DOCSLIB.ORG

Florida Law Review Founded 1948

Total Page：16

File Type：pdf, Size：1020Kb

Download full-text PDF Read full-text
Florida Law Review Founded 1948 Florida Law Review Founded 1948 Formerly University of Florida Law Review VOLUME 56 APRIL 2004 NUMBER 2 THE RISE AND FALL OF TRADEMARK LAW’S FUNCTIONALITY DOCTRINE Mark Alan Thurmon * I. THE RISE .........................................253 A. Early Development of the Functionality Doctrine and the Rise of the Competitive Need Rationale ............256 B. The Turbulent Middle Period: 1938-1981 .............271 C. The Modern Period—Consistency and Competitive Need ..........................................282 1. The Competitive Need Rationale Becomes the Law of the Land ..............................282 2. Clarifying the Competitive Need Rationale . 297 a. Focusing on the Number of Available Alternatives ...............................298 b. Focusing on the Proper Alternatives . 300 D. Secondary Functionality Issues .....................302 1. Aesthetic Functionality and the Competitive Need Rationale....................................303 2. The Patent Bargain, the Right to Copy, and the Competitive Need Functionality Standard . 308 II. THE FALL .........................................319 A. TrafFix —The Supreme Court Ignores the Lessons of the Past .......................................319 B. The Aftermath—Division and Confusion in the Courts . 326 * Assistant Professor of Law, Fredric G. Levin College of Law, University of Florida. I want to thank Bill Barber, Tom Cotter, Robert Denicola, Graeme Dinwoodie, Mark Lemley, Glynn Lunney, and William Page for their helpful comments on an early draft of this Article. My research assistant, Henry Rodriguez, provided invaluable assistance in gathering and reviewing the many works on the functionality doctrine. My work on this project was aided by the Levin College of Law’s summer research grant program. 243 244 FLORIDA LAW REVIEW [Vol. 56 1. Division—What Is the Proper General Functionality Standard? ...................................326 2. Using Patents to Defeat Trademarks . 334 3. Confusion—What Is the Difference Between Aesthetic and Utilitarian Value? . 338 III. THE RECOVERY ....................................340 A. Solution One—Returning to the Competitive Need Standard ..................................341 1. Two Policies and Three Rules ...................342 2. Functionality Cost and the Problem of Perspective . 344 3. The Patent Bargain and Right-to-Copy Rules Provide Little Social Benefit ....................350 4. The Patent Bargain and Right-to-Copy Rules Threaten Copyright and Trademark Protection for Ornamental Designs ........................355 5. The Patent Bargain and Right-to-Copy Rules Create an Incentive to Trade on Goodwill . 358 6. Seeking Balance ..............................359 7. The Patent Bargain Argument Is Inherently Flawed . 360 8. The TrafFix Rule Has Huge Complexity Cost . 362 B. Solution Two—Eliminating Functionality as an Element .....................................364 C. Solution Three—Combining a Competition-Based Front-End Functionality Rule with a Limited Functionality Defense—The Perfect Solution? .........369 IV. CONCLUSION ......................................370 Trademark law’s functionality doctrine is a mess, and the responsibility for this mess rests squarely with the United States Supreme Court. In TrafFix Devices, Inc. v. Marketing Displays, Inc. ,1 the Supreme Court intervened to resolve a minor split on a secondary functionality issue, 2 and proceeded to recast the entire law of functionality. In so doing, the Court summarily rejected the general functionality standard used by every circuit court of appeals prior to the TrafFix decision. The TrafFix Court simply declared the existing law “incorrect,” 3 and replaced it with an unwieldy, unjustified, and unworkable set of rules. The mess created by the TrafFix Court is troublesome. The functionality doctrine is perhaps the most important limitation on 1. 532 U.S. 23 (2001). 2. See id . at 28. 3. Id . at 33. 2004] TRADEMARK LAW’S FUNCTIONALITY DOCTRINE 245 trademark protection for product configurations and packaging. 4 A functional product feature cannot be protected as a trademark. 