Charles Colman, "Aesthetic Functionality and Genericism" (Jan. 10, 2014)

8/13/2019 Charles Colman, "Aesthetic Functionality and Genericism" (Jan. 10, 2014)

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2014 Charles Colman, Acting Assistant Professor at NYU School of Law

This presentation grew out of the authors work on a short essay, The TTABs Dangerous Dismissal of Doubt (Harv. J.L. & Tech., Nov. 12, 2013; available for download at http://ssrn.com/abstract=2349076).

The presentation was first given at NYUs Tri-State IP Workshop on Jan. 10, 2014; it is the basis for a full-length work-in-progress on the same topic. Offers to publish the finished article are, of course, welcome.


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HOW IS GENERICISM DETERMINED FOR WORD MARKS?

A generic mark refers to the genus or class of which a particularproduct is a member, and such a mark can never be protected.AleHouse Management v. Raleigh Ale House, 205 F.3d 137, 140 (4th Cir.

2000) (quotingAshley Furniture Indus., Inc. v. Sangiacomo N.A. Ltd.,187 F.3d 363, 369 (4th Cir. 1999)).

AHM has failed, however, to present any evidence that ale house does not refer

to institutions that serve both food and beer.... On the other hand, Raleigh AleHouse presented extensive evidence, including citations to newspapers,dictionaries, books, and other publications, that the term ale house is generic,referring to several types of facilities. See Glover v. Ampak, Inc., 74 F.3d 57, 59(4th Cir. 1996) (endorsing use of similar sources of evidence to establish that a

term is generic).


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THE GENUS TEST IS NOT AN OBJECTIVE LINGUISTIC INQUIRY

SeeDesai Rierson,Confronting the Genericism Conundrum, 28 CARDOZOL. REV.1790, 1825, 1827 (2006)

Specifically put in the context of the primary significance test, the question

becomes whether the primary significance of the trademark is to describe thetype of productrather than the producer.

Although the test may seem simple in its articulation (once one gets past the

difficulty of making a trademark talk and answer questions), it has proved difficult

in application.

In many cases . . . words or terms are found to be generic ( i.e., the name of aproduct class) when, at least to the naked eye, they appear to be descriptivethatis, they describe the attributes of the good or service to which they are attached:

e.g., Lite Beer, Filipino Yellow Pages, Blinded Veterans Association, Warehouse

Shoes.


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WORD-MARK GENERICISM IS ACTUALLY

A PROXY FOR LINGUISTIC FUNCTIONALITY

SeeDesai Rierson,Confronting the Genericism Conundrum, 28 CARDOZOL. REV. 1790, 1819 (2006)Modern courts refuse to extend trademark protection to generic words or terms because they are concernedthat doing so would negatively impact competition.

BOTTOM LINE: Although the genericism doctrine is intended to avoid the anticompetitive effects of granting asingle party exclusive rights to words or phrases that are too descriptive, trademark-law doctrine does notrequire trademark-infringement defendants or the USPTO to conduct an empirical evaluation of the actual orlikely effect on marketplace competition. Genericism serves as a common-sense-based proxyfor a linguisticfunctionality inquiry that courts would otherwise have to make. No such doctrine exists. Trademark lawdoes not require sellers of green apples to provethat a competitors exclusive rights in the phrase greenapples for such goods would negatively impact competition, because we all share that intuition.

But see Rosetta Stone Ltd. v. Google, Inc., 730 F.Supp.2d 531, 546 (E.D. Va. 2010), overturned in relevant part, 676 F.3d 144 (4th Cir. 2012) Interms of encouraging competition, the keywords also serve an advertising function that benefits consumers who expend the time and energy tolocate particular information, goods, or services, and to compare prices. Google's search engine provides consumers with a highly useful meansof searching the internet for products and competitive prices. If Google is deprived of this use of the Rosetta Stone Marks, consumers would losethe ability to rapidly locate potentially relevant websites that promote genuine Rosetta Stone products at competitive prices. Consequently,because the Court is persuaded that Google's par ticular use of trademarked keywords as triggers for paid advertisements is functional, and noprohibition exists otherwise, the Court holds that the functionality doctrine prevents a finding of infringement.


