Non-Traditional Trademarks: Sound, Color, Shape, Scent and More Establishing, Registering and Enforcing Non-Conventional Marks Today’s faculty features: 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific 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. 10. WEDNESDAY, FEBRUARY 8, 2012 Presenting a live 90-minute webinar with interactive Q&A Stephen R. Baird, Shareholder, Winthrop & Weinstine, Minneapolis Linda K. McLeod, Partner, Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C. Stephen Feingold, Partner, Kilpatrick Townsend & Stockton, New York
Transcript
Non-Traditional Trademarks:
Sound, Color, Shape, Scent and More Establishing, Registering and Enforcing Non-Conventional Marks
• Martin Lindstrom, a sensory branding pioneer and author of the
authoritative work BRAND sense, makes a strong business case for
investing in the creation of five-dimensional brands, those engaging each
of the senses: sight, sound, taste, smell and touch.
• Lindstrom says sensory branding adds important dimensions to a brand,
including increased emotional engagement that secures bonds with
consumers.
Definition of a Trademark
“The term „trademark‟ includes any word, name, symbol or device, or any combination thereof –
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register, established by this chapter,
to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”
15 U.S.C. §1127 (emphasis added).
Possible Trademark
Subject Matter
• Not limited to “words, names, and symbols.”
• “Devices” open the door to an almost unlimited
variety of possible non-traditional trademarks.
• So long as the subject matter in question identifies,
distinguishes, and indicates source, virtually
anything that may be perceived by one or more of
the human senses can serve as a trademark.
An Important Limitation on
Possible Trademark
Subject Matter
Functional Subject Matter:
• Ask if the subject matter is essential to the use or
purpose of the article in question, or if it affects
cost or quality, if not, still ask whether granting
exclusive trademark rights would provide a
significant non-reputational disadvantage to
competitors.
• Encourages legitimate competition by maintaining
balance between trademark and patent law.
Other Limitations on
Non-Traditional Trademarks
• Lack of Distinctiveness
• Timing of Distinctiveness
• Failure to Function as a Trademark
• Mere Informational Matter
• Scope (Likelihood of Confusion and Dilution)
Spanning the Five Human Senses
• Sight
• Sound
• Smell
• Taste
• Touch
Sight
Sight or Visual Examples:
• Single colors, product shapes and configurations, lighting formations, containers, vehicles, trade dress, background designs, packaging, uniforms, building exteriors, commercial interiors, etc.
• Is there consumer predisposition to equate with single source?
Some Non-Traditional Examples
Concerning Sight
Some Non-Traditional Examples
Concerning Sight
The Paradox of Non-Traditional
Visual Trademarks
• Generally, trademark owners are rewarded for engaging consumers to exercise imagination.
• “Hitting the Consumer Over The Head” with the goods connection typically isn‟t rewarded with word marks.
• The opposite is true with non-traditional visual marks.
• Without “Hitting the Consumer Over The Head” it may be difficult to acquire rights in non-traditional visual marks.
• Not directly educating consumers what should be considered source-identifying may result in failed ownership attempt.
Two key hurdles for registration of nontraditional marks:
1) Functionality
• If mark is functional, it is not entitled to registration
2) Distinctiveness
• Mark must be distinctive either
Inherently distinctive, or
Acquired distinctiveness
30
Functionality - Overview
TrafFix Devices, Inc. v. Mktg. Displays Inc.,
(2001)
– Mark is functional if it is “essential to the use
or purpose of the product or if it affects the
cost of quality of the product.”
– “[w]here the design is functional under the
Inwood formulation there is no need to
proceed further to consider if there is a
competitive necessity for the feature.”
