional sculptures
– as well as music and text
and audiovisual works
M1691988
30
Copyright protection is available for
useful objects only insofar as the work of
authorship is conceptually separable
from the useful object as a functional
device/item:
– A dress is a useful object, but the fabric
pattern or appliques are conceptually
separate and subject to copyright
protection
M1691988
31
Note, for copyright protection,
the work need not be unique or
distinctive and it need not even have
been used in commerce in
the ordinary course of business.
M1691988
32
For copyright, registration is a prerequisite
to suit but, registration is not required for the
rights to exist, and there is no substantive
examination in the nature of the examination
of trademark and patent applications.
M1691988
33
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”)
M1691988
34
The Copyright Claim in Walmart
Succeeded
M1691988
35
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.
M1691988
36
The same package may be subject to
protection under design patent and trademark
and copyright rights in the right circumstances.
M1691988
37
The overall package design could be subject to
design patent protection and trademark
protection.
The label and horse sculpture could be subject
to a copyright claim.
M1691988
38
Rights in the skull shape vodka container have been protected
against use of a similar container for tequila on a trade dress
infringement theory. Globefill Inc. v. Elements Spirits, Inc., No. 2:10-
cv-02034, (C.D. Cal. March 27, 2017).
Design patent infringement similarly might have been asserted if
there were a design patent. Copyright rights could also be claimed in
the skull sculpture.
M1691988
39
Applications for design patents are subject to
the same conditions as utility patents, although
the term of protection is shorter
(15 years as distinct from 20 years from
application filing for utility patents.)
M1691988
40
For design patents, unlike copyrights and
trade dress, registration is not a prerequisite
to protection.
For design patents, the issuance of a patent
is required for protection as distinct from
trade dress where registration is not required.
M1691988
41
For design patents, unlike trademarks/trade
dress, there is the prospect of monetary
damages for infringement which can be
significant and not subject to apportionment.
M1691988
42
Copyright and trade dress rights are equally
available in appropriate circumstances for
labeling and package design.
M1691988
43
Note that the owner of the copyright in a
product configuration or package design may
not be the same entity as the owner of the
trade dress rights. Similarly, the owner of the
design patent rights may be a different entity.
Each may have a separate claim for
infringement of its particular rights.
M1691988
44
Functionality in Foreign Jurisdictions
Outside the USA, functionality is recognized as a bar to
registration.
The meaning of the term and the interpretation of the
regulations differ from USA law.
M1691988
45
PROSECUTING TRADE DRESS
46
Why Register?
• Registered trade dress: prima facie evidence of validity.
Defendant has burden to prove functionality. 15 U.S.C.
§ 1115(a).
• Unregistered trade dress: “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.” 15 U.S.C. § 1125(a)(3).
47
Functionality in
USPTO Ex Parte Proceedings • 15 U.S.C. §1052(e)(5): A mark that “comprises any
matter that, as a whole, is functional” cannot be
registered.
• TMEP §1202.02(a)(iv): “The examining attorney must
establish a prima facie case that the proposed trade
dress mark sought to be registered is functional in order
to make and maintain the §2(e)(5) functionality
refusal.”
48
Supplemental Registration
• Available for terms that can be marks, but
for which the applicant cannot show
secondary meaning.
• Applicant has the burden to show that the
mark is not functional
49
In re Becton, Dickinson, 675 F.3d
1372 (Fed. Cir. 2012)
• Weighing of functional and non-functional features is “mandated.”
• Utility patent bars are not limited to claims.
• Design patent presumptively…indicates that the design is not functional.
50
In re Change Wind, Corporation, 123 USPQ2d 1453 (TTAB 2017)
51
In re Charles N. Van Valkenburgh,
97 USPQ2d 165454 (TTAB 2011)
“We do not find it necessary that the configuration designs for which the trademark protection is sought be “virtually identical to the invention described and claimed” in the patent or that the patent must “cover” all facets of the proposed marks. Instead we look to the features disclosed in the patent which have been incorporated into the present product designs and the teachings of the patent with respect to those features.”
52
Kistner Concrete Products, Inc. v.
Contech Arch Technologies, Inc. 97
U.S.P.Q.2d 1912 (TTAB 2011) • Patents establish
prima facie
functionality
• Damaging
advertising: “Curved
top surface sheds
water and salts to
increase life cycle
length”
53
Robert Doyle v. Al Johnson’s
Swedish Restaurant & Butik, Inc.,
101 USPQ2d 1780 (TTAB 2012)
54
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.
