Fish & Richardson p.c. TrademarkThoughts

Trade Dress Protection for Marketing Themes, Sales Techniques, and Styles of Doing Business

Trademark use Trade dress typically consists of either product packaging likelihood of confusion. The PTO ultimately ruled that in strategic or product configuration. It can encompass color, size, Phillip Morris’s “use of western scenes in its advertising has business policy shape, texture, or graphics, and has even been found by been of such nature and extent that such scenes have courts to include such things as restaurant layout and become popularized and identified in the public mind with décor, the shape of an automobile, and the appearance of a [Phillip Morris’s] cigarettes.”5 The PTO expressly dis- bathroom scale. agreed with the applicant’s contention that Phillip Morris’s February 2002 use of different horses, cowboys and settings meant there To be protectible, trade dress must satisfy two basic ele- could not possibly be acquired distinctiveness in any single ments. First, it must be “non-functional.” A feature is one of them. “functional” and hence unprotectible if it either (i) is Published by Fish & Richardson essential to the use or purpose of the article, or (ii) affects A similar result, though without relying on acquired dis- the cost or quality of the article.1 Second, trade dress must tinctiveness of Phillip Morris’s mark, was reached when either be inherently distinctive or have acquired distinctive- Star Tobacco tried to use GUNSMOKE for cigarettes. In ness such that consumers recognize it as a source identifier that case, a federal district court found that Star Tobacco’s Trademark and not mere ornamentation. If these elements are satis- use of a heavily armed cowboy infringed Phillip Morris’s and fied, and there is a likelihood of confusion caused by the “image of the American West” that had been created by its Copyright defendant’s use of similar trade dress, then the plaintiff packaging and advertising. The court rejected Star Group should prevail. Tobacco’s argument that Phillip Morris was attempting to protect the “entire American West as its preserve.” Rather, In the recent landmark decision Wal-mart v. Samara the court was persuaded that Phillip Morris’s claimed trade Brothers,2 the Supreme Court ruled that trade dress in the dress was limited to three elements: “(i) the picture of a form of product configuration must always have acquired cowboy on a cigarette pack; (ii) figures of cowboys who distinctiveness to be protectible – i.e., product configura- have come over time to be known as the ‘Marlboro Man’; tion, like color,3 can never be inherently distinctive. Thus, and (iii) those evocative stretches of the Western landscape, Intellectual plaintiffs seeking to enforce their trade dress in product not to be found on any map or ordinance survey, called property and configurations must always face the burden of demonstrat- ‘Marlboro Country.’” The court found that these elements technology law ing that their configurations have achieved recognition in were inherently distinctive, since “the juxtaposition of the minds of consumers as a source-identifying feature. product and setting is entirely arbitrary, perhaps even fan- [email protected] ciful.”6 www.fr.com 800-818-5070 Trade dress is not necessarily limited to product packaging or configuration, however. It has been said that trade dress The use of advertising featuring a lion for financial services “embraces the total image of a given product, including was found to violate Dreyfus Fund’s rights in its lion advertising materials and marketing techniques.”4 The marks. As an initial matter, the court found Dreyfus’ Boston Supreme Court’s ruling in Wal-mart does not affect the marks were “suggestive,” and therefore acquired distinctive- ability to protect broad marketing themes as inherently dis- ness was not required for protection. The court then Dallas tinctive trade dress, since such themes are clearly not prod- found that “[d]efendant’s advertising campaign is centered Delaware uct configurations. Though such cases are difficult to win, around images and ideas that are remarkably similar to the New York several plaintiffs have prevailed in their efforts to prevent Dreyfus marks and to the manner in which the Dreyfus San Diego others from adopting marketing themes and sales tech- marks have been used.” Thus, it was not simply the