31
Functionality – Burdens and Evidence
Morton-Norwich Evidentiary Factors:
(1) Existence of utility patent (even abandoned) that discloses utilitarian advantages
(2) Advertising that touts utilitarian advantages
(3) Availability of alternative designs
(4) Whether design results from comparatively simple or inexpensive method of manufacture
– Valu Engineering, Inc. v. Rexnord Corp., (Fed. Cir. 2002)
32
Product Design - Functional
Valu Eng’g, Inc. v. Rexnord Corp. (Fed. Cir. 2002)
– Holding: TrafFix did not alter Morton-Norwich
– Affirms that configuration of “conveyor guide rails” are functional because the cross-sectional design was competitively significant for use in “wet areas” of bottling and canning plants
M-5 Steel Mfg., Inc. v. O’Hagins Inc. (TTAB 2001), holding configuration of metal ventilating ducts and vents functional because it blends in or matches the roof tiles with which they are used and are better than alternative products
34
Product Design - Functional
Kistner Concrete Products, Inc. v. Contech Arch Tech., Inc. (TTAB 2011), finding Supplemental Registration of a configuration for “a one-piece open bottom bridge unit, with parallel spaced vertical side walls connected by an arched top wall and having sharp outside corners and a width substantially greater than its length” for “precast concrete bridge unit for constructing a bridge or culvert” functional.
– 5 expired utility patents tout efficiencies
– Comments in media tout advantages of bridge unit design
35
Product Design – Functional
In re Howard Leight Indus., LLC (TTAB 2006), holding applicant‟s mark “a bullet-shaped earplug with vertical axis, a rounded bottom, and a radially outwardly flared top” functional because makes ear plugs more visible and safety checks easier
36
Product Design – Functional
In re Richemont Int’l, S.A., (TTAB 2006), holding
configuration of watchcase functional because it can be turned
to effect a reversing motion flipping or pivoting one side of
watchcase to the other side
37
Taste/Flavor - Functional
In re N.V. Organon (TTAB 2006), finding the orange flavor of
quick-dissolving medication functional based on advertisements
indicating that the flavor encouraged patients to take medication
– “[I]t is difficult to fathom exactly how a flavor could function as
a source indicator in the classic sense, unlike the situation
with other nontraditional trademarks such as color, sound and
smell, to which consumers may be exposed prior to
purchase.”
38
Color - Functional
Brunswick Corp. v. British Seagull Ltd. (Fed. Cir. 1994),
affirming TTAB holding the color black for outboard motors is
functional because it makes motor appear smaller and
coordinates well with different boat colors
39
In re Orange Comm., Inc. (TTAB 1996), finding colors
yellow and orange functional for public telephones and
telephone booths because more visible at all times of
day and emergency
40
Color - Functional
Saint-Gobain Corp. v. 3M Co. (TTAB 2007), finding shade of purple for abrasive/sand paper functional because it was byproduct of manufacturing process, used in color-coding by third-parties, and there was a competitive need to use color for coated abrasives
41
Color – Non-Functional
Newborn Bros. & Co. v. Dripless, Inc. (TTAB 2002),
dismissed opposition to registration of the color “yellow”
applied to “caulking guns,” rejecting functionality claim, and
finding acquired distinctiveness
42
Sound - Functional
In re Vertex Group LLP (TTAB 2009), holding alarm sound
from a child's safety bracelet unregistrable because it is a
functional sound essential to the use or purpose of bracelet, and
it had not acquired distinctiveness
43
Inherent or Acquired Distinctiveness
Seabrook Test for Inherent Distinctiveness:
– Whether mark is a common basic shape or design
– Whether mark is unique or unusual in field
– Whether mark is merely a refinement of a commonly
adopted and well-known form of ornamentation recognized
by public for those goods
– Whether mark is capable of creating a commercial
impression separate from any word mark
44
Acquired Distinctiveness
Yamaha Int’l Corp. v. Hoshino Gakki Co. (Fed Cir. 1998)
– “[E]xact kind and amount of evidence necessary to establish
such secondary meaning necessarily depends on the
circumstances of the particular case.”