55
56 56
Prosecution Issues Relating to
Aesthetic Functionality
(“Merely Ornamental”)
57 57
Prosecution And Aesthetic Functionality
What can we learn from successes and failures at the PTO?
58 58
Prosecution Successes
• Polka Dot Pattern for kitchen cleanser – Drawing showed polka dot pattern on can for cleanser.
– Examiner’s refusal as “mere ornamentation” reversed
– Applicant used the pattern for years
– Applicant’s ads focused on polka dot theme
In re Swift & Co., 106 USPQ 286 (CCPA 1955)
59 59
Prosecution Successes
Perfect Example of Avoiding Mere
Ornamentation Refusal
There was no
evidence that any
competitor used
polka pattern on
labels, so no
competitive
disadvantage to
anyone.
PICK A POLKA
DOT slogan
highlighted
60 60
Prosecution Successes
• Pink color for fiberglass insulation
– Pink has no meaning in field and serves no utilitarian
function
– No competitors use or need to use pink
– Extensive advertising featuring pink
– Cartoon character pink panther
In Re Owens-Corning Fiberglas Corporation,
774 F.2d 1116 (Fed. Cir. 1985)
61 61
Prosecution Failures
• Repeating Pattern on hookahs – Applied to register repeating diamond pattern on the lower third of
device.
– Common in the industry to have colorful repeating pattern toward
bottom of devices
– Colors often identified flavors of hookah (utilitarian?)
– Advertisement states that the product is “designed to look great.”
– Repeating pattern used for only 4 years and not highlighted in
advertising, so no secondary meaning.
In re Fantasia Distribution, Inc.,
120 USPQ2d 1137 (TTAB 2016)
62 62
Prosecution Failures
• NO MORE RINOS!--Political Slogan – Applied to register for stickers, T-shirts, campaign buttons.
– Wording expressed well-known sentiment against moderate
republicans
– Consumers accustomed to seeing slogan from many different
sources (e.g., Café Press and Zazzle)
– Prominence suggests informational message, not TM.
– Competitors would need to be able to express same message. In re Thomas J. Hulting d/b/a No More RINOs! Enterprises,
107 USPQ2d 1175 (TTAB 2013)
63 63
Prosecution Failures
• Souvenir Designs Generally – Applied to T-shirts, bags, caps, plush toys.
– I “heart” is common in the souvenir industry worldwide.
– Tourists purchase because message helps them remember
their visit, not because it identifies a source.
– Use on hangtags (which is traditional TM use) is not enough to
overcome functionality of message.
– Competitors would need to be able to express same message.
D.C. One Wholesaler, Inc. v. Jonathan E. Chien,
120 USPQ2d 1710 (TTAB 2016)
64 64
Prosecution Failures
• Message on gift plate – Applicant failed to use YOU ARE SPECIAL TODAY in a
trademark manner
• Text of labels and advertising submitted did not appear to
contain TM symbol next to feature to show it is a “trademark.”
• Text of advertising/brochures did not appear to contain written
notice indicating that feature was claimed to be a “trademark”
owned by plaintiff.
• Pamphlet used “mark” as message not a source indicator: “The
perfect way to simply say…YOU ARE SPECIAL TODAY.” Held
not to be a mark for personalized plates In re Original Red Place Co., 223 USPQ 836 (TTAB 1984)
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.
M1691988
65
Differences in Registerability Outside the USA
EUTMR all of the essential characteristics of a shape
must perform a technical function
C-48/09 P, Philips, Lego Juris A/S v. OHIM
and Mega Brands, Inc. (CJEU, 14 Sept. 2010)
M1691988
66
Differences in Registerability Outside the USA
EUTMR availability of other shapes that perform the
same technical function is immaterial
M1691988
67
Differences in Registerability Outside the USA
EUTMR test is whether color or shape adds
substantial value other than as a source
indicator based on goodwill—if it does, the
shape is unregisterable.
M1691988
68
Configurations determined to be functional in the EU and
denied registration:
Rubik’s Cube puzzle
(Simba Toys, GmbH & Co. KG v.EUIPO, C-30/15 P (ECJ 2017)
Kitkat bar
(Societe des Produits Nestle, SA v. Cadbury UK Ltd., C-215/14
(ECJ 16-09-2015)
Lego basic brick
Lego Juris A/S v. OHIM, C-48/09 (ECJ 14-09-2010)
M1691988
69
In Mexico, under statute, the prohibition against protection of
functional configuration/designs is limited to three dimensional
products.
Such products are barred from protection if the
configuration is:
• a common shape for the product
• primarily functional
• devoid of original, distinguishing elements
See, Mexican Industrial Property Law, Article 90(111)
M1691988
70
Mexico (cont.)
