This article briefly analyzes some of the current trends for federal registration of trade dress, including how such registrations have fared in the courts, and discusses what the future portends for trade dress registrations. Some practical aspects of the actual mechanics of registering trade dress are also addressed.

Status of Federal Trade Dress Registrations

For decades, the U.S. Patent and Trademark Office (“PTO”) has allowed registration of trade dress,[1] provided that the trade dress sought to be registered complies with certain requirements; namely, that the trade dress is either inherently distinctive or has acquired distinctive, also known as secondary meaning, and is also not functional.[2] Federal registration has been extended to such trade dress as bottle shapes; the configuration of a product, such as a Weber barbeque[3] or a Honeywell thermostat;[4] and many other examples of trade dress.[5] Even special forms of trade dress, such as a single color,[6] or a fragrance,[7] have been registered in the PTO, though many such attempts have been unsuccessful.[8] Many attorneys and companies have not even aware that trade dress could, like trademarks in general, be federally registered. Indeed, until fairly recently, very few businesses had sought to register their trade dress federally, and fewer still had been successful.[9]

Currently, in the wake of the recent U.S. Supreme Court’s decisions favoring protecting of trade dress in Two Pesos, Inc. v. Taco Cabana, Inc,.[10] and Qualitex Co. v. Jacobson Products Co.,[11] it appears that the floodgates have opened. It should be no surprise that a rush of trade dress owners have taken advantage of the opportunity to register their trade dress,[12] albeit with mixed results in the PTO.[13]

Restrictions on Registration of Product Designs

Prior to the Supreme Court’s decision this year in Wal-Mart Stores, Inc. v. Samara Brothers, Inc.[14] the PTO allowed federal registration of products designs, such as bottle shapes or the configuration of products, if the trade dress was either inherently distinctive, or had acquired distinctiveness, and was not de jure functional.[15] What the PTO generally calls acquired distinctiveness is usually referred to by the courts as secondary meaning.

After the Supreme Court’s Wal-Mart[16] decision in March 2000, at least one type of trade dress, product designs without acquired distinctiveness, apparently can no longer be federally registered, though no specific change has been made yet to the Trademark Manual of Examining Procedure used by the PTO examiners. In contradistinction, for product designs which have acquired distinctiveness, it could be business as usual for trade dress owners in the PTO. Nonetheless, the future probably will bring some curtailment of all product design trade dress in the PTO, or at least stricter enforcement of the entry barriers to the exclusive club of registered trade dress.

Test for Functional Trade Dress

Trade dress which is de jure functional can never be federally registered, while trade dress which is merely de facto functional may be federally registered. Basically, if a product design has such utility that it constitutes a “superior” design which competitors must use to compete effectively, then it is de jure functional, and unregistrable.[17] In contrast, de facto functionality means merely that the trade dress has some utilitarian purpose; for example, most bottles are de facto functional because they will hold contents, but particular bottles may also be de jure functional.

The PTO bases its determination of whether trade dress sought to be registered is de jure functional upon the four factor test developed by the former Court of Customs and Patent Appeals in In Re Morton-Norwich Products, Inc..[18] The four factors are: 1) whether a utility patent exists that discloses the utilitarian features of the design; 2) whether the trade dress owner touts the utilitarian advantages of the design in its own advertising materials; 3) whether there are sufficient alternative designs available to competitors; and 4) whether the design results from a relatively cheaper or simpler manufacturing method. [19]

These factors are normally addressed by the trade dress applicant’s submission of declarations from its own executives, designers or salespeople; its customers or suppliers; industry experts; and sometimes even competitors, together with appropriate exhibits such as any existing or expired patents or alternative designs and their comparative cost to manufacture. The burden of proof is on the PTO to show that the trade dress in question is de jure functional. Nonetheless, the trade dress owner must reasonably cooperate with the PTO’ s request for information, helpful or not, or registration may be refused on that ground alone.[20]