– As mark's non-distinctiveness increases, greater
evidentiary showing pursuant to Section 2(f) is required
Proof of Acquired Distinctiveness:
– Prior existing Principal Registration
– Five years substantially exclusive and continuous use in
commerce
– Direct and circumstantial evidence
45
Acquired Distinctiveness – Direct & Circumstantial Evidence
Length of use:
– In re Gibson Guitar Corp., (TTAB 2001) (sixty-six years of use insufficient for guitar design)
– In re Howard Leight Indst., LLC, (TTAB 2006) (fifteen years insufficient for earplug configuration)
– In re F. Schumacher & Co., (TTAB 2004) (five years sufficient to prove 2(f) for rounded book binding constituting product packaging)
Significant Sales & Advertising Figures:
– Yamaha Int’l Corp. v. Hoshino Gakki Co. ($120K guitars sold 1980-85, and 1 million promotional materials distributed sufficient for guitar-head design)
– Goodyear Tire & Rubber Co. v. Interco Tire Corp. (TTAB 1998) ($56 million revenues and 740,000 tires sold insufficient for tire tread design)
46
Acquired Distinctiveness – Direct & Circumstantial Evidence
Significant Sales & Advertising Figures:
– In re Haggar Co., (TTAB 1982) ($5 million advertising; $150 million sales for five years sufficient for black swatch clothing label)
– In re Kwik Lok Corp., (TTAB 1983) (several hundred thousands of dollars advertising insufficient for closure device)
Nature & Extent of Use:
– Number of stores, signs, visitors, viewers, accounts, consumers readers exposed to mark
– Location of signage and billboards on major highways, intersections, major malls and streets, high visibility
– Number of products/units sold over years bearing mark
47
Acquired Distinctiveness – Direct & Circumstantial Evidence
Sophisticated Consumers & Industry Practice:
– Such consumers are accustomed to and “could expect color to serve a source-identifying function.” In re Chun Kee Steel & Wire Rope Co., (TTAB 2002) (color of rope and wire found to have acquired distinctiveness)
Nature & Extent of Advertising:
– Identify major national magazines, newspapers, television containing advertising
– Number of issues, rotation, circulation, and viewership information related to advertisements
– Sponsorships and sporting events, and any media coverage
“Look For” Advertising:
– Advertising and/or packaging that displays or touts mark (but not utilitarian or aesthetic features)
48
Acquired Distinctiveness – Direct & Circumstantial Evidence
Unsolicited Media & Internet Attention:
– Major national magazines, newspapers, television coverage mentioning or referring to mark, including “distinctive,” “unique,” “well-known,” “famous” mark
– Internet mentions or references to above
Consumer, Dealer, Industry Affidavits/Declarations:
– Affidavits/declarations should specifically identify product,
mark, and source-identifying function
– Form affidavits/declarations unpersuasive
Surveys, Market Research, and Consumer Studies:
– Evidencing public identifies mark as source indicator
49
Product Packaging – Inherently Distinctive
In re Creative Beauty Innovations, Inc. (TTAB 2000),
reversing PTO refusal of registration on the ground that the
bottle packaging is not inherently distinctive and does not
function as mark because the “award-winning” container
design was found unique and unusual, and not a mere
refinement of existing designs
50
Van/Auto Trade Dress – Inherently Distinctive
In re PRG Parking Mgmt., L.L.C. (TTAB 2003), reversing refusal of “trade dress of a parking shuttle, comprising the overall color yellow and a series of black circles appearing thereon” on ground it does not function as mark
• TTAB held trade dress “quite different” from examples in record and described it as “original, distinctive, and very peculiar in nature” and “completely arbitrary” for the identified services
51
Motion – Inherently Distinctive
Reg. No. 1928423 (Oct. 17, 1995) for computer
generated sequence showing the central element from
several angles as though a camera is moving around the
structure – for motion picture films and other products
Reg. No. 2092415 (Sept. 2, 1997) for moving image
design mark, comprised of an approximately five second
visual sequence, depicts a city skyline, sky and water,
enclosed in two concentric circles containing the words
"BROADWAY VIDEO.” As the city skyline comes into
view the words "BROADWAY VIDEO" rotate clockwise
within the circles surrounding the city. The image
concludes with a red lightning bolt entering the circle and
forming a “V.”