Product configurations deemed entitled to protection
in Mexico:
• shape of a watch
• Johnny Walker bottle
M1691988
71
The “Substantial Value” Test is embodied
in law and regulations outside the EU;
in India, by way of example
M1691988
72
The India Trademark Act (1999) provides in Section 9(3):
A mark shall not be registered as a trademark if it consists
exclusively of:
- the shape of goods which results from the nature
of the goods themselves; or
- the shape of goods which is necessary to obtain a
technical result; or
- the shape which gives substantial value to the goods.
M1691988
73
The nature and extent of evidence required to
establish functionality varies with the jurisdiction.
Establishing Whether a Configuration
or Device is Functional (outside the US)
M1691988
74
Surveys are accepted in Canada to evidence whether or not
consumers recognize “functional” elements as source
identifying.
Canadian Tire Corp. v. Western Steel and Tube Ltd. 2015
TMOB 149 (2015).
Survey Evidence
M1691988
75
Expert Testimony
M1691988
Expert testimony can be used to establish
functionality outside the U.S. as well as in the U.S.
An expert may be an engineer or other specialist.
Canadian Generic Pharmaceutical Ass’n v. Glaxo
Group Ltd., 2013 TMOB 36 (2013).
Canadian Tire Corp. v. Western Steel and Tube Ltd.,
2015 TMOB 149 (2015).
76
Patents
Patents can be used to establish that a configuration
or feature is functional outside the U.S. as well as in the U.S.
See Guidelines for Examination in the Office Part B,
Examination, p. 85 (EUIPO).
Canadian Generic Pharmaceutical Ass’n v. Glaxo Group,
Ltd., 2013 TMOB 36 (2013).
M1691988
77
Canada has applied the doctrine of aesthetic functionality
only recently, looking to U.S. precedent, while noting that
the doctrine in Canada is not yet sufficiently developed.
Stork Market Inc. v. 1736735 Ontario, Inc. 2017 FC
779, T-1447-11 (2017-08-22)
(stork image on ‘lawn stork’ product held not primarily
functional)
Aesthetic Functionality as a Bar to
Protection Outside the USA
M1691988
78
Color Coding as Functional Product Attribute
Not Subject to Protection
Just as courts in the USA have recognized that color can
be functional (as well as not inherently distinctive)
jurisdictions outside the USA have similar holdings.
M1691988
79
Compare
Distrimedic Inc. v. Dispill, Inc. 2013 FC 1043 (2013-10-18)
(color coded medication is functional – colors indicate time
of day medication is to be taken);
and Procter and Gamble, Inc. v. Colgate Palmolive
Canada, Inc., App. No. 760,655 (CTO 2007-01-03)
(different colored stripes in toothpaste are not functional)
M1691988
80
Protection Against “Slavish Imitation”
There are countries in which product and packaging may
be protected against “slavish imitation” on the basis of
unfair competition.
M1691988
81
A number of EU countries will protect “well known” designs
against such imitation.
In particular: Germany, France and Austria permit such
action under unfair competition law.
Parade example: protection of Lego basic brick in
Germany.
M1691988
82
Asian Countries
Registration of product and package configurations are
permitted generally…
BUT
… such marks are difficult to register absent either an
accompanying word mark or evidence of substantial use.
M1691988
83
Utilitarian Functionality and
Litigation
84
Georgia-Pacific Consumer Products LP v.
Kimberly-Clark Corp.,
647 F.3d 723 (7th Cir. 2011)
85
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
86
Specialized Seating v. Greenwich
Industries, L.P., 616 F.3d 722 (7th
Cir. 2010)
Alternative Designs: The existence of many alternative designs did not mean that the plaintiff’s design was non-functional. It was not “the only way to do things” but “it represent[ed] one of many solutions to a problem.”
87
Groeneveld Transport Efficiency, Inc. v.
Lubecore International, Inc.,
88
89 89
Litigation And Aesthetic
Functionality
90 90
Litigation And Aesthetic Functionality
When has the defense of Aesthetic Functionality succeeded and when
has it failed?
91 91
Successful Use As A Defense
• Novelty Soap in the form of the Periodic Chart of
Elements cannot be protected as a trademark
– Periodic table is in the public domain
– Color of soap has meaning associated with elements (gold, silver,
copper, cobalt blue)
– Chemical symbols meant to be amusing and not source identifying
– Preventing other novelty soap makers from marketing chemistry
inspired soap could put them at a competitive disadvantage.