use of niques — and perhaps even styles of doing business — that a lion by the defendant that the court found troubling, but Silicon Valley are similar to their own, using the traditional “likelihood of rather the context in which the lion was used, such as the Twin Cities confusion” test available under trademark law. common use of a “money jungle” setting and a family of Washington, DC lions to symbolize each party’s family of funds.7 Marketing Themes Protected As “Trade Dress” One of the successful defenders of a marketing theme as Harlequin Romance’s paperback book covers were also held protectible trade dress is Phillip Morris, which on more to have acquired distinctiveness and therefore to be pro- than one occasion has prevented others from using a “west- tectible as trade dress. Specifically, a court protected the ern” motif to advertise cigarettes. For example, Phillip combination of elements such as size and color of the Morris was able to block registration of the mark PAUL cover, illustration, font size, and the location of the REVERE EXTRA superimposed over a cowboy on a horse author’s name, book title, price, series number, and pub- for cigarettes, successfully arguing that its longstanding use lisher’s name. The court also noted that the defendant of cowboys in numerous western settings would result in a intended to copy the overall “editorial approach” of Harlequin so that “the true Harlequin reader [could] not to sponsorship or affiliation between the parties.12 tell the difference.” There was also some actual confusion in the trade, with some 6500 of defendant’s books mistak- Judicial Resistance To Protection Of Marketing Themes 8 enly returned by dealers to Harlequin. And Sales Techniques As Trade Dress There are many cases where protection of a marketing Protecting Sales Techniques As Trade Dress theme or sales technique has been rejected, sometimes The competing use of a “Certificate of Authenticity” for based on lack of acquired distinctiveness and sometimes the sale of old-style penny banks was found to be a viola- not. tion of trade dress in a particular marketing technique. Although not inherently distinctive, the court found that For example, in denying a preliminary injunction sought the plaintiff’s use of a “Certificate of Authenticity” had by Haagen-Dazs against Frusen Gladje’s use of similar developed acquired distinctiveness over a fifteen year peri- packaging for ice cream, the court stated, without citing od and that buyers had come to associate the Certificate of any authority, that “[t]here is no trademark, nor could 9 Authenticity with a single source of goods. there be, upon the so-called ‘unique Scandanavian market- ing theme’ employed by [Haagen-Dazs]. This is simply a In an innovative (perhaps some would say overreaching) vehicle by which [Haagen-Dazs] has chosen to market its extension of trade dress law, the Seventh Circuit upheld as product.” The court continued that “it would be unrea- protectible trade dress the particular design used by plain- sonable to suggest that since [Haagen-Dazs] was the first to tiff for its (i) reminder letters to car owners regarding the market a premium ice cream product by employing a service that was due on their cars, (ii) monthly reports to ‘Scandinavian flair,’ it be permitted to use such a market- repair shops to show the value of employing plaintiff’s ing technique in the relevant product market to the exclu- reminder services, and (iii) sales brochures. The court sion of all others.”13 began by specifically stating that trade dress can include “sales techniques” in addition to more traditional features The court’s statement that there could “never be” trade such as a product’s “size, shape, color, [and] texture.” The dress protection for Haagan-Dazs’s “Scandinavian market- court then found that the format and design of plaintiff’s ing theme” implies that acquired distinctiveness was a legal marketing tools were, in combination, inherently distinc- impossibility. However, if we substitute “western” for 10 tive and deserving of trade dress protection. “Scandinavian” and “cigarettes” for “ice cream,” it is hard to reconcile the statement that there could “never be” trade Copyright Protection For Marketing Themes And Sales dress protection in a Scandinavian marketing theme for ice Techniques cream with the same court’s rulings in the Phillip Morris Of course, elements of