The alternative designs need not be commercially available to be considered. Even if some alternative designs are available to competitors, so that competition is not totally foreclosed, this fact alone is insufficient where the alternative designs are fairly limited in number. In other words, the design in question does not need to be the only, or the best, possible design to be de jure functional. The PTO has also recognized that for some products, such as bottles, an unlimited choice of shapes may be available, but for others, a far more limited variety may exist.[21]

If a design patent exists or did exist covering the trade dress in issue, the patent should be introduced into evidence to the PTO. While some courts will afford such a patent presumptive weight that the design is not functional, the PTO’s position is that it is some evidence of non-functionality, but does not, by itself, establish non-functionality.[22]

Establishing Distinctiveness for Trade Dress in the PTO

Trade dress which is held de jure functional may never be registered even if it has acquired distinctiveness under Section 2(f) of the Lanham Act. Conversely, if trade dress has acquired distinctiveness, it will be federally registered unless the PTO carries it burden of proving that the trade dress is de jure functional.

Trademark Rule 2.41(b) provides that a mark, or here trade dress, which has been in substantially exclusive and continuous use in commerce by the applicant, according to an appropriate declaration, prima facie has acquired distinctiveness. However, a Section 2(f) declaration is often also bolstered by such evidence as declarations as to the exact length of time the trade dress has been in use, the total amount of sales in the past, the amount of annual sales, the amount spent advertising the trade dress, and samples of the trade dress advertisements which tout the trade dress, so-called “image” advertising.

Inherently distinctive trade dress, at least if it is not a product design, is registrable, and trade dress such as packaging generally is much easier to register. The PTO adheres to the test of inherent distinctiveness formulated in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd.,[23] rather than the traditional Abercrombie test[24] applied by the Supreme Court to restaurant décor trade dress in Two Pesos.[25]

Trade Dress Practice in the PTO and Effect In Federal Courts

The PTO has a judicial expediency policy of deciding, at the examiner and the Trademark Trial and Appeal Board levels, both the issue of acquired distinctiveness and the issue of de jure functionality. Thus, if it is reversed or affirmed on one ground only, the other ground has also been decided already. The trade dress owner should, therefore, make all of its arguments on both issues during the prosecution of the application.

Often the PTO will reject the trade dress as not inherently distinctive, and require evidence of acquired distinctiveness. Before the Wal-Mart decision negating inherently distinctive trade dress, it made sense for the applicant to expressly reserve its rights and its position that, by submitting such a claim of acquired distinctiveness, it was not thereby abandoning the original position of inherent distinctiveness. Now this approach may be moot, unless there is an arguable position that the trade dress would not be considered a product design, but would be more akin to product packaging or another form of trade dress.

If a business has obtained a victory in a court case involving the trade dress sought to be registered, this fact should certainly be brought to the attention of the Trademark Examining Attorney handling the application, but a consent decree, unlike an adjudicated decision on the merits, may not be given much weight.[26] On the other hand, the existence of a federal trade dress registration, while not a magic talisman to ward off all challenges in federal court litigation,[27] or even in the PTO,[28] is potent medicine,[29] and will often carry the day. Certainly a federal trade dress registration will make any validity challenge an uphill battle for one’s competitors who choose to copy distinctiveness trade dress.

Various courts have at times confused their terminology or trade dress law itself by indicating that trade dress may not be federally registered, but as the foregoing PTO and the Supreme Court precedents demonstrate, trade dress was and still is federally registrable so long as it meets all of the trade dress sui generis requirements for registration. Whenever possible, federal trade dress registration should be attempted, despite the likely future trend in the PTO to make some such registrations more difficult to obtain in light of the Supreme Court’s most recent trade dress edict. Now that trade dress is specifically enumerated in the federal trademark laws, more and more trade dress registrations should result, and many of those will become incontestable.

