1. Law 227: Trademarks & Unfair Competition Trade Dress June 30, 2009 Jefferson Scher

2. TM & Unfair Comp — Day 10 Agenda Trade Dress  What is it?  Requirements for Protection  Distinctiveness  Functionality  LOC Analysis  Registration as a trademark

3. Lanham Act Section 43(a) False Designation of Origin, etc. Section 43(a)(1) encompasses many potential causes of action  (A) Likelihood of confusion (FDO)  For unregistered marks and trade names  For “trade dress,” whether registered or unregistered  (B) False advertising  Materials in Chapter 8.B

4. Lanham Act Section 43(a) Trade Dress What is “trade dress”? How, if at all, does it differ from a trademark?

5. Lanham Act Section 43(a) Trade Dress Distinctiveness  Abercrombie spectrum  Seabrook: is the asserted dress —  A common basic shape or design; unusual or unique in the field; a mere refinement of commonly used ornamentation  Capable of creating a distinct commercial impression (separate from wording on package)  Secondary Meaning

6. Lanham Act Section 43(a) Trade Dress Nonfunctionality  A feature is functional if any are true —  Essential to use or purpose of the article  Affects cost or quality of the article  Protection would impose a “significant non- reputation-related disadvantage” on others –No comparable alternatives –Protection would hinder effective competition

7. Lanham Act Section 43(a) Trade Dress — Distinctiveness — Cases Two Pesos v. Taco Cabana  Dress can be inherently distinctive Wal-Mart v. Samara Brothers  Dress can be inherently distinctive for packaging (and Mexican restaurants)  Dress cannot be inherently distinctive for product designs (default if in doubt) “one-piece seersucker outfits with appliqués of hearts, flowers, fruits and the like”

8. Lanham Act Section 43(a) Trade Dress — Functionality — Cases TrafFix Dev. v. Marketing Displays  Works better = functional, even if there are alternatives (patent = works better) Tie Tech, Inc. v Kinedyne Eco Manufacturing v. Honeywell Qualitex v.Jacobson Products Aesthetic functionality?

9. Lanham Act Section 43(a) Trade Dress — Infringement and Relief Best Cellars cases  Dress asserted: 14 elements, including:  8 taste categories designated by (1) a word, (2) a color, and (3) an icon;  Display system creating a backlit “wall of wine,” in light wood and stainless steel;  Limited number of wines, mostly value- priced, to appeal to wine novices

10. Lanham Act Section 43(a) Trade Dress — Infringement and Relief Best Cellars cases  Grape Finds  Extensive copying, limited differences, same overall “wall of wine” appearance  Wine Made Simple  Significant copying, but also significant differences, particularly in materials and signage; Bacchus name quite different

11. Lanham Act Section 43(a) Trade Dress — Infringement and Relief Store brands/private label copies  Conflicting results  Conopco v. May Dept Stores  McNeil Nutraceuticals v. Heartland  Are the courts getting it right in these cases?

12. Lanham Act Section 43(a) Trade Dress — Infringement and Relief Conopco v. May Dept Stores  Can consider lack of actual confusion after long concurrent use  10 years coexistence with copy of previous Vaseline Intensive Care dress  Precedent supports it: Oreck, 17 months {seems short to me}; Amstar, 15 years; Life Industries, period not stated

13. Lanham Act Section 43(a) Trade Dress — One More Case Kendall-Jackson v. E&J Gallo  Leaf design  Distinctiveness analysis  Similarity analysis  Bottle configuration: California look  Functional?  Descriptive?

14. Federal Trademark Registration Trade Dress as Trademark Is there a trademark here?

15. Federal Trademark Registration Trade Dress as Trademark Is there a trademark here?

16. Federal Trademark Registration Trade Dress as Trademark Examiner will be concerned with at least three issues (see TMEP §1202.02)  Distinctiveness  Especially for product configurations  Functionality  Expect to be asked for any related patents and advertising materials  Use as a trademark

17. Federal Trademark Registration Functionality In re Howard Leight Indus.  Functionality analysis In re Gibson Guitar  Functionality analysis In re Slokevage  Distinctiveness analysis  Functionality issue?

18. TM & Unfair Comp — Up Next Topics and Reading for Day 11 Dilution — Thursday, July 2nd  Ch. 9, pp. 619-635, Supp. pp. 57-76  Ch. 9, pp. 640-661  Ch. 9, pp. 613-619 (opt)