5 This statement of black letter law illustrates both the importance and the crux of the difficulty posed by the functionality doctrine. It is important because how we define functionality will directly affect the range of symbols that may be protected as trademarks. It is difficult because persons with different views on the propriety of trademark protection for attributes such as product configuration or product color are likely to push for different functionality standards. In the TrafFix decision, the Court rejected a competition-based definition of functionality, 6 but failed to provide a clear alternative definition. Within one year of the TrafFix decision, the lower federal courts divided on the crucial question of what general functionality standard should be used. 7 The Court of Appeals for the Federal Circuit concluded 4. Some may disagree with this proposition, arguing instead that distinctiveness is a more significant limitation on trademark protection. I view distinctiveness not as a limitation, but rather as a definitional requirement. To be a trademark, a symbol must be distinctive. Nondistinctive symbols are simply not trademarks, so it seems wrong to discuss distinctiveness as a limitation on the scope of protection afforded to trademarks. Having made this clarification, I also believe that distinctiveness should be a significant filtering requirement of trademark law. See infra notes 505- 12 and accompanying text. 5. See, e.g., TrafFix , 532 U.S. at 29 (“[T]rade dress protection may not be claimed for product features that are functional.”); RESTATEMENT (T HIRD ) OF UNFAIR COMPETITION § 16 (1995) (explaining that the configuration of a product or its packaging may be protected if it is distinctive and not functional); 1 J. THOMAS MCCARTHY , MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 7:63 (4th ed. 2002). 6. See TrafFix , 532 U.S. at 32-33. 7. See infra Part II.B. The TrafFix decision also led to a good deal of commentary. See, e.g., Theodore H. Davis, Jr., Directing TrafFix : A Comment on the Construction and Application of Utility Patent Claims in Trade Dress Litigation , 54 FLA . L. REV . 229 (2002); Discussion, 2001 Panel Discussion on Current Issues in Trademark Law—I’ll See Your Two Pesos and Raise You . Two Pesos, Wal-Mart . and TrafFix : Where Is U.S. Supreme Court Jurisprudence Heading, and How Will It Affect Trademark Practitioners? , 11 FORDHAM INTELL . PROP . MEDIA & ENT . L.J. 509 (2001); William T. Fryer, III, Trademark Product Appearance Features, United States and Foreign Protection Evolution: A Need for Clarification and Harmonization , 34 J. MARSHALL L. REV . 947 (2001); Joanne Hepburn, Caution: Roadblocks Ahead: Patent Revealing Traffic Sign Stand’s Functionality Prevents Trade Dress Protection , 7 B.U. J. SCI . & TECH . L. 413 (2001); William P. Kratzke, The Supreme Court and Trade Dress—A Short Comment , 24 HASTINGS COMM . & ENT . L.J. 73 (2001); Doris Estelle Long, First, “Let’s Kill All the Intellectual Property Lawyers!”: Musings on the Decline and Fall of the Intellectual Property Empire , 34 J. MARSHALL L. REV . 851 (2001); Jeanne-Marie Marshall, TrafFix Devices, Inc. v. Marketing Displays, Inc. : A Step in the Right Direction , 91 T RADEMARK REP . 632 (2001); Jonathan E. Moskin, The Shape of Things to Come—Emerging Theories of Design Protection , 92 TRADEMARK REP . 681 (2002); Robert P. Renke, TrafFix Devices, Inc. v. Marketing Displays, Inc.: The Shrinking Scope of Product Configuration Trade Dress , 91 TRADEMARK REP . 624 (2001); Kerry S. Taylor, Intellectual Property: TrafFix Devices, Inc. v. Marketing Displays, Inc., 17 BERKELEY TECH . L.J. 205 (2002); Harold R. Weinberg, Trademark Law, Functional Design Features, and the Trouble with TrafFix, 246 FLORIDA LAW REVIEW [Vol. 56 that TrafFix did not change the general functionality standard.8 This reading is particularly significant because the United States Patent and Trademark Office (PTO) is bound by the decisions of the Federal Circuit on such issues. 9 The PTO, therefore, is still using a competition-based functionality standard when evaluating applications to register trademarks. 10 Other courts, however, have read TrafFix as radically changing the law. 11 These courts now equate functionality with utility, a standard very different from the competition-based standard in use prior to TrafFix .12 To appreciate the significance of this split, consider the shape of a plastic spray bottle like the one used with Fantastik® cleaner or Spray ‘N Wash® laundry stain treatment. This bottle design was the subject of a 9 J. INTELL . PROP . L. 1 (2001); Timothy M. Barber, Comment, High Court Takes Right Turn in TrafFix , But Stops Short of the Finish Line: An Economic Critique of Trade Dress Protection for Product Configuration , 7 MARQ . INTELL . PROP . L. REV . 