AIPLA Firm Logo American Intellectual Property Law Association PRESENTED BY GEORGE W. LEWIS JAPANESE PATENT OFFICE APRIL 7, 2014 RECENT DECSIONS BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD ON REGISTRATION OF TRADE DRESS

AIPLA Firm Logo Background バックグラウンド 米国法典第 15 編（ランハム法）商標の定義 “any word, name, symbol, or device, or any combination thereof... いかなる言葉、名前、シンボル、 又はデバイス（工夫）、又はそれらの組み合わせ a) used by a person... 人によって用いられる to identify and distinguish his goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods,...” (15 U.S.C. § 1127) その者の商品を他の製造者又は他者の販売から識別し て特定し、その商品の供給源を示す …

AIPLA Firm Logo Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162 (1995) (cont’d) 最高裁 Qualitex 事件. “[T]he language of the Lanham Act describes [the universe of things that can qualify as a trademark] in the broadest of terms... since human beings might use as a ‘symbol’ or ‘device’ almost anything at all that is capable of carrying meaning, this language, read literally is not restrictive” 人は殆ど全てのものにシンボルやデバ イス（工夫）を用いるのでこの規定の文言そのも のは制限的ではない ― Qualitex v. Jacobson Prods. Co., 514 U.S. 159, 115 S. Ct (1995)

AIPLA Firm Logo Trade dress is registrable if the matter sought to be registered is : トレードドレスは下記の場合登録可能となる (1) inherently distinctive or has acquired distinctiveness; and 本質的に識別力がある か、又は識別力が得られており、且つ (1) is not functional. 機能的ではない場合

AIPLA Firm Logo INHERENT DISTINCITVENESS 本質的識別力 Three following factors are to be considered in assessing a package design whether the designs at issue are inherently distinctive: 包装デザインに本質的な識別力があるかについ ての３つのファクター (1) whether the packaging is a common basic shape or design; 包装は、普通の基本的形又はデザインを有しているか (2) whether it is unique or unusual in the particular field, and 特定の分野においてユニーク又は非通常的であるか (3) whether it is a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods. 特定の区分の商品について普通に用いられており、 且つよく知られた形の外装を少し洗練させたに過ぎないもの か否か

AIPLA Firm Logo PROVING ACQUIRED DISTINCTIVENESS LITIGATION 識別力が得られたことの証明 Acquired distinctiveness requires proof that the consuming public associates the mark with a single source. 識別力が得られたという立証の為 には、消費者がそのマークを見て、 １つの供給源を連想するか否かで ある

AIPLA Firm Logo A feature is functional if it: 特徴が、もし下記の場合は機能 的である is essential to the use or purpose of the product, or 商品の使用ないし目的の為に必須である it affects the cost or quality of the product and 商品のコストや品質に影響を及ぼす would put competitors at a significant non-reputation related disadvantage. 競争企業に対して、名誉に影響し ない不利益を被らせる the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered; the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered; advertising by the applicant that touts the utilitarian advantages of the design; advertising by the applicant that touts the utilitarian advantages of the design;

AIPLA Firm Logo REGISTERED PRODUCT DESIGNS candy, chocolate exercise and toy hoop brackets made of metal for attaching traffic signals to mast arms fabric for manufacturing merchandise to be sold at military exchanges

AIPLA Firm Logo AESTHETIC FUNCTIONALITY - Refusal of Black Color for Floral Packaging (In re Florists’ Transworld Delivery, Inc., 106 USPQ2d 1784 (TTAB 2013) [precedential] AESTHETIC FUNCTIONALY – NOT REGISTRABLE Applicant sought to register a purported mark consisting of the color black applied to packaging for flowers The color black "serves an aesthetic function" when used for floral packaging; there exists a strong competitive need to use that color in order to convey a particular message to the recipient of the flowers. The color black may communicate elegance or luxury, or may have significance "on somber occasions, such as in the context of death.” A design feature is prohibited from registration if the exclusive appropriation of that feature would put competitors at a significant non-reputation related disadvantage.

AIPLA Firm Logo "3-click" Sound Mark for Eyeglasses - In re Sutro Product Development, Inc., Serial No (August 1, 2013) [not precedential] Applicant sought to register on the Supplemental Register, a sound mark for "eye glasses; optical glasses; [and] sun glasses," the mark comprising "a series of three, regularly spaced, repeated clicks, wherein the clicks resemble the sound of a small object striking another metal object.” the sound produced is merely a natural byproduct of the friction created by the functional hinge, and any similar design will naturally produce a similar or even identical sound. The hinges in its eyeglasses could have been designed to not produce any sound, yet the hinge would still have all of its functional features. REGISTRABLE- Held Not Functional - while the hinge movements produce the sound, the sound is not dictated by functionality.

AIPLA Firm Logo Non-Distinctive Product Design/Packaging for Clothing In re Book to Bed, Inc., Serial No (June 21, 2013) [not precedential] NOT REGISTRABLE - Held – Non- Distinctive Applicant's applied-for mark is a "mere refinement of commonly adopted and well-known product and packaging arrangements." Despite being unique in the marketplace, it is not inherently distinctive. the mark comprises "packaging for sleepwear that consists of a transparent bag enclosing a book positioned behind matching sleepwear so that the cover of the book remains partially visible from the front of the packaging, together with a ribbon positioned directly above the book and sleepwear tying the neck of the bag. The matter in dotted lines is not part of the mark and serves only to show the position of the mark."

AIPLA Firm Logo Hershey Bar Product Configuration - In re Hershey Chocolate and Confectionary Corporation, Serial No (June 28, 2012) [not precedential] The mark is comprised of a configuration of a candy bar that consists of twelve (12) equally-sized recessed rectangular panels arranged in a four panel by three panel format with each panel having its own raised border within a large rectangle. The record included: (1) evidence that flat rectangular shape and the "scoring" of the product are functional features; (2) a utility patent claiming a method of scoring candy; (3) third-party candy bars that are flat and segmented. REGISTRABLE – NOT FUNCTIONAL The Board recognized that scoring or segmenting candy bars serves a useful purpose, noting the many examples in the record. But the Board stressed that Hershey "is not seeking to register a segmented rectangular candy bar of no particular design.”

AIPLA Firm Logo Thanks for your attention! Questions? George W. Lewis, Esq. Westerman, Hattori, Daniels & Adrian