Bubble Genius v. Smith, 2017 WL 888251
(E.D.N.Y. March 6, 2017)
92 92
Successful Use As A Defense
• Trapezoidal shape of box for dolls • None of the advertisements mention trapezoidal shape doll box
or bring it to consumers attention as source identifier.
• Court suggests that container shapes are generally aesthetically functional [perhaps an over-statement?]
• Competitors should be free to use any box shape where there is no specific association with one manufacturer.
Mattel, Inc. v. MGA Entertainment, 782 F. Supp.2d 911 (C.D. Cal. 2011)
93 93
Successful Use As A Defense
• Betty Boop Character on poster • Heirs of cartoonist sued poster maker for unauthorized use
of character
• Heirs failed to submit accurate chain of title for TM and copyrights to character, and had uneven prior enforcement.
• Poster maker alleged “defensive aesthetic functionality,” namely that character did not serve as a trademark in the manner defendant used it.
• So, even if plaintiff had TM rights, defendant’s use was merely aesthetically functional (to decorate poster).
Fleischer Studios Inc. v. A.V.E.L.A., Inc., 636 F,3d 1115 (9th Cir. 2011)
94 94
Successful Use As A Defense
• University name on unauthorized merchandise • Name and emblem of University used on clothing without license.
• Court held defendant’s use to be aesthetically functional based on emblem’s intrinsic value to show support for the University
• Consumers did not purchase merchandise because they believed it was manufactured by the University [Huh?].
• Complicating bad fact: Pitt allowed defendant to use emblem for 47 years, and even sold defendants product in the bookstore.
University of Pittsburgh v. Champion Products, Inc.,
566 F. Supp. 71 (w.D. Pa. 1983)
95 95
Successful Use As A Defense ?
• Fleisher and Pitt have scary results • At odds with most decisions
• Most state that a defendant cannot claim a competitive disadvantage of not being able to use a design or feature that is tied to the reputation or is associated with someone else.
Au-Tomotive Gold, Inc. v. Volkswagen of Am. Inc., 457 F.3d 1062 (9th Cir. 2006)
(rejecting aesthetic functionality claim regarding defendant’s non-trademark use of Volkswagen mark on keychain to show appreciation of automobile manufacturer)
96 96
Successful Use As A Defense?
• Red Sole For Women’s Shoes • Designer Christian Louboutin sought to enforce rights
against ALL shades of red on shoe soles.
• Louboutin sought to enforce against YSL monochromatic shoe where sole is clearly not functioning as trademark for YSL.
• YSL claimed red sole to be aesthetically functional and thus not protectable
97 97
Successful Use As A Defense?
Louboutin makes unfortunate admissions that the mark is primarily aesthetic
• red was attractive because it gave shoes “energy”
• red was “sexy”
• red attracts men
• color selection is a significant aspect of fashion.
98 98
Successful Use As A Defense?
Original decision (scary):
In fashion industry, color serves an aesthetic function not present in other industries. Court held that color red cannot function as a trademark despite registrations and public recognition of unique red sole.
Christian Louboutin S.A. v. Yves Saint-Laurent America Holding, Inc., 778 F. Supp.2d 445 (S.D.N.Y. 2011)
99 99
Successful Use As A Defense?
Appeal (better):
Second Circuit overturned as contradictory to Qualitex. Recognized that Louboutin's red outsole had acquired sufficient secondary meaning but limited the trademark protection to designs in which the red outsole contrasts in color with the remaining parts of the shoe.
Christian Louboutin S.A. v. Yves Saint-Laurent America Holding, Inc., 696 F.3d 206 (2d Cir. 2012)
100 100
Successful Use As A Defense?
• Green Color on Farm Equipment • Court found color green to be aesthetically
functional because farmers prefer to match their loaders to their tractor.
• defendant manufacturer of loaders would be at a competitive disadvantage by not being able to paint loaders green to match plaintiff’s tractors
Deer & Co., v. Farmhand Inc., 721 F.2d 253 (8th Cir. 1983)
101 101
Unsuccessful Use As A Defense
• Green/Yellow Color on Farm Equipment • Revisits earlier 35-year-old decision based on more recent
views of doctrine
• Defendant must show a non-reputational disadvantage now.
• Merely because color combination is appealing does not automatically make it aesthetically functional
• Defendant could have used other color combinations that would complement Plaintiff’s color scheme.
• The reason Defendant wants to use color scheme is because it is associated with Plaintiff.
• Aesthetic functionality defense fails
Deer & Co., v. FIMCO Inc, 239 F. Supp. 3d 964 (W.D. KY. 2017)
102 102
Unsuccessful Use As A Defense
Red Dripping Wax Weal for bourbon whiskey • Defendant asserted seal was aesthetically functional
• Court rejected the defense on the following grounds:
• Wax seal highlighted prominently in advertising
• Widespread press discussion of Wax seal as mark.