259 (2003); Michael Scott Fuller, Casenote, An IP Conundrum: Can Patent Policy and Trade Dress Law Be Reconciled? , 6 COMPUTER L. REV . & TECH . J. 303 (2002); Keeley Canning Luhnow, Note, TrafFix Devices, Inc. v. Marketing Displays, Inc.: The Problem with Trade Dress Protection for Expired Utility Patents , 1 BUFF . INTELL . PROP . L.J. 224 (2002); Alison Marcotte, Note, Concurrent Protection of Products by Patent and Trade Dress: Use of the Functionality Doctrine in Marketing Displays, Inc. v. TrafFix Devices, Inc., 36 NEW ENG . L. REV . 327 (2001); Tracey McCormick, Note, Will TrafFix “Fix” the Splintered Functionality Doctrine?: TrafFix
Load more

Recommended publications
  • When a Landmark Cannot Serve As a Trademark: Trademark Protection for Building Designs
    Washington University Journal of Law & Policy Volume 2 Re-Engineering Patent Law: The Challenge of New Technologies January 2000 When a Landmark Cannot Serve as a Trademark: Trademark Protection for Building Designs Andrew T. Spence Washington University School of Law Follow this and additional works at: https://openscholarship.wustl.edu/law_journal_law_policy Part of the Law Commons Recommended Citation Andrew T. Spence, When a Landmark Cannot Serve as a Trademark: Trademark Protection for Building Designs, 2 WASH. U. J. L. & POL’Y 517 (2000), https://openscholarship.wustl.edu/law_journal_law_policy/vol2/iss1/17 This Note is brought to you for free and open access by the Law School at Washington University Open Scholarship. It has been accepted for inclusion in Washington University Journal of Law & Policy by an authorized administrator of Washington University Open Scholarship. For more information, please contact [email protected]. When a Landmark Cannot Serve as a Trademark: Trademark Protection for Building Designs in Light of Rock and Roll Hall of Fame and Museum, Inc. v. Gentile Productions Andrew T. Spence* For many years the law has recognized the availability of buildings to serve as trademarks. A federally registered trademark exists for the art deco spire of the Chrysler Building and the neoclassical facade of the New York Stock Exchange.1 In fact, approximately one hundred buildings have federally registered trademarks.2 However, the Sixth Circuit’s decision in Rock and Roll Hall of Fame and Museum, Inc. v. Gentile Productions narrowed the scope of protection that such trademarks enjoy.3 In a 1998 split decision, the court reversed a preliminary injunction in a trademark infringement suit between the Rock and Roll Hall of Fame and Museum and Charles Gentile, a professional photographer.
    [Show full text]
  • The Doctrine of Functionality in Design Patent Cases
    University of Baltimore Law Review Volume 19 Article 17 Issue 1 Number 1 – 2 — Fall 1989/Winter 1990 1989 The oD ctrine of Functionality in Design Patent Cases Perry J. Saidman SAIDMAN DesignLaw Group, LLC John M. Hintz Rimon, P.C. Follow this and additional works at: http://scholarworks.law.ubalt.edu/ublr Part of the Intellectual Property Law Commons Recommended Citation Saidman, Perry J. and Hintz, John M. (1989) "The octrD ine of Functionality in Design Patent Cases," University of Baltimore Law Review: Vol. 19: Iss. 1, Article 17. Available at: http://scholarworks.law.ubalt.edu/ublr/vol19/iss1/17 This Article is brought to you for free and open access by ScholarWorks@University of Baltimore School of Law. It has been accepted for inclusion in University of Baltimore Law Review by an authorized administrator of ScholarWorks@University of Baltimore School of Law. For more information, please contact [email protected]. THE DOCTRINE OF FUNCTIONALITY IN DESIGN PATENT CASES Perry J. Saidmant John M. Hintztt Although the doctrine of functionality has received much attention in its application in trademark law, I courts and commentators have devoted an inadequate amount of attention to the doctrine as it applies to design pat­ ents. This Article attempts such an analysis of the functionality doctrine in the design patent context by discussing the origins of the doctrine, review­ ing the leading cases on the issue, and focusing on the underlying reasons for and purpose of the doctrine. This Article concludes that because courts have interpreted the doctrine in two nominally different ways, there is a danger that courts will indiscriminately apply different standards when determining whether a design is functional or nonfunctional.