a marketing theme may also be pro- cases discussed above. tectible by copyright. For example, one federal court pro- tected the “advertising program” called “We’ll Beat The Another case rejecting a claim of protection for a market- Pants Off Any Deal” in which a row of individuals wearing ing theme involved the use of a “bursting thermometer” in boxer shorts were routinely shown with their pants ads for the “hottest dental insurance plan” available. The dropped to their ankles, sometimes accompanied on bill- court stated that if the plaintiff could prove acquired dis- boards by a mannequin with its pants dropped. The plain- tinctiveness in the “laudatory” and “descriptive” use of the tiff held valid copyright registrations for the advertising “bursting thermometer,” then it might be entitled to pro- program, and had licensed it to over thirty customers tection. The court found, however, that the “insurance nationwide. The court found that the defendant’s use of a brokerage industry was committed to the ‘hot’ theme in its similar motif with the slogan “We’ll Beat The Pants Off advertising” during the time in question, and that the Any Deal In Town” was infringement and issued a prelimi- plaintiff was unable to show that its use of the bursting 11 nary injunction. thermometer had obtained acquired distinctiveness identi- fying a sole-source of insurance services to the consuming Another case finding copyright infringement involved the public. The court did admit, though, that “in a proper use in a TV commercial of the same “rapid-edit” style case a particular sales technique might be treated as part of showing close-ups of the same actress’s face in similar dress. a product’s trade dress.”14 In addition, although the products sold in the two ads were dissimilar (newspapers and eyecare products), the In one case involving the attempt to protect the use by a court denied the defendant’s motion to dismiss the radio station of an “employment” theme for a contest, the Lanham Act trademark claims, finding in essence that the court stated, perhaps too broadly, that “just as copyright plaintiff might be able to show a likelihood of confusion as

2 Fish & Richardson p.c. TrademarkThoughts Fish & Richardson p.c. Trademark and Copyright Group

protection extends only to expressions, not ideas, trade dress protection is not given to marketing concepts or Other more recent cases have also granted protection in the themes.” Thus, the plaintiff was unable, under either a layout and décor of a business establishment. For example, copyright or trade dress theory, to prevent a competing in Best Cellars Inc. v. Grape Finds at Dupont Inc.,19 the radio station from using a similar “employment” theme to court found that the plaintiff’s trade dress was inherently entice listeners by offering the possibility of receiving a distinctive, consisting of the “total visual image” created by “paycheck” from the station.15 the combination of fourteen specific elements, the “essence” of which was a In Woodsmith Publishing Co. v. Meredith Corp.,16 the “wall of wine,” i.e., the color-coded, Eighth Circuit stated that “[p]rotection of a marketing iconographic wall signs identifying eight taste approach under Section 43(a) [of the Lanham Act] would categories above single display bottles on be inconsistent with the goals of our free enterprise sys- stainless-steel wire pedestals which run along the tem.” However, rather than merely stopping there, the store perimeter, above identical color-coded court further found that the elements of the alleged trade textually formatted square shelf-talkers, above dress at issue (the particular features of a woodworking vertical arrays of nine glowing bottles stacked magazine and the use of a “mailer” to generate subscrip- horizontally, above a strip of cabinets or drawers tions) were functional and therefore not protectible trade which extend to the floor. dress in any event. For a retail establishment such as a wine shop, its “style of “Style Of Doing Business” – Protectible Or Not? doing business” would seem to include such a basic feature The Eighth Circuit has stated flatly that a plaintiff “does as the layout of its merchandise. Indeed, such a feature is not have a business interest capable of protection in the probably much more a part of its “style of doing business” mere method and style of doing business.” The assertion than any back office