1. Establishing Protection Intro to IP – Prof. Merges 3.15.2012 [originally scheduled for 3.12.2012]

2. Categorizations Trademark TENDER VITTLES ( cat food ) ROACH MOTEL ( roach trap ) CHAP STICK ( lip balm ) VISION CENTER ( optical store ) BEER NUTS ( snack food ) FAB ( laundry detergent ) BOLD ( laundry detergent ) STRONGHOLD ( nails ) CITIBANK ( banking services ) NUTRASWEET ( sweetner ) Category Descriptive Suggestive Descriptive Arbitrary Suggestive Descriptive

3. Statutory basis: registration of descriptive marks Except as expressly excluded in paragraphs... of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce. -- Lanham Act sec. 2f, 15 USC 1052(f)

4. Trade Dress & Product Design Trade DressProduct Design

5. Trade Dress Protection Lanham Act § 43(a), 15 USC 1125(a) Any person who shall affix, apply, … or use in connection with any goods or services … a false designation of origin …, and shall cause such goods or services to enter into commerce … shall be liable to a civil action ….

6. Two Pesos v. Taco Cabana 505 U.S. 763 (1992) Taco Cabana Trade Dress

10. Word MarkTACO CABANA Goods and ServicesIC 042. US 100 101. G & S: FAST FOOD RESTAURANT SPECIALIZING IN MEXICAN FOOD. FIRST USE: 19870615. FIRST USE IN COMMERCE: 19870615 Standard Characters Claimed Mark Drawing Code(4) STANDARD CHARACTER MARK Serial Number85531206 Filing DateFebruary 1, 2012 Prior Registrations 1581970;1778181;1978245;AND OTHERS

11. Serial Number85531206

12. Mark Drawing Code(3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS Design Search Code26.03.17 - Concentric ovals; Concentric ovals and ovals within ovals; Ovals within ovals; Ovals, concentric 26.03.21 - Ovals that are completely or partially shaded Serial Number85234033 Filing DateFebruary 4, 2011

13. IPNTA 5 th p 764 n. 1 Trade dress’ is the total image of the business. Taco Cabana’s trade dress may include the shape and general appearance of the exterior of the restaurant, the identifying sign, the interior kitchen floor plan, the decor, the menu, the equipment used to serve food, the servers’ uniforms and other features reflecting on the total image of the restaurant.

14. Two Pesos (cont’d) Findings of the District Court – Taco Cabana has an identifiable trade dress – The trade dress is non-functional – The trade dress is inherently distinctive – The trade dress has not acquired secondary meaning

15. Sec. 1114 (Lanham Act sec. 32). Remedies; Infringement; Innocent Infringement by Printers and PublishersSec. 1114 (Lanham Act sec. 32) (1) Any person who shall, without the consent of the registrant — (a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark....

16. [I]t is common ground that §43(a) protects qualifying unregistered trademarks and that the general principles qualifying a mark for registration under §2 of the Lanham Act are for the most part applicable in determining whether an unregistered mark is entitled to protection under §43(a) – IPNTA 5 th ed p. 765

17. IPNTA 5 th at 767 The protection of trademarks and trade dress under §43(a) serves the same statutory purpose of preventing deception and unfair competition. There is no persuasive reason to apply different analysis to the two.

18. Sec. 1125 (Lanham Act sec. 43). (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, … or any false designation of origin, … which — (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods... Shall be liable

19. Inherently Distinctive?

20. Defendant’s argument Factual finding: No secondary meaning has been established – In the relevant market – Consumers do not associate this trade dress with a unique source

21. Supreme Court: Irrelevant Inherently distinctive trade dress is as protectible as inherently distinctive words or symbols No basis in statute to distinguish trade dress from other types of trademarks

22. Qouting 5 th Cir with approval “… the legal recognition of an inherently distinctive trademark or trade dress dress acknowledges the owner’s legitimate proprietary interest in its unique and valuable informational device...” – IPNTA 5 th at 766

23. What about “depletion” argument? Sup Ct: We always have functionality... Functional trade dress cannot be protected

24. Korean Barbecue

25. What about product designs? Same issues? Any distinctions?

26. Inherently Distinctive?

27. Jeans Pocket design – secondary meaning must be proven

28. Walmart v Samara Children’s clothing designs Product design as opposed to packaging or trade dress What are the requirements for establishing protection for trade dress?

29. Samara Clothing Design

30. IPNTA 5 th 771 These courts have assumed, often without discussion, that trade dress constitutes a ‘‘symbol’’ or ‘‘device’’ for purposes of the relevant sections, and we conclude likewise. ‘‘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 Co. v. Jacobson Products Co., 514 U.S. 159, 162 (1995).

31. Nothing in §2, however, demands the conclusion that every category of mark necessarily includes some marks ‘‘by which the goods of the applicant may be distinguished from the goods of others’’ without secondary meaning—that in every category some marks are inherently distinctive.

32. It seems to us that design, like color, is not inherently distinctive. The attribution of inherent distinctiveness to certain categories of word marks and product packaging derives from the fact that the very purpose of attaching a particular word to a product, or encasing it in a distinctive packaging, is most often to identify the source of the product.

33. Trade dress in a single color or in product shape or design can never be inherently distinctive.

34. Wal-Mart “Competition is deterred, however, not merely by successful suit but by the plausible threat of successful suit, and given the unlikelihood of inherently source-identifying design, the game of allowing suit based upon alleged inherent distinctiveness seems to us not worth the candle”

35. Rule against inherent distinctiveness Designed to facilitate SJ in favor of defendant/trade dress copier NOT the same as saying that trade dress may never be registered But – must prove secondary meaning

36. And in Wal-Mart, we were careful to caution against misuse or over- extension of trade dress. We noted that ‘product design almost invariably serves purposes other than source identification.’ TrafFix Devices, Inc. v. Marketing Displays, Inc. 532 U.S. 23 (2001)

37. Consumer predisposition “[W]e think consumer predisposition to equate the feature with the source does not exist. Consumers” do not associate product design with source, but with product features. -- IPNTA 5 th 772

38. “Consumers should not be deprived of the benefits....” Difficult to design a test for inherent distinctiveness Functionality should also be a defense in relevant cases

39. Err on the side of... Caution: classify trade dress as product design Do not allow inherent distinctiveness in a close case

40. Aromatique, Inc. v. Gold Seal, 28 F.3d 863, 31 U.S.P.Q.2d 1481, 1483 (8th Cir. 1994): “The difference between trade dress and trademark is no longer of importance in determining whether trade dress is protectable by federal law. … Indeed, trade dress may now be registered on the Principal Register of the PTO.”

41. Registered: Thermostat Design

42. Registration No.: 1622108 Filed: 1986-05-09 Registered: 1990-11-13 Published: 1988-11-29 Renewal Accepted: 2000-11-13 Will Expire: 2010-11-132000-11-13 First Used: 1952-00-00 OG Renewal: 2010-07-132001-03-06

43. Goods - Services: (INT. CL. 9) THERMOSTATS International Class(es): 09 (Electrical and scientific apparatus) First Used: 1952-00-00 HONEYWELL INTERNATIONAL INC. 101 COLUMBIA ROAD MORRISTOWN, NEW JERSEY 079622245 Affidavit Section: REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED Affidavit Date: 2010-06-04

44. Zippo Lighter Design

45. Trademark Reg. No. 1,959,544 (Reg. March 5, 1996)

46. Beebe, Cotter, Lemley, Menell & Merges