    [Show full text]
  • (Dys)Functionality Mark Mckenna Notre Dame Law School, [email protected]
    Notre Dame Law School NDLScholarship Journal Articles Publications 2012 (Dys)Functionality Mark McKenna Notre Dame Law School, [email protected] Follow this and additional works at: https://scholarship.law.nd.edu/law_faculty_scholarship Part of the Courts Commons, and the Intellectual Property Law Commons Recommended Citation Mark McKenna, (Dys)Functionality, 48 Hous. L. Rev. 823 (2011-2012). Available at: https://scholarship.law.nd.edu/law_faculty_scholarship/623 This Article is brought to you for free and open access by the Publications at NDLScholarship. It has been accepted for inclusion in Journal Articles by an authorized administrator of NDLScholarship. For more information, please contact [email protected]. ARTICLE (DYS)FUNCTIONALITY Mark P. McKenna* TABLE OF CONTENTS 1. INTRODUCTION...................................823 II. MECHANICAL FUNCTIONALITY AND THE COMPETITIVE LANDSCAPE .................................... ...... 824 A. Pre-TrafFix Decisions and the Need to Copy ................ 825 B. TrafFix and the Right to Copy ......... ......... 827 1. Essentialityand Alternative Designs.... ..... 832 2. Essentialityvs. Arbitrary Flourish...... ...... 832 3. Right to Copy vs. Need to Copy, Still.....................833 C. The IntractableBaseline Problem.......... ...... 836 III. AESTHETIC FUNCTIONALITY ............ ............... 843 A. Design Patents and the Competitive Landscape...........843 B. Aesthetic Featuresand Competitive Need.... ..... 848 C. Functional Use and the Duality Problem..... ..... 854 IV. CONCLUSION ................................. ........ 858 I. INTRODUCTION The functionality doctrine serves a unique role in trademark law: unlike virtually every other doctrine, functionality can * Professor, Notre Dame Law School. Thanks to Stacey Dogan for helpful discussions of the ideas in this Article, and to Mark Lemley and the participants at the University of Houston Law Center's Institute for Intellectual Property & Information Law Summer Symposium in Santa Fe for their helpful feedback on an earlier draft.
    [Show full text]
  • Review of the 1999 Trademark Decisions of the United States Court of Appeals for the Federal Circuit Stephen R
    American University Law Review Volume 49 | Issue 6 Article 4 2000 Review of the 1999 Trademark Decisions of the United States Court of Appeals for the Federal Circuit Stephen R. Baird Follow this and additional works at: http://digitalcommons.wcl.american.edu/aulr Part of the Intellectual Property Commons Recommended Citation Baird, Stephen R. (2000) "Review of the 1999 Trademark Decisions of the United States Court of Appeals for the Federal Circuit ," American University Law Review: Vol. 49: Iss. 6, Article 4. Available at: http://digitalcommons.wcl.american.edu/aulr/vol49/iss6/4 This Article is brought to you for free and open access by the Washington College of Law Journals & Law Reviews at Digital Commons @ American University Washington College of Law. It has been accepted for inclusion in American University Law Review by an authorized administrator of Digital Commons @ American University Washington College of Law. For more information, please contact [email protected]. Review of the 1999 Trademark Decisions of the United States Court of Appeals for the Federal Circuit Keywords Trademark, Court of Appeals, Federal Circuit, Patent and Trademark Office (PTO) This article is available in American University Law Review: http://digitalcommons.wcl.american.edu/aulr/vol49/iss6/4 BAIRDJCI.DOC 6/19/2001 10:51 AM AREA SUMMARIES REVIEW OF THE 1999 TRADEMARK DECISIONS OF THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT * STEPHEN R. BAIRD TABLE OF CONTENTS Introduction...................................................................................1322 I. The Federal Circuit Addresses Procedural Issues ................1323 A. Standard of Review........................................................1324 B. Standing to Oppose an “Immoral” or “Scandalous” Mark ..............................................................................1326 C.