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SOME COURTS HAVE TRIED TO APPLY THE GENUS TEST

TO DETERMINE WHEN PRODUCT-DESIGN TRADE DRESS IS GENERIC

See,e.g.,Yurman Design Inc. v. PAJ Inc., 262 F.3d 101, 115 (2d Cir. 2001):[E]ven a showing of secondary meaning is insufficient to protect product designsthat are overbroad or genericthose that refe[r] to the genus of which theparticular product is a species.Jeffrey Milstein, 58 F.3d at 32, 33 (quoting TwoPesos, 505 U.S. at 768). This check on monopoly rights limits all marks, but for

two reasons it is particularly important in cases of product design.

How does one determine when product-design trade dress refers to thegenus of which the particular product is a species? Clearly, one cannotenforce trade dress rights in a shirt-shaped shirt, but beyond that...


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SOME COURTS HAVE RECOGNIZED THAT THE GENUS TEST IS INAPT

Ale House Management Inc. v. Raleigh Ale House Inc., 205 F.3d 137, 142 (4thCir. 2000):As with generic trade names, the trademark laws do not protect a generic tradedress. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 76870(1992)

(upholding as protectable trade dress the distinctive, nonfunctional appearance

of a restaurant).Trade dress should be considered generic if well-known orcommon, a mere refinement of a commonly-adopted and well-known form ofornamentation, or a common basic shape or design, even if it has not beforebeen refined in precisely the same way.Ashley Furniture, 187 F.3d at 371(internal quotation marks omitted). On the other hand, trade dress is not generic

if it is unique or unusual in the particular field at issue. Id.(internal quotation

marks omitted).


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DISCUSSION OF GENERIC TRADE DRESS QUICKLY

BLEEDS INTO TALK OF (AESTHETIC) FUNCTIONALITY

Fun-Damental Too Ltd. v. Gemmy Industries Corp., 111 F.3d 993, 1000 (2d Cir. 1997) (pre-Samara Bros.)

Yet trade dress protection has limits. A trade dress that consists of the shape of a product that conforms to awell-established industry custom is generic and hence unprotected.. . . [A] specific trade dress must still beevaluated to determine whether it is so distinctive as to point to a single source of origin and thereby beentitled to Lanham Act protection.

Malaco Leaf AB v. Promotion In Motion Inc., 287 F.Supp.2d 355, 363 (S.D.N.Y. 2003)

[D]efendants argue that Malacos product configuration in its Swedish Fish is unprotectable because it is (1)generic, and (2) functional. Defendants argue that Malacos Swedish Fish product design is not entitled toprotection because it is a generic, common design that is used extensively by third parties in theconfectionery industry. (Def.s Br. at 4.) This Court agrees that the generic design of Malacos Swedish Fish,along with extensive third party use of the design and Malacos failure to police infringing third-party uses,renders the Swedish Fish design generic and unprotectable.. . . [Further,] the other product design featuressuch as the head, tail, scale pattern and eye are necessary attributes to portray any fish. Notably, nearlyevery third party marketing gummy fish-shaped candy portrays identical features. (Def.'s Ex. C.) Therefore,since Malaco's product design trade dress involv[es] an aesthetic feature, the dress is ... functional [since]the right to use it exclusively would put competitors at a significant non-reputation-related disadvantage.


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WHAT ABOUT WHEN THERE IS NO INDUSTRY CUSTOM?

THERES THE RUB.

Ale House Management v. Raleigh Ale House, 205 F.3d 137, 142 (4th Cir. 2000):

Trade dress should be considered generic if well-known or common, a mere

refinement of a commonly-adopted and well-known form of ornamentation, or acommon basic shape or design, even if it has not before been refined inprecisely the same way.

How does one determine whether a shape or design is common or basic? Withno industry custom to consult, courts must assess the likely anticompetitiveeffect of recognizing particular trade-dress rights. At least in recent yearsjudgeshave often tried to do so under the rubric of aesthetic functionality.


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FRANCO & SONS, INC. V. FRANEK, 615 F.3d 855, 860, 861 (7th Cir. 2010)

The composition of the relevant market matters. But the more rudimentary and general the element- all six-sided shapes rather than an irregular, perforated hexagon; all labels made from tin ratherthan a specific tin label; all shades of the color purple rather than a single shade - the more likely itis that restricting its use will significantly impair competition. Franek's towel is of this ilk. He hastrademarked the configuration of a round beach towel. Every other beach towel manufacturer isbarred from using the entire shape as well as any other design similar enough that consumers arelikely to confuse it with Franek's circle (most regular polygons, for example).