Mr. Levin is the founder and head of Laguna Beach’s Levin Intellectual Property Law Group, www.LevinIP.com, and the author of Trade Dress Protection (2d ed. Thompson Reuters West 2009)(updated annually since 1996). He has been lead trial counsel in numerous trademark and trade dress litigations, and has been retained as an expert witness in trademark and trade dress cases. This article originally appeared in the National Law Journal.

[1] Trade dress includes product designs or configurations, packaging, and even the distinctive decor of a restaurant or a building. Trade dress is “the total image of a product [or service], including features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques.” John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (11th Cir. 1983).

[2] See, e.g., In re World’s Finest Chocolate, Inc., 474 F.2d 1012 (C.C.P.A. 1973); Ex parte Haig & Haig Ltd., 118 U.S.P.Q. 229 (Comm’r Pats. 1958).

[3] In re Weber-Stephen Products Co., 3 U.S.P.Q. 2d 1659 (T.T.A.B. 1987).

[4] In re Honeywell, Inc., 8 U.S.P.Q. 2d 1600 (T.T.A.B. 1988).

[5] In re Owens-Corning Fiberglas Corp., 774 F.2d 1116 (Fed. Cir. 1985)(collecting examples).

[6] Owens-Corning, supra (color pink registration for insulation upheld).

[7] In re Clarke, 17 U.S.P.Q. 2d 1238 (T.T.A.B. 1990).

[8] In re Howard S. Leight and Associates Inc., 39 U.S.P.Q. 1058 (T.T.A.B. 1996)(coral colored ear plug color found to be unregistrable as functional); British Seagull, Ltd. V Brunswick Corp., 28 U.S.P.Q.2d 1197 (T.T.A.B. 1993)(refusing registration of color black for boat engines).

[9] See, e.g., In re American National Can Co., 41 U.S.P.Q. 2d 1841 (T.T.A.B. 1997)(registration refusal upheld for fluted beverage container).

[10] 505 U.S. 763 (1992).

[11] 514 U.S. 159 (1995).

[12] See generally, W. Levin, Trade Dress Protection, Section 26.01 et seq. (West Group 1996).

[13] Compare In re EBSCO Industries Inc., 41 U.S.P.Q. 2d 1917 (T.T.A.B. 1997)(registration allowed for distinctive “stickbait” fishing lure design) with In Re EBSCO Industries Inc., 41 U.S.P.Q. 2d 1913 (T.T.A.B. 1997)(refusing registration for same company’s “chugger” fishing lure design as de jure functional).

[14] 529 U.S. 205 (2000)( holding that product designs, like color, can not be inherently distinctive).

[15] See, e.g., In re Babies Beat Inc., 13 U.S.P.Q. 2d 1729 (T.T.A.B. 1990)(holding that company’s inherently distinctive baby bottle design was de jure functional).

[16] Wal-Mart, supra.

[17] In Re Lincoln Diagnostics Inc., 30 U.S.P.Q.2d 1817 (T.T.A.B. 1994)(refusing registration for configuration of medical apparatus for multiple skin tests for allergies as de jure functional).

[18] 671 F.2d 1332 (C.C.P.A. 1982).

[19] Id. See also, Lincoln Diagnostics, supra.

[20] Babies Beat, supra at 1731. See also, Trademark Rules of Practice, Rule 2.142© and Rule 2.61(b).

[21] In Re Vico Products Manufacturing Co., Inc., 229 U.S.P.Q. 364 (T.T.A.B. 1985); In Re Bose Corp., 772 F. 2d 866 (Fed. Cir. 1985).

[22] In re R.M. Smith, Inc., 219 U.S.P.Q. 629 (T.T.A.B. 1983), aff’d, 734 F.2d 1482 (Fed. Cir. 1984); Vico Products, supra.

[23] 568 F.2d 1342 (C.C.P.A. 1977).

[24] Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976).

[25] Two Pesos, supra.

[26] Lincoln Diagnostics, supra at 1825 & n. 11.