accounting procedure. of exclusive rights in the “down home country cooking restaurant business,” without specifying any particular ele- Similarly, in Clicks Billiards Inc. v. Sixshooters Inc.,20 the ments of trade dress in the restaurant layout or décor that Ninth Circuit reversed the granting of summary judgment had been infringed, was therefore found insufficient to in the defendant’s favor regarding the copying of the layout state a legally cognizable claim.17 Such a broad, general- and appearance of a competitor’s billiard parlor. The court ized claim of trade dress, without identifying the specific found that there were genuine issues of material fact elements claimed as trade dress, would likely be found by regarding the functionality and acquired distinctiveness of any court as simply too amorphous to be staked out as an the plaintiff’s claimed trade dress, which consisted of the exclusive territory upon which no competitor may tread. allegedly unique combination of 35 individual elements, including such things as “drink rails” and “dark mahogany However, the Eighth Circuit’s consistent pronouncements wood finishes.” Despite the Eighth Circuit’s position that that there can be no trade dress protection in the “style of a “style of doing business” is not protectible as trade dress, doing business” may be seen as somewhat at odds with the it is hard to characterize a billiard parlor’s claimed trade approach taken by other courts, and raises the interesting dress as anything other than just that, which the Ninth problem of defining where protectible trade dress ends and Circuit allowed to move forward to trial. an unprotectible “style of doing business” begins. Indeed, the U.S. Supreme Court’s landmark decision in Two Pesos Finally, a number of recent cases have involved an attempt Inc. v. Taco Cabana Inc.18 granted trade dress protection in to protect the style of various greeting cards as trade dress. restaurant layout (admitted to be inherently distinctive by In one case, the plaintiff claimed protection in greeting the defendant) that was surely at least part of the plaintiff’s cards cut to the same shape as an animal depicted in a pho- “style of doing business,” described as tograph featured on the front of the card (for example, a a festive eating atmosphere having interior dining card featuring the photograph of a lion would be cut into and patio areas decorated with artifacts, bright the shape of a lion). The plaintiff sought protection for colors, paintings and murals. The patio includes “the general format of its entire line of die-cut greeting interior and exterior areas with the interior patio cards.” The Second Circuit found that capable of being sealed off from the outside patio [d]espite its initial novelty within the greeting by overhead garage doors. The stepped exterior card industry, however, [plaintiff’s] trade dress of the building is a festive and vivid color scheme cannot qualify for trade dress protection because using top border paint and neon stripes. Bright [plaintiff] is effectively seeking protection for an awnings and umbrellas continue the theme. idea or concept – die-cut photographic greeting

TrademarkThoughts Fish & Richardson p.c. 3 Fish & Richardson p.c. Trademark and Copyright Group

cards. It is clear that the first manufacturer to Endnotes 1 Traffix Devices, Inc. v. Marketing Displays, Inc., 58 USPQ2d 1001 create a die-cut photographic product could not (S. Ct. 2001). have claimed trade dress protection for all die-cut photographic designs, since a trade dress 2 Wal-mart v. Samara Brothers, 54 USPQ2d 1065 (S. Ct. 2000). described as consisting solely of die-cut 3 See Qualitex Co. v. Jacobsen Products Co., 34 USPQ2d 1161 (S. photographs would simply “refer to the genus of Ct. 1995). which the particular product is a species” 4 John Wright, Inc. v. Casper Corp., 191 USPQ 369, 388 (E.D. Pa. [citation omitted]. . . . 1976) (subsequent history omitted). 5 Phillip Morris Inc. v. Rembrandt Tobacco Corporation, 185 [O]verextension of trade dress protection can USPQ 823, 824 (TTAB 1975). undermine restrictions in copyright and patent 6 Phillip Morris Inc. v. Star Tobacco Corp., 35 USPQ2d 1178 law that are designed to avoid monopolization of (SDNY 1995). products and ideas . . . [J]ust as copyright law 7 The Dreyfus Fund Inc. v. The Royal Bank of Canada, 213 USPQ does not protect ideas but only their concrete 872, 878-79 (SDNY 1981). expression, neither does trade dress law protect 8 Harlequin Enterprises Ltd. v. Gulf & Western Corp., 209 USPQ an idea, a concept, or a generalized type of 1104 (SDNY 1980), aff'd, 210 USPQ 1 (2d Cir. 1981). appearance.21 9 John Wright, Inc., 191 USPQ at 388-90. 