52
Sound Marks – Inherently Distinctive
Human Voice: Pillsbury
Dough Boy Giggle
Musical Themes:
“I don‟t wanna grow up,
I‟m a Toys R Us Kid” Various Sounds:
the sound of burning
methamphetamine
Animal Sounds:
Duck quacking word AFLAC
Animal Sounds:
lion roaring
Electronic Sounds:
a metallic resonating sound
followed by two electronic beeps
and followed by a mechanical
ratcheting sound
Single-note sounds:
synthesized vibraphone-
musical note B
53
Reg. No. 3155702 (Oct. 17, 2006) for
wine
– The mark consists of a velvet textured
covering on the surface of a bottle of
wine. The dotted line in the drawing is
not a feature of the mark but is
intended to show the location of the
mark on a typical container for the
goods; the dark/lower part of the
container drawing shows the mark. The
stippling in the drawing is not a feature
of the mark, but a representation of
how one type of velvet covering may
appear in visual form. The mark is a
sensory, touch mark
54
Scents – Inherently Distinctive
In re Clarke (TTAB 1990), holding floral plumeria blossom
fragrance non-functional and registrable for yarn
55
Holograms – (Some) Inherently Distinctive
Clothing Charge card and credit card
services
Trading cards Pharmaceutical
prescription pads Cosmetic products
PTO allows registrations of hologram marks where application
covers hologram of a particular design or shape. But see In re Upper
Deck Co., (TTAB 2001) (affirming refusal on ground applicant
attempted to register more than one mark, since specimens show
hologram may have myriad of shapes, sizes and contents)
56
Chippendales’s Cuffs and Collar – Not Inherently Distinctive
The mark consists of a three-dimensional
human torso with cuffs around the wrists
and neck collar comprising of a bow tie.
The dotted lines in the drawing indicate
placement of the mark. The matter shown
by the dotted lines is not claimed as a part
of the mark and serves only to show the
position of the mark.
In re Chippendales USA, Inc. (Fed. Cir. 2010), aff’d TTAB‟s
application of the Seabrook factors to find that Chippendales‟s
Cuffs and Collar uniform is not inherently distinctive when used
in connection with adult entertainment services.
57
Three-dimensional Costume
-Inherently Distinctive
Reg. No. 3893339 (Dec. 21, 2010) for
Educational services, namely, providing courses of
instruction in classrooms and on-line at the college,
graduate, and doctorate levels…etc..
– The mark consists of the nonfunctional elements of a three-
dimensional costume to be worn by a person in the advertising and
rendering of the services. The proposed mark is comprised of the
following specific elements: a black narrow-brimmed fedora-style hat,
black shoes, a white dress shirt, a black necktie, a yellow suit with
vertical black stripes, and a black briefcase featuring the white
stylized lettering "WALSH COLLEGE" on two lines and "LIVE.
BREATHE. BUSINESS." on a single line below the first two lines.
58
59
Product Packaging –Not Inherently Distinctive
In re Pacer Tech. (Fed. Cir. 2003), affirming TTAB holding
that bottle cap packaging does not function as mark and is not
inherently distinctive because the “winged configuration is, at
best, a variation or „mere refinement‟ of a useful, basic design
scheme for adhesive product applicator caps.”
60
Sounds – Not Inherently Distinctive
Nextel Comm., Inc. v. Motorola, Inc. (TTAB
2009)
– Long-running battle between Motorola and
Nextel over chirp sound emitted by cell
phones and two-way radios
– TTAB held that chirp was not inherently
distinctive for products because it was
emitted in the normal course of cell phone
operation
– But capable of acquired distinctiveness for
telecommunications services
61
Supp. Reg. No. 3310161 (Oct. 9, 2007) for vehicle washing
and cleaning services
– The mark consists of a three-dimensional building design
in the shape of an elongated arch having two flat end
portions, with window panels comprising the surface of the
flat end portions, and window panels comprising the
surface of the lower portions of the sides of the arch
62
Supp. Reg. No. 3150142 (Sept. 26, 2006) for restaurant
services
– The mark consists of the interior of a building, with a
checkered floor, checkered walls, counter with stools along
half of one side of the building and in front of the kitchen, and
booths along the window on the other side of the building,
and pendant lights hanging above counter and booths
63
Color & Interior Motif– Not Inherently Distinctive
In re Hudson News Co. (TTAB 1996), aff’d, (Fed. Cir. 1997):
“Applicant's blue design motif for retail newsstand services is
not inherently distinctive, and therefore is not registrable
without showing of acquired distinctiveness.”