[27] Aromatique, Inc. v. Gold Seal, Inc., 28 F. 3d 863 (8th Cir. 1994), rev’g, 833 FR. Supp. 739 (E.D. Ark. 1993)(federally registered trade dress for potpourri ordered cancelled).

[28] Kasco Corp. v. Southern Saw Service, Inc., 27 U.S.P.Q.2d 1501 (T.T.A.B. 1993)(registration cancelled for green colored saw blade wrapper).

[29] Kohler Co. v. Moen, Inc., 12 F.3d 632 (7th Cir. 1993)(upholding federal registration for water faucet and faucet handle design).

Written by William Levin · Categorized: Articles

By William E. Levin

Attorney at Law

TCan An Advertising Slogan, Jingle or Tagline Be Protected, and, If So, How?

Many businesses know that their names and logos can be protected as trademarks, but they often are not so certain about protection of secondary references they use, such as slogans, jingles, taglines, or the like. Thus, the issue discussed here is whether such slogans can be protected, and if they can, how can they be protected.

The good news is that slogans and similar secondary references can, in many circumstances, be protected, primarily under trademark law, although generally not under copyright law or patent law. There are numerous instances in which the slogan or jingle of one company has been protected against literal copying or even a similar slogan which brings to mind the first one. Such mere “association” may itself be stopped within certain limits.

More good news is that it is not necessary to “register” such slogans to protect them, or even actually to use them first. That’s right, a fairly recent change in the federal trademark laws allows you to file an application to register a slogan (or other trademark) based on your “intent” to use it, even though you haven’t used it yet. Your intended slogan will then normally be protected, as against use of similar one by anyone anywhere in the United States, if such use began after the filing date of your application. Without such an “intent to use” application – which is not available at the state level yet—ownership normally goes to the first person to use a particular slogan.

Nonetheless, registration, whether in the United States Patent and Trademark Office, or in the state of California or another state, is extremely helpful when enforcing your rights. However, in most for-eign countries, use alone will create no rights, and registration is essential to receive any protection. The registration process will be the subject of a future article.

As to how such slogans are protected, both California and federal law provide appropriate means of protection. Remedies for usurping someone else’s slogan, by use of an identical or similar slogan (usually called ‘infringement,’), range from an immediate injunction stopping the use of the infringing slogan, to an award of damages, if any, caused by such infringement. The profits made by the infringing company can also be awarded under appropriate circumstances. In one major case, a large consumer food manufacturer was ordered to pay about $46 million dollars for using another’s trademark as part of its own advertising slogan.

Indeed, the available relief also includes an award of up to three times the actual damages if the infringement is a deliberate or “willful” infringement or was done in bad faith. More extreme remedies can include an award of many times the actual damages, to “punish” the copy cat, and seizure, as soon as a lawsuit is filed, of all materials which use the offending slogan. An even more drastic option may include actual recall of the products using the infringing slogan or an order to send out written notices, with an offer to return the products for a refund, to customers who purchased the offending products.

Although products are the usual problem, services businesses generally have the same rights. For example, a beer manufacturer using the slogan, “Where there’s Life, there’s Bud” had protectable rights when an exterminating company adopted a similar slogan, “Where there’s Life, there’s Bugs.” This is an example of a “Products” slogan. An example of a service slogan which has been protected more than once is the well-known “The Greatest Show on Earth” jingle used by the Ringling Bros-Barnum & Bailey Circus. The circus primarily provides entertainment services, just as, for example, a musical group does, rather than selling products, although these days, almost everyone has moved into “merchandising” products such as T-shirts, stickers, buttons, and similar objects using well-known slogans and trademarks.

In most cases, the right to protection requires ownership of a valid slogan which is either immediately distinctive or which, over time or due to substantial advertising or publicity, has become associated with your business. The second requirement is that the use of the other slogan must be likely to cause confusing in the marketplace. This can mean that potential customers will mistakenly believe that your company is the actual source of the other company’s products or services, or that there is some type of loose affiliation or relationship between the two companies or their products, or that one company has licensed or given its consent to the other’s use of a similar slogan.