• Mark was registered with the USPTO
• Defendant had other sealing options
• Defendant could choose other color
• No competitive disadvantage
Maker’s Mark Distillery v. Diageo North America,
679 F.3d 410 (6th Cir. 20123)
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Unsuccessful Use As A Defenses
• Repeating Interlocking “G” Pattern for fashion items
• Defendant asserted pattern was aesthetically functional
• Court rejected this argument on the following grounds:
• Fashion consumers use this type of design as a source identifier
• Record shows pattern is a well-known source identifier for Plaintiff
• Well-organized and documented licensing program
• Active policing program
Gucci America Inc. v. Guess ?, Inc.,
868 F. Supp. 2d 207 (S.D.N.Y. 2012)
Illustrative Cases –
Candy Bars and High Heels
Toblerone
Louboutin
Swiss Supreme Court affirms decision of Administrative
Court denying protection to red sole mark for ladies’
footwear.
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Louboutin Application was based on a French
filing
Registrations elsewhere were not persuasive
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Basis of decision in Switzerland:
red color of the sole would be perceived as a
decorative element and so not recognized as
a trademark.
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The failure to register in one jurisdiction does
not preclude protection in other
jurisdictions.
See: Louboutin cases (EU)
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Louboutin brought action against Van Haren Schoenen B.V. The Hague Court found infringement based on sale of dark-colored high-healed shoes with red soles. The finding was appealed. Van Haren argued on appeal that the asserted mark was invalid under Article 2.1(2) of the Benelux Convention on Intellectual Property which excludes from registration:
signs which consist exclusively of: i) the shape which results from the nature of the goods themselves; ii) the shape of goods which is necessary to obtain a technical result; iii) the shape which gives substantial value to the goods.
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The Advocate General has issued an opinion which addresses
the red sole in terms of color and configuration and functionality.
Specifically:
“Louboutin’s trademark did not consist of a colour per se;
rather, it was classified as consisting of the shape of the goods
and seeking protection for a colour in relation to that shape.”
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“The presence of a colour on the surface of goods can be
regarded as a characteristic reflected in the shape of the goods;
that a colour can be an essential practical characteristic of
certain goods, such that the monopolization of colour in relation
to an element of the shape of the goods would remove the
freedom of competitors to offer goods incorporating the same
functionality; and that, finally, the functionality of a colour may
emerge from its positioning on the goods such that it is essential
that the two aspects – shape and colour – be examined
together.”
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Take-Aways
• Avoid “Post Hoc” Trade Dress.
• Be Careful with your Drawing See Becton-Dickinson,
supra, Ogosport LLC. v. Maranda Enterprises LLC, 2012
WL 683111 (E.D. Wis. March 2, 2012), Mag Instrument,
Inc. v. Brinkmann Corp., 96 USPQ2d 1701 (TTAB 2010),
aff’d per curiam, 2011 WL 5400095 (Fed. Cir. Nov. 9,
2011).
• How many applications should you file?
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A Case Study on Doing it Right?
• purplepill.com
• “Ask your doctor if the purple pill is right
for you”
• Purple Plus Program
• 1-888-purplepill
112
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Aesthetic Functionality
Best Practices
114 114
Lessons Learned
Five Common Aesthetic
Functionality Mistakes
1. Failure to Treat Purported Mark As A Trademark
2. Extolling the Aesthetic Character of Purported Mark
3. Failure to Adequately Document Trademark Rights
4. Long Term Failure To Enforce Trademark Rights
5. Choosing Purported Mark With Pre-Existing
Aesthetic Associations
6. Using trademark law to revive an expired copyright
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Lessons Learned
Use Copyright Protection
(Would have been especially Betty Boop case)
• Benefits
– No requirement of “source identifier”
– Can still be protected if it “puts competitor at a disadvantage”
– Exists from creation of work/character/graphics
– Easy to register
– Can be combined with trademark rights in licenses and merchandising agreements (recommended)
Lessons From the Lego Wars
1. What is subject to protection varies between jurisdictions
2. Timing is important
What is the length of time of substantially exclusive
use
What is the status of patent rights, if any
3. Victory can be Pyrrhic
Just as there is little incentive to challenge a generic
mark
There may be little incentive to raise challenge on
functionality
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Best Practices
Consider:
• in what markets products will be made;
• in what markets products will be sold.
Consider:
• Ownership
• Registration requirements, if any
• Priority
• Marking requirements, if any
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