Presenting a live 90-minute webinar with interactive Q&A

Non-Traditional Trademarks: Sound, Color, Shape, Scent and More Establishing, Registering and Enforcing Non-Conventional Marks

WEDNESDAY, FEBRUARY 8, 2012 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific

Today’s faculty features:

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

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Beyond Words and Symbols: Getting Creative with Non-Traditional Trademarks and Sensory Brands

Stephen R. Baird Chair, Intellectual Property and Trademark Brand Management Winthrop & Weinstine, P.A. (612) 604-6585 [email protected] www.DuetsBlog.com The Trend Toward Multi-Sensory Branding

• 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. Sound

• Some trademarks are embodied in sounds that cannot be represented by a drawing.

• If you click on a serial number in one of the columns appearing in the link below, you can listen to a sound trademark on the PTO‟s website.

http://www.uspto.gov/web/offices/ac/ahrpa/opa/kids/kidsound.html

Sound Marks and Distinctiveness

• Inherently distinctive when arbitrary, unique, and used in a way to indicate source. • If it imitates a commonplace sound, may need to prove acquired distinctiveness. • Same, if unique, but the goods make the sound in their normal course of operation. Some Non-Traditional Examples Concerning Sound

A pair of well-known sound marks . . . Smell -- Scent

• First registered scent mark occurred in 1991. • Marketing materials didn‟t identify or name any specific scent, but this was not fatal. • Fragrance should not be an “inherent attribute or natural characteristic” of goods. • Amount of evidence to show trademark function for fragrance is “substantial”. • Has fragrance in retail store environments become as common as Muzak? Some Non-Traditional Examples Concerning Smell--Scent Taste

• Never inherently distinctive? • No mention of taste in legislative history. • Substantial showing of acquired distinctiveness required. • Unclear to TTAB how a flavor ever could function as a source indicator. • Consumer predisposition doesn‟t exist to equate taste feature with one source. • Generally performs a utilitarian function. Some Non-Traditional Examples of Taste? Some Additional Thoughts on Taste

• INTA reports that beverage manufacturers view taste as trade secret and trademark. • What if the Coke recipe became known, would trademark law protect copying taste? • Would taste strips at point of sale solve TTAB‟s concerns about pre-sale access to taste marks? • Most potential seems to be with products not intended for human consumption. Touch

• Like taste, no mention of touch or tactile marks in the legislative history. • Neither “touch” nor “tactile” mentioned in the TMEP. • Yet, somehow, the PTO is recognizing inherently distinctive touch marks. • Why doesn‟t the Supreme Court‟s Wal-Mart decision apply to touch? • Is there really a consumer predisposition to equate touch with source? Some Non-Traditional Examples Concerning Touch The Key Appears to Be Something Analogous to “Look For” Advertising

• AmberWatch Alarm Sound Example:

• Failure to Function as Trademark • Failed to educate consuming public – no “Listen For” Ads or Description of Sound. • Al Roker PSA: “The sound you are about to hear means a child may need your help.” • Consider this Subtle Alternative: The unique sound you are about to hear means a child protected with an AmberWatch bracelet may need your help! Tips to Establishing Rights in Non-Traditional Trademarks

• Due diligence; investigate the competitive landscape. • Create uncommon, unusual or unexpected features. • File intent-to-use application. • Close review of marketing materials needed to avoid functionality admissions. • Educate consumers through use of “look for” analogs.

Thank you!

Stephen R. Baird Chair, Intellectual Property and Trademark Brand Management Winthrop & Weinstine, P.A. (612) 604-6585 [email protected] www.DuetsBlog.com

S O U N D

P A C K A G I N G

Registration of Nontraditional Trademarks in the United States Linda K. McLeod 202.408.6036 [email protected] Functionality and Distinctiveness

. 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

29 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.”

30 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)

31 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 • Abandoned utility patent disclosed design advantage • Advertising touted design advantage

32 Product Design - Functional . 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

33 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

34 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

35 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

36 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.”

37 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

38 . 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

39 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

40 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

41 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

42 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

43 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

44 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)

45 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

46 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)

47 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

48

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

49 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

50 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.”

51 Sound Marks – Inherently Distinctive

Animal Sounds: Electronic Sounds: Duck quacking word AFLAC a metallic resonating sound followed by two electronic beeps Animal Sounds: and followed by a mechanical lion roaring ratcheting sound

Musical Themes: Various Sounds: “I don‟t wanna grow up, the sound of burning I‟m a Toys R Us Kid” methamphetamine Single-note sounds: Human Voice: Pillsbury synthesized vibraphone- Dough Boy Giggle musical note B

52 . 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

53 Scents – Inherently Distinctive

. In re Clarke (TTAB 1990), holding floral plumeria blossom fragrance non-functional and registrable for yarn

54 Holograms – (Some) Inherently Distinctive

. 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)

Clothing Charge card and credit card services

Trading cards Pharmaceutical prescription pads Cosmetic products

55 Chippendales’s Cuffs and Collar – Not Inherently Distinctive

. 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.

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.

56 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.

57 58 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.”

59 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

60 . 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

61 . 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

62 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.”

63 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

64 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

65 Scents – Acquired Distinctiveness/Supp. Reg. . Reg. No. 2463044 (June 26, Supp. Reg. No. 3140692 2001) for cherry and other (Sept. 5, 2006) for grapefruit, scents for synthetic lavender, vanilla, peppermint, lubricants and other scents for file folders, hanging folders, paper expanding files

66 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

67 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

68 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

69 Thank You!

Linda K. McLeod [email protected] Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.

70 POLICING AND ENFORCING RIGHTS IN NON-TRADITIONAL TRADEMARKS

Stephen W. Feingold [email protected] (212) 775-8782 Trends in Trade Dress Enforcement 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…..

72 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. • Secure inherently distinctive registration if possible. • Be prepared with survey before you start.

106 POLICING AND ENFORCING RIGHTS IN NON-TRADITIONAL TRADEMARKS

Stephen W. Feingold [email protected] (212) 775-8782