64
Building Interior/Exterior – Acquired Distinctiveness
Reg. No. 1761655 (March 30, 1993) conducting a securities
exchange and related stock market services, since 1903
– The mark consists of a representation of an actual building
facade with the wording "NEW YORK STOCK EXCHANGE"
located beneath the pediment
65
Building Interior/Exterior – Acquired Distinctiveness
Reg. No. 3707623 (Nov. 10, 2009) for
entertainment services, namely, the
presentation of intercollegiate sporting
events and sports exhibitions rendered in
a stadium, and through the media of radio
and television broadcasts and the global
communications network
– The mark consists of the color blue used on
the artificial turf in the stadium. The matter
shown in broken lines on the drawing shows
positioning of the mark and is not claimed as a
feature of the mark
66
Scents – Acquired Distinctiveness/Supp. Reg.
Reg. No. 2463044 (June 26,
2001) for cherry and other
scents for synthetic
lubricants
Supp. Reg. No. 3140692
(Sept. 5, 2006) for grapefruit,
lavender, vanilla, peppermint,
and other scents for file
folders, hanging folders,
paper expanding files
67
Color– Acquired Distinctiveness
Reg. No. 3317268 (Oct. 23, 2007) for the color
yellow used on wristbands in the nature of a
bracelet for use in fundraising and education in the
field of cancer, cancer research, cancer recovery
and survival
Reg. No. 2359351 (June 20, 2000) for a shade of
blue often referred to as “robin's-egg blue” for use
on boxes for jewelry and other goods
Reg. No. 2901090 (Nov. 9, 2004) for the color
chocolate brown, which is the approximate
equivalent of Pantone Matching System 462C, as
applied to the entire surface of vehicles and
uniforms for transportation and delivery of personal
property by air and motor vehicle
68
Motion – Acquired Distinctiveness
Reg. No. 2793439 (Dec. 16, 2003) for a mark consisting of the
unique motion in which the door of a vehicle is opened. The
doors move parallel to the body of the vehicle but are gradually
raised above the vehicle to a parallel position – for automobiles
69
Sounds – Acquired Distinctiveness
Reg. No. 2187082 (Sept. 8, 1998) for a combination of the
sounds of thunder and rain with a strobe representation of
lightening - for automatic produce misting units for delivering a
timed water mist to fruits and vegetables in display cases
Reg. No. 2495301 (Oct. 9, 2001) for a musical excerpt of
fourteen bars from the second movement (Andante con
tenerezza) of Howard Hanson's Symphony 2, op. 30
(Romantic)) - for live and broadcast musical concerts
2011 was horrible year for trade dress plaintiffs.
Remember, registration and protection of trade dress is highly subjective and unpredictable.
Courts treat evidence of copying in vastly different ways.
Use of Brand Name on Trade Dress Can Sometimes Mitigate Likelihood of Confusion.
If at First You Don’t Succeed, Try Try Again…..
Best Practices for Enforcing Trade
Dress
• Difficult if not impossible to commission trade
dress watch report that extends beyond
applications for new marks.
• Train employees
• Capitalize on fan base among consumers.
– Incentives
• Quarterly review of trade press and Internet
searches
• Update registrations to cover product expansion
• Be fully prepared before you start process
73
Miche Bag v. Marshall Group, 2010 WL
2175837 (N.D. Ind. 2010)
• Must balance need to move quickly with
requirement for preparation.
• Plaintiff filed for TRO on May 21; hearing set
for June 7; plaintiff seeks extension of TRO
to hear PI in August after expert testimony
and expedited discovery.