However, there is a very notable exception to the “confusion” requirement, where a trademark or slogan can be protected even against use by another company in a completely unrelated business where there is no “likelihood of confusion.” This exception is called “dilution.” Dilution occurs even in the absence of any competition or likelihood of confusion, such as where suits of POLAROID for unrelated products, like POLAROID cars, or BUIC birth control pills, might reduce the identity or strength of the trademark by its owner or bring it into disrepute. About 27 states currently have a “dilution”law, including California, New York and Florida. Those states laws are now also helped by a federal dilution law which finally became effective on January 16, 1996. Under this federal law, if your slogan or jingle is “famous”—whatever that means, which is the subject of considerable debate in the courts—then it will be protected against dilution under certain conditions. Dilution also applies to famous trademarks.

Using the previous example of a fairly well-known slogan, THE GREATEST SHOW ON EARTH, its owner, Ringling Bros., recently sued the state of Utah in federal court in Virginia, for using the similar slogan, THE GREATEST SNOW ON EARTH, to promote Utah’s obvious natural attraction and encourage visitors to come its ski resorts. Ringling Bros. Had previously registered its slogan in the United States Patent and Trademark Office, but had not been able to stop Utah from also registering its similar slogan. The court ruled that under the new federal dilution law, the owner of a famous slogan could stop the use not only of an identical slogan, but also use of a slogan which was similar, but not identical. In another case, however, a court in New York refused to stop, at least on a preliminary basis, the use of THE GREATEST BAR ON EARTH by a bar, finding neither dilution nor likelihood of confusion under the particular facts of that case. Perhaps fortunately for Laguna Beach, no one has yet adopted a slogan like THE GREATEST PAGEANT ON EARTH.

Written by William Levin · Categorized: Articles

  • William Levin

Can a family name, like Gallo, be protected? And what are the limits of such protection? People’s last names, or surnames, present a thorny issue in trademark law. Family names can be protected, (the short answer is yes), but under what circumstances?

People’s last names, also called surnames, present a thorny issue in trademark law. Thus, the subject of this article is whether such family names can be protected, (short answer: yes), and under what circumstances. A natural corollary is what limits exist on such protection? These issues seem to come up quite often before the courts and in the Patent and Trademark Office. Perhaps it is because many business owners like to use their family names, either as part of the corporate name or trade names, or as a separate trademark.

I have had the privilege of representing some large corporations which are based on a family name, including, to name a few, MCKESSON Corporation (formerly FOREMOST MCKESSON) in San Francisco, MARTINELLI’S apple juice (S. Martinelli & Company), the name of my favorite apple juice, FOSTER FARMS (Foster is the family name), KAISER PERMANENTE, and SEE’S CANDIES, based on Mary See whose picture still appears on many products. In fact, it was a recent trip to meet with one family about their business which prompted me to think that this might be a good topic. Many businesses struggle with the use of the surname of the owner, and there are a lot of misconceptions and myths in existence. One of them goes like this: We can never protect our family name in a business setting, others with the same name can always use their name. Wrong!

First of all, surnames can be federally registered as trademarks in the United States Patent and Trademark Office, provided that they are not “primarily” “merely” a surname, or, even if they are, they have become distinctive or associated with a particular company or its products. The laws in many foreign countries are similar, although in some countries it can be quite difficult to register family names.

The first step should always be a search to see if someone else, including someone with a similar or the same family name, is already using or has already registered that name as a mark. For example, if a new business owned by a named John Smith, wanted to start a cough drop company and call it SMITH BROTHERS, look out! One individual apparently changed

his last name to HYATT, and used that name for legal services, ultimately doing legal battle with the HYATT hotel chain over the use of this somewhat uncommon surname. And whether a family name is common or rare is a factor in how well and under what circumstances it will be protected.