    [Show full text]
  • The Demise of the Functionality Doctrine in Design Patent Law
    \\jciprod01\productn\N\NDL\92-4\NDL403.txt unknown Seq: 1 2-MAY-17 14:35 THE DEMISE OF THE FUNCTIONALITY DOCTRINE IN DESIGN PATENT LAW Perry J. Saidman* INTRODUCTION .................................................. 1471 R I. LANGUAGE MATTERS ...................................... 1472 R II. FUNCTIONALITY AND INFRINGEMENT ........................ 1473 R A. Egyptian Goddess .................................... 1473 R 1. Markman Claim Construction..................... 1473 R 2. The New Test for Infringement .................. 1474 R B. Claim Construction, Scope & Functionality ............... 1475 R C. Recent Significant Caselaw.............................. 1477 R D. Industry Standard Utilitarian Features ................... 1479 R III. FUNCTIONALITY AND VALIDITY ............................. 1480 R A. Development of “Ornamental” and “Functional” ........... 1481 R B. The Alternative Designs Test ............................ 1483 R C. The Problem with the Alternative Designs Test ............. 1486 R CONCLUSION .................................................... 1490 R INTRODUCTION The so-called doctrine of functionality arises in both design patent valid- ity and infringement analyses. Broadly stated, the doctrine seeks to ensure that design patents do not monopolize that which should only be monopo- lized with utility patents.1 In general, a utility patent protects utilitarian con- cepts embodied in a product, while a design patent protects only the specific visual embodiment of such concepts, i.e., the product’s appearance.2 © 2017 Perry J. Saidman. Individuals and nonprofit institutions may reproduce and distribute copies of this Article in any format at or below cost, for educational purposes, so long as each copy identifies the author, provides a citation to the Notre Dame Law Review, and includes this provision in the copyright notice. * Principal, Saidman DesignLaw Group, LLC, a law firm in Silver Spring, Maryland, that specializes in legal issues involving designs and product configurations.
    [Show full text]
  • Articles Are We Running out of Trademarks? an Empirical Study of Trademark Depletion and Congestion
    VOLUME 131 FEBRUARY 2018 NUMBER 4 © 2018 by The Harvard Law Review Association ARTICLES ARE WE RUNNING OUT OF TRADEMARKS? AN EMPIRICAL STUDY OF TRADEMARK DEPLETION AND CONGESTION Barton Beebe & Jeanne C. Fromer CONTENTS INTRODUCTION ............................................................................................................................ 948 I. BACKGROUND ....................................................................................................................... 954 A. The Trademark Registration Process .............................................................................. 955 1. The Distinctiveness Requirement .............................................................................. 957 2. Classification of Goods and Services ........................................................................ 958 3. The Bar to the Registration of Marks Confusingly Similar to Already-Registered Marks ...................................................................................... 960 4. The Protection of Unregistered Marks ..................................................................... 961 B. The Finite Universe of “Good” Trademarks .................................................................. 962 1. The Conventional Wisdom Clarified ......................................................................... 962 2. The Characteristics of Good Trademarks.................................................................. 964 C. Applicants’ Mark Selection .............................................................................................
    [Show full text]
  • Functionality and Expression in Computer Programs: Refining the Tests for Software Copyright Infringement
    SAMUELSON_F&E ARTICLE (DO NOT DELETE) 1/31/2017 12:08 PM FUNCTIONALITY AND EXPRESSION IN COMPUTER PROGRAMS: REFINING THE TESTS FOR SOFTWARE COPYRIGHT INFRINGEMENT Pamela Samuelson* Abstract Courts have struggled for decades to develop a test for judging infringement claims in software copyright cases that distinguishes between program expression that copyright law protects and program functionality for which copyright protection is unavailable. The case law thus far has adopted four main approaches to judging copyright infringement claims in software cases. One, now mostly discredited, test would treat all structure, sequence, and organization (SSO) of programs as protectable expression unless there is only one way to perform a program function. A second, now widely applied, three-step test calls for creation of a hierarchy of abstractions for an allegedly infringed program, filtration of unprotectable elements, and comparison of the protectable expression of the allegedly infringed program with the expression in the second program that is the basis of the infringement claim. A third approach has focused on whether the allegedly infringing elements are program processes or methods of operation that lie outside the scope of protection available from copyright law. A fourth approach has concentrated on whether the allegedly infringing elements of a program are instances in which ideas or functions have merged with program expression. This Article offers both praise and criticism of the approaches taken thus far to judging software copyright infringement, and it proposes an alternative unified test for infringement that is consistent with traditional principles of copyright law and that will promote healthy competition and ongoing innovation in the software industry.