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FRANEK(CONT.)

The chief difficulty is distinguishing between designs that are fashionableenough to be functional and those that are merely pleasing.There are only so many geometric shapes; few are both attractive and simpleenough to fabricate cheaply. Cf. Qualitex, 514 U.S. at 168-69, 115 S.Ct. 1300(functionality doctrine invalidates marks that would create color scarcity in a

particular market). And some consumers crave round towels-beachgoers who

prefer curved edges to sharp corners, those who don't want to be square, and

those who relish the circle's simplicity.A producer barred from selling such towelsloses a profitable portion of the market. The record does not divulge much onthese matters, but any holes in the evidence are filled by the TrafFixpresumptionthat Franek's mark is functional, a presumption he has failed to rebut.


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WHEN/HOW CAN THE RECORD DIVULGE MUCH ON AESTHETIC

FUNCTIONALITY WHERE INDUSTRY CUSTOM IS UNAVAILING?


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2012: THE SECOND CIRCUIT SPLITS THE BABY

The Second Circuit rejected District Court Judge Marreros ruling that, because ofaesthetic functionality, all colors must remain available to fashion designers inorder to compete effectively in their industry. Marrero had, in effect, created anindustry-specific proxy for generic product-design trade dressbut by groundinghis ruling in the controversial aesthetic functionality doctrine, he caused abacklashand, the Second Circuit determined, ran afoul of Qualitex.The presiding Second Circuit panel wrote: Because aesthetic function andbranding success can sometimes be difficult to distinguish, the aestheticfunctionality analysis is highly fact-specific. But in cases where there is noindustry custom to examine, what factscan realistically be adduced?Only because the registration was not yet incontestable, the Second Circuit wasable to find that the record fails to demonstrate that the secondary meaning ofthe Red Sole Mark extends to uses in which the sole does not contrast with theupperin other words, when a red sole is used on a monochromatic red shoe.


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IN RE BOTTEGA VENETA INTL S.A.R.L.


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IN RE BOTTEGA VENETA (CONT.)

In its application, filed in June 2007, Bottega Veneta stated: The mark consists of Interlaced wovenstrips of leather arranged in a distinctive repeating pattern that is used over all or substantially all ofthe goods. By the time the TTAB ruled on the matter, Bottega had agreed to limit the scope to [a]mark consist[ing] of a configuration of slim, uniformly-sized strips of leather, ranging from 8 to 12millimeters in width, interlaced to form a repeating plain or basket weave pattern placed at a 45-degree angle over all or substantially all of the goods.

The TTAB ruled:In order to show a competitive need for the applied-for weave design, the examining attorney hasmade of record over 1500 pages of evidence, consisting primarily of advertisements from third-partywebsites depicting items having weave designs. The bulk of this evidence relates to the use ofweave designs on handbags and shoes.In cases involving other grounds for refusal, there is a policy that doubt should be resolved in favor ofpublication of the mark. . . . In a case involving the issue of aesthetic functionality, where thequestion to be resolved is competitive need, we think that adopting this principle is particularlyappropriate, since publishing the mark will allow competitors to come forward to assert and provethat they do have a competitive need to use the proposed mark if, indeed, they have such a need.


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WHAT WOULD THIS REGISTRATION LIKELY COVER?


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WHAT ELSE DOES BOTTEGA VENETA WANT TO OWN?


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GENERIC TRADE DRESS: SHAPE, COLOR, TEXTURE

Product-design trade dress should be considered generic if:(1) A single color covers all, or substantially all, of the consumer- oraudience-facing portion of the product; or

(2) A single basic or regularized shape makes up all, or substantiallyall, of the consumer- or audience-facing portion of the product; or

(3) A single texture (defined to include material, regular patterns,etc.) covers all, or substantially all, of the consumer- or audience-facing portion of the product.This test would serve as a proxy for aesthetic functionality,

avoiding doctrine distortion, undue evidentiary burdens, controversy.


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REMINDERS

My framework is designed to be relatively narrow; that product-design trade dress is not generic does not mean it is not/does not:(1) merely ornamental (per Trademark Office and some federal

case law);

(2) otherwise require secondary meaning (per Samara Bros.);(3) a poor candidate for a likelihood of confusion; or(4) aesthetically functional


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Charles Colman, "Aesthetic Functionality and Genericism" (Jan. 10, 2014)

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