1. Trademark and Unfair Comp.
Boston College Law School
January 23, 2008
Trade Dress, Functionality

2. Trade Dress & Product Design

3. Trade Dress Protection
Lanham Act § 43(a)
Any person who shall affix, apply, … or use in connection with any goods or services … a false designation of origin … , and shall cause such goods or services to enter into commerce … shall be liable to a civil action … .

4. Two Pesos v. Taco Cabana 505 U.S. 763 (1992)
Taco Cabana Trade Dress

5. Two Pesos v. Taco Cabana 505 U.S. 763 (1992)
Findings of the District Court
Taco Cabana has an identifiable trade dress
The trade dress is non-functional
The trade dress is inherently distinctive
The trade dress has not acquired secondary meaning

6. Inherently Distinctive?

7. Inherently Distinctive?

8. Policy Considerations
Harm to
Competition
Product
Design
Potential for
Confusion
Trade Dress,
Trademarks
High
Low
Generic
Descriptive
Inherently Distinctive
Distinctiveness

9. Example - Review

10. Functionality Lanham Act § 2(e)(5)
No trademark … shall be refused registration … unless it --
(e) Consists of a mark which, … (5) comprises any matter that, as a whole, is functional

11. TrafFix v. MDI 121 S. Ct (2001)

12. Functionality When is something “functional”?
Essential to the use or purpose of the article, or
Affects the cost or quality of the product
Overall policy consideration
Exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage

13. Eco v. Honeywell

14. Aesthetic Functionality

15. Au-Tomotive Gold v. VW

16. Hypos

17. Hypos

18. In re Gibson Guitar Corp.

19. Functionality - Summary
When is something “functional”?
Essential to the use or purpose of the article
Affects the cost or quality of the product
Factors to consider
Existence of utility patent
Statements in advertising
Existence of alternative designs
Cost of manufacturing

20. Hypothetical

21. Hypothetical

22. Patent, Copyright, Trademark
Useful Article
Doctrine
Computer
Software
Trademark
Product
Design
Fictional
Characters
Functionality
Doctrine

23. Administrative Details
Next Assignment
Read III.A & B
Use in Commerce
Priority and Concurrent Use