    [Show full text]
  • Trademark Basics
    Trademark basics • Signal a common source, or at least affiliation • Words, phrases, logos . • Federal / state regimes • Use in commerce • Law of marks is based on use of the brand on goods • Exclusivity derives from that type of use in commerce • Must: • “Affix” the mark to goods • Move the marked goods in commerce • Registration not needed – but Federal registration is highly beneficial • Service marks • Used “in connection with” services to signal common source • Certification / Collective marks Greg R. Vetter • www.gregvetter.org 1 Trademarks, Spring 2016 Trademarks Service Marks Certification Collective Marks Geographic Marks Indications Greg R. Vetter • www.gregvetter.org 2 Trademarks, Spring 2016 Trade‐Mark Cases 100 U.S. 82 (1879) • Act of 1870 (“An Act to revise, consolidate, and amend the statutes relating to patents and copyrights”); Act of Aug. 14, 1876 (“An act to punish the counterfeiting of trade‐mark goods, and the sale or dealing in, of counterfeit trade‐mark goods”) • U.S. Constitution, I.8.8: “[The Congress shall have Power] To promote the progress of science and useful arts, by securing for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries” The right to adopt and use a symbol or a device to distinguish the goods or property made or sold by the person whose mark it is, to the exclusion of use by all other persons, has been long recognized by the common law and the chancery courts of England and of this country and by the statutes of some of the states. It is a property right for the violation of which damages may be recovered in an action at law, and the continued violation of it will be enjoined by a court of equity, with compensation for past infringement.
    [Show full text]
  • Court Holds Google's Sale of Trademarks As Keywords Does Not
    Intellectual Property August 24, 2010 Court Holds Google’s Sale of Trademarks as Keywords Does Not Create Likelihood of Confusion and is Not Trademark Infringement On August 3, 2010, the U.S. District Court for the Eastern District of Virginia in Rosetta Stone Ltd. v. Google Inc., Case No. 1:09-cv-00736-GBL-TCB (E.D. Va. filed Jul. 10, 2009) ruled on summary judgment that Google’s practice of selling Rosetta Stone’s trademarks as keyword triggers to third party advertisers for use in their Sponsored Link does not create a likelihood of confusion as to the source or origin of Rosetta Stone’s products, or otherwise violate Rosetta Stone’s trademark rights. The Court did not address whether these activities create a likelihood of confusion with respect to the source of the third party advertisers’ products, however. While a number of cases, such as Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir. 2009), have held that a search engine’s sale of a competitor’s trademark as a keyword to trigger advertisements is sufficient “use in commerce” to state a claim for trademark infringement, few courts have decided whether the use of keyword advertising creates a likelihood of confusion. For example, the District Court in Hearts on Fire Company, LLC v. Blue Nile, Inc., 603 F. Supp. 2d 274 (D. Mass. 2009), held that the plaintiff sufficiently supported its claim of initial interest confusion, caused by the defendant’s use of a trademark as a trigger for its sponsored links, to defeat the defendant’s motion to dismiss, but the Court did not reach the issue of likelihood of confusion.