A few years ago, the highest federal appellate court in California, the Ninth Circuit, discussed the rules of the family name game in a case involving the famous GALLO family, which, the Court mentioned, was the best-selling brand of wine in the United States. The older brothers, Earnest and Julio Gallo, owned GALLO Winery and used the GALLO name as a trademark for their wines. The younger brother, Joseph Gallo-and his son Michael Gallo had gone into the cheese business using the GALLO name as his trademark. Problems, and expensive

litigation, eventually erupted. The moral of this case, discussed below, is that not only

strangers with the same name can sometimes be prevented form using their family name in a competing business, but even other family members may be stopped in a non-competing business, depending upon the circumstances. Many courts have ruled that adding a first name, such as Joseph to GALLO, may not be sufficient to avoid confusion in the marketplace.

The court in the GALLO case observed that it arose “out of a tortuous family history apparently involving sibling rivalry on a grand scale. The relevant facts date back nearly a century.” Of course, family name disputes arise in far less grandiose situations, as mundane as when John Jones wants to start a printing company called JONES Printing. But in Gallo, the father, Joseph Gallo, Sr., after having immigrated to Northern California in the early 1900s, apparently made the mistake of having three children, who later became the parties to this lawsuit. According to the Court, as this tragic story goes, the father, who “had a brush with the law for bootlegging during Prohibition,” later took his own life and that of his wife due to the drop in grape prices caused by The Great Depression. The two older brothers then took over the business in which the younger brother, only 13 at the time his parents died, was not involved.

Later, in 1979, the GALLO Winery sued another business which used GALLO SALAME for selling Salami and other prepared meat products and sliced cheese. Nobody in the Gallo Salame company had the name of Gallo, but the company had the name of Gallo, but the company registered GALLO as part of its trademark in 1970. Utilizing a common settlement technique in trademark cases, Gallo Salame assigned its federal registration that included GALLO to the GALLO Winery, as part of the settlement of the suit, and GALLO Winery in turn “licensed” Gallo Salame to continue to use the GALLO SALAME trademark for the same products. A “win-win” situation. Apparently the trial court believed that many consumers believed that Gallo Salame’s cheese products were “put out by the same company that put out” GALLO wine, that is, infringed on GALLO Winery’s rights. Rack up one court battle in favor of protecting the family name, even for a different business, not run by an individual bearing that family name.

GALLO Winery did not object when brother Joseph used his full name, Joseph Gallo, for vineyards and a dairy product with the name GALLO CATTLE COMPANY, but they were not happy when he expanded into sales of cheese to consumers under the trademark JOSEPH GALLO. Apparently GALLO SALAME was not happy about this either. Ultimately the trial judge ruled that Joseph Gallo could not use GALLO for retail cheese at all or in advertising, because such usage infringed on the GALLO trademark for wines and unfairly competed with GALLO Winery and “diluted” its rights.

Some of the ground rules discussed by the appellate court are that one does not have an absolute right to use one’s personal name as a trademark. Nonetheless, court are “reluctant” to stop an individual from using his or her own name in a business if, and it is an important IF, that individual has not attempted to confuse the public by using that name. Even if the individual has not attempted to cause confusion or capitalize on another’s trademark, his or her use may still be limited by a carefully crafted injunction designed to balance the ability to use one’s own name against the risk of public confusion from such usage. The court held that this standard had been met since Joseph Gallo could still use JOSEPH GALLO on wholesale, but not retail, sales of cheese, an as a trade name, including Gallo Cattle Company. However, the Court did narrow down the scope of the injunction to the extent that it might preclude use of GALLO for any product, ruling that this was too broad, and could not be determined if and when the GALLO name was used on products other than cheese and wine.

Personal names, to be protected according to the court, must have “secondary meaning;” that is, they must be associated with a particular source or sponsor by consumers. GALLO was determined to be a “strong” trademark due to the extensive advertising, promotion and long usage. Thus, a family name can become a strong, protectable trademark, and under the right circumstances, even a family member can be prevented from using his or her own.

Written by William Levin · Categorized: Articles

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