22 By contrast, in Roulo v. Russ Berrie & Co., the court 10 Computer Care v. Service Systems Enterprises Inc., 25 USPQ2d found that the overall look of the plaintiff’s greeting cards 1020 (7th Cir. 1992). Interestingly, the plaintiff evidently did not include a claim for copyright violation, which would seem to have was inherently distinctive trade dress, consisting of cards been a more natural cause of action. Perhaps the documents had that were beige, single-faced, containing sentimental mes- been published prior to 1989 without proper copyright notice, resulting in forfeiture of copyright, or perhaps no copyrights had sages in brown ink, and flanked by striped foil borders. been registered with the U.S. Copyright Office, a prerequisite to The court also granted copyright protection in the cards, bringing a cause of action under copyright law. not for the individual elements, but rather the “artistic 23 11 Kleier Advertising Inc. v. Premier Pontiac Inc., 2 USPQ2d 1152 combination of all the common elements” in the design. (N.D. Okla. 1987) (subsequent history omitted). 12 Blore v. 20/20 Advertising Inc., 5 USPQ2d 1833 (D. Minn. 1987). Conclusion Courts have been quite inconsistent in their protection of 13 Haagen-Dazs, Inc. v. Frusen Gladje Ltd A.B., 210 USPQ 204 unconventional trade dress such as marketing themes, sales (SDNY 1980). techniques, and perhaps even “styles of doing business.” 14 Murphy v. Provident Mutual Life Ins. Co., 17 USPQ2d 1299 (2d Some courts have granted protection where the trade dress Cir. 1990), cert. denied, 112 S. Ct. 65 (1991). is inherently distinctive, others have required acquired dis- 15 CMM Cable Rep. Inc. v. Ocean Coast Properties Inc., 36 tinctiveness, and still others have seemed to close the door USPQ2d 1458 (D. Me. 1995), aff'd, 41 USPQ2d 1065 (1st Cir. 1996). entirely on the possibility of granting protection. 16 15 USPQ2d 1053 (8th Cir. 1990). Vague allegations that the “total look” of a plaintiff’s trade 17 Prufrock, Ltd., Inc. v. Lasater, 228 USPQ 435 (8th Cir. 1986). dress is protectible, without identifying the particular fea- See also Aromatique Inc. v. Gold Seal Inc., 31 USPQ2d 1481 (8th tures that are claimed as constituting part of the protectible Cir. 1994) (finding alleged trade dress of packaging for potpourri both functional and non-distinctive and also stating that "the mere whole, are often met with judicial skepticism. Thus, method and style of doing business is not protectable"; Denton v. whether protection is granted may well often depend on Mrs. Swiss of Missouri, Inc., 195 USPQ 609, 614 (8th Cir. 1977) (denying trade dress protection for a franchisor's "standardized sys- the specificity with which the plaintiff defines its trade tem" of doing business and noting that "a [trademark owner] has dress. Equally important is the court’s perception of (i) the no protectible [trademark] interest in the mere method and style of distinctiveness of the trade dress in the marketplace and doing business"). (ii) the degree to which protecting the trade dress would 18 23 USPQ2d 1081 (S. Ct. 1992). hinder competition. 19 54 USPQ2d 1594 (SDNY 2000). In any event, this area of law will likely continue to devel- 20 58 USPQ2d 1881 (9th Cir. 2001). op as plaintiffs try to press the outer edges of what consti- 21 Milstein, Inc. v. Greger, Lawlor, Roth Inc., 35 USPQ2d 1284 (2d tutes protectible trade dress by seeking to fit their square Cir. 1995). peg claims into the round holes of trademark law. 22 12 USPQ2d 1423 (7th Cir. 1989), cert. denied, 110 S. Ct. 1224 Keith Barritt (1990). Principal, Fish & Richardson, Washington DC. 23 Similarly, in Hartford House Ltd. v. Hallmark Cards, Inc., 6 USPQ2d 2038 (10th Cir.), cert. denied, 109 S. Ct. 260 (0988), the court found that the plaintiff's line of greeting cards was pro- tectible, the case turning on the alleged "functionality" of the cards' numerous features including (i) a two-fold card containing poetry 4 Fish & Richardson p.c. TrademarkThoughts on the first and third pages, (ii) unprinted surfaces on the inside three panels, and (iii) high quality, uncoated, textured paper.