74
Plaintiff Must Be Fully Prepared When
Seeking TRO or Preliminary Injunction
“Simple arithmetic combines with Rule 65 to warn a
movant that a TRO petition likely will lead to a
preliminary injunction hearing within five or six weeks
of the TRO petition filing. One who can‟t prepare in
that time should think twice before beginning the
process.”
Miche Bag, LLC v. Marshall Group, 2010
WL 2175837
75
Glassybaby, LLC v. Provide Gifts, Inc.,
No. 11-380 (W.D. Wash. Sept. 30, 2011
Christian Louboutin S.A. v. Yves Saint Laurent America, Inc.,
778 F. Supp. 2d 44 (S.D.N.Y. 2011)
Christian Louboutin S.A. v. Yves Saint Laurent America, Inc.,
778 F. Supp. 2d 44 (S.D.N.Y. 2011))
• District Court found:
– With respect to fashion, rejected concept
that one can protect single color.
– PTO registration was rebutted by evidence
of third party use and perceived
inconsistencies between position before
Court and TTAB
• What style shoes? What shades of red?
• The Monet Picasso Argument
Christian Louboutin S.A. v. Yves Saint Laurent
America, Inc., 778 F. Supp. 2d 44 (S.D.N.Y. 2011)
• Second Circuit heard Oral Argument in
January:
– U.S. Circuit Judge Chester Straub,
criticized Marrero's ruling, which he said
was “far-reaching” but short on evidence.
Christian Louboutin S.A. v. Yves Saint Laurent
America, Inc., 778 F. Supp. 2d 44 (S.D.N.Y. 2011)
• While the IP Bar seems outraged by District Court
decision, it raises some good questions:
– How far different a shade do you need when
dealing with single color?
– Terms in registration often have little meaning
such as “lacquered red.”
– Louboutin claimed was only seeking protection for
certain style of shoes but past enforcement
suggested otherwise
Particular Problem For Fashion
• Fashion designs not protected by copyright
law to the extent that they are useful items.
• Tendency to seek trademark protection
claiming design functions as designation of
source.
– But then functionality defense negates that
protection.
• BE WARY OF MAKING BAD LAW BASED
ON WORLD OF FASHION.
Tacori Enterprises v. Scott Kay, Inc.,
CV11-1565 DSV (C.D. Cal. March 3,
2011).
Tacori Enterprises v. Scott Kay, Inc.,
CV11-1565 DSV (C.D. Cal. March
3,2011). • Court found that Tacori could not prove copyright
infringement because rings would not be seen as similar by consumers.
• Court found that trade dress was functional even if could show it had secondary meaning.
– Number of crescent rings weighed against finding of secondary meaning.
Wolf Appliances v. Viking Range Corp.,
668 F. Supp. 2d 878 (D. Wis. 2010)
84
Facts
• Wolf long associated with red knobs on stoves even if
most retailer displays show standard black knobs.
• Viking offered consumers choice of stainless steel,
black, white or red through accessory kit.
Finished product only shipped with stainless
steel or black knobs.
85
Was Viking Copying Defendant?
• One Viking dealer displayed range with red knobs and poster above it:
“WHO'S AFRAID OF BIG BAD WOLF?”
• No other colors except red offered as accessory kit.
• Sufficient for jury to conclude intentional copying supporting finding of secondary meaning.
– Also supports intent to confuse.
86
Rodan & Fields v. Estee Lauder, 2010 WL
3910178 (N.D. Cal. 2010)
87
• Rodan & Fields acquired by Estee Lauder 2003 and bought back by founders in 2007.
• Plaintiff focused argument on striking similarity of two products which prove copying and therefore confusion.
• Even if products were similar, presence of hang tag with Clinique mark avoids possible confusion.
88
Miche Bag v. The Marshall Group,
2010 WL 25239447 (N.D. Ind. 2010)
89
Miche Bag v. The Marshall Group
90
Defining the Trade Dress
• Miche Classic Bag
– Slightly-curved upper aspect of bag
– Curved straps
– Chrome, oval buckles
– Rigid, polygonal-shaped body
– Insert sides
– Trapezoidal-shaped zipper ends
– Removable decorative covers
– Two tones
91
Miche Bag v. The Marshall Group,
2010 WL 25239447 (N.D. Ind. 2010)
92
Evidence of Copying
• Defendant did not send specs to Chinese
manufacturers but sketches and followed that with
the actual Miche Bag.