    [Show full text]
  • Why Trade Dress Does Not Belong on the Principal Register
    Texas A&M University School of Law Texas A&M Law Scholarship Faculty Scholarship 8-2000 The Trade Dress Emperor's New Clothes: Why Trade Dress Does Not Belong on the Principal Register Glynn S. Lunney Jr Texas A&M University School of Law, [email protected] Follow this and additional works at: https://scholarship.law.tamu.edu/facscholar Part of the Law Commons Recommended Citation Glynn S. Lunney Jr, The Trade Dress Emperor's New Clothes: Why Trade Dress Does Not Belong on the Principal Register, 51 Hastings L.J. 1131 (2000). Available at: https://scholarship.law.tamu.edu/facscholar/552 This Article is brought to you for free and open access by Texas A&M Law Scholarship. It has been accepted for inclusion in Faculty Scholarship by an authorized administrator of Texas A&M Law Scholarship. For more information, please contact [email protected]. The Trade Dress Emperor's New Clothes: Why Trade Dress Does Not Belong on the Principal Register by GLYNN S. LUNNEY, JR.* Table of Contents Introduction ........................................................................................... 1133 I. Congress's Decision To Exclude Trade Dress from the Principal Register ........................................................................ 1136 A. The Act's Plain Language Excludes Trade Dress ........... 1138 B. Congress Drafted the Act Specifically to Exclude Trade Dress ......................................................................... 1148 C. The Legislative History Regarding Trade Dress ............ 1150 D. The Contemporaneous
    [Show full text]
  • Defining the Elements of Trade Dress Infringement Under Section 43(A) of the Lanham Act
    2 Tex. Intell. Prop. L.J. 103 Texas Intellectual Property Law Journal Winter, 1994 DEFINING THE ELEMENTS OF TRADE DRESS INFRINGEMENT UNDER SECTION 43(A) OF THE LANHAM ACT Joel W. Reesea1 Copyright (c) 1994 by the State Bar of Texas, Intellectual Property Law Section; Joel W. Reese Table of Contents I. Introduction 104 II. Section 43(a) of the Lanham Act 105 A. Trade Dress Infringement Under § 43(a) of the 1946 Lanham Act 105 1. ‘False Designation of Origin‘ 105 2. ‘False Description or Representation‘ 106 3. Purely an Academic Question 107 B. Section 43(a) After the Trademark Law Revision Act of 1988 107 III. Is the Trade Dress Entitled to Protection? 108 A. Categories of Distinctiveness 108 1. Generic 109 2. Descriptive 110 3. Suggestive 111 4. Arbitrary or Fanciful 111 B. Secondary Meaning 112 1. General Definition 112 2. Secondary Meaning Required Only If Trade Dress Is Merely Descriptive 112 3. Methods of Proving Secondary Meaning 113 4. ‘Secondary Meaning in the Making‘ Doctrine 114 C. Nonfunctionality 115 1. What is Functionality? 115 2. Functionality for Trade Dress Features -- Continuum of Functionality 116 3. Criteria for Establishing Nonfunctionality 117 a. Principal Inquiry: Ability to Effectively Compete 117 b. Utilitarian Functionality Test 117 c. Aesthetic Functionality Test 118 4. Burden of Proof on Functionality 120 5. Relationship Between Functionality Doctrine and Patent Law 121 IV. Has Infringement of the Trade Dress Occurred? 121 A. What is Likelihood of Confusion? 121 B. Confusion Among Whom? 122 C. Reverse Confusion 122 D. Indicia of Confusion -- The Likelihood of Confusion Factors 123 1.
    [Show full text]
  • Trademark Protection • Distinctive • Not Disqualified • Used in Commerce
    Trademark basics • Signal a common source, or at least affiliation Trademarks Service Marks Certification Collective Marks Geographic • Words, phrases, logos . Marks Indications • Federal / state regimes • Use in commerce • Law of marks is based on use of the brand on goods • Exclusivity derives from that type of use in commerce • Must: • “Affix” the mark to goods • Move the marked goods in commerce • Registration not needed – but Federal registration is highly beneficial • Service marks • Used “in connection with” services to signal common source • Certification / Collective marks Greg R. Vetter • www.gregvetter.org 1 Greg R. Vetter • www.gregvetter.org 2 Trademarks, Spring 2016 Trademarks, Spring 2016 Trade‐Mark Cases 100 U.S. 82 (1879) • Act of 1870 (“An Act to revise, consolidate, and amend the statutes relating to patents and copyrights”); Act of Aug. 14, 1876 (“An act to punish the counterfeiting of trade‐mark goods, and the sale or dealing in, of counterfeit trade‐mark goods”) • U.S. Constitution, I.8.8: “[The Congress shall have Power] To promote the progress of science and useful arts, by securing for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries” The right to adopt and use a symbol or a device to distinguish the goods or property made or sold by the person whose mark it is, to the exclusion of use by all other persons, has been long recognized by the common law and the chancery courts of England and of this country and by the statutes of some of the states. It is a property right for the violation of which damages may be recovered in an action at law, and the continued violation of it will be enjoined by a court of equity, with compensation for past infringement.
    [Show full text]