• Of course, if copied functional elements that would be
protected.
93
Functional?
• Miche has pending patent application for
interchangeable covers.
• Miche argues that other aspects of clamed trade
dress are not functional. “The way that functional
elements are assembled may be protected as trade
dress.”
• No reference to trade dress in advertisements.
94
• Presence of Sierra's and Miche name on respective
products not enough to avoid confusion.
– Hang tag and interior label not visible to Internet
uses who comprise large portion of Miche‟s
market.
95
Consider Third Circuit Versa Products
Decision
• Each circuit uses multifactor test to evaluate likely confusion. Third Circuit has developed several different variations of this multifactor test depending on circumstances.
• In Versa Products, 50 F.3d 189 (3d Cir. 1995), Third Circuit questioned if appropriate to see copying as evidence of anything in trade dress claim.
96
“Where product configurations are concerned, we must be especially wary of undermining competition. Competitors have broad rights to copy successful product designs when those product designs are not protected by (utility or design) patents. It is not unfair competition for someone to trade off of the good will of the product. (Citing Kellogg v. National Brand).”
50 F.3d at 193
97
According to the Third Circuit…..
• In the product configuration context, a defendant‟s
intent weighs in favor of a finding of confusion only if
intent to confuse or deceive is demonstrated by clear
and convincing evidence, and only where the
product‟s labeling and marketing are affirmatively
misleading.
98
If At First You Don’t Succeed……
• General Motors Co. v. Urban Gorilla, LLC, 2010 WL
5395065 (D. Utah 2010)
99
General Motors Co. v. Urban Gorilla LLC
• GM has a registered trademark in the shape of the H1
Hummer model, the Hummer nose and grill area, the word
“Hummer,” and the slogan “Like Nothing Else.”
• In 1997, UG predecessor in interest launched a line of
“body kits,” which customers install on a “donor” truck
chassis. A kit costs about $10,000 (less than 1/10th the cost
of a Hummer).
• In 1998, predecessor to GM sent a C&D letter to
predecessor of UG, claiming infringement of its registered
trademarks “Humvee,” “Hummer,” and the ”Hummer
Vehicle Nose Design.” Predecessor agreed to change its
product line and discontinue use of surplus Hummer parts
in its kits.
• No further contact until 2006, when GM sued UG.
100
2007: Court Denies Application for Preliminary
Injunction
• 10th Circuit affirms denial of preliminary
injunction finding that there was evidence that
trade dress might be functional, that there was no
likelihood of confusion given different markets,
and no evidence of actual dilution based on
standard in place at that time. 500 F.3d 1222
(10th Cir. 2007).
101
General Motors Co. v. Urban Gorilla LLC
(on remand)
2010 WL 5395065 (D. Utah 2010)
– Case tried in September of 2008.
– Additional briefs requested and submitted in
February 2010 and again in July of 2010.
– Decision issued December 27, 2010.
102
Dilution Analysis
• Court found that it must apply amended dilution
law to determine request for injunctive relief but
old dilution law to determine if monetary
damages should be awarded.
• Uncontested that trade dress was famous.
• Court compared completed kits because that was
what Defendant advertised.
• Three of five kits were strongly similar to
Hummer trade dress.
103
Trademark Analysis
• Trade Dress is registered so defendant has
burden to prove functionality.
• While some features of trade dress are functional,
defendant failed to show it was impossible not to
use alternative designs.
• Tracks dilution analysis to conclude three of five
kits infringe but two do not.
104
Hummer v. Urban Gorilla LLC
105
Take Away
• Brand owner seeking to protect trade dress must
invest in protection brand management prior to
commencement of enforcement program.
• Must balance need to avoid functionality finding
with benefit of advertising that customer should
look to the trade dress as a designation of origin.
