1. Trademark and Unfair Comp. Boston College Law School September 14, 2004 Trade Dress - Part 2

2. Trade Dress & Product Design Trade DressProduct Design

3. 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

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

5. In re Weber-Stephen 3 U.S.P.Q.2d 1659 (T.T.A.B. 1987) Evidence of functionality Existence of utility patents Advertising touting utility Existence of alternatives Cost to manufacture

6. In re Weber-Stephen 3 U.S.P.Q.2d 1659 (T.T.A.B. 1987)

7. TrafFix v. MDI 121 S. Ct. 1255 (2001)

8. Policy Considerations Functionality FunctionalNon-Functional Low High Potential for Confusion Harm to Competition No Protection

9. Leatherman Tool v. Cooper 199 F.3d 1009 (9th Cir. 1999)

10. 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

11. Hypothetical

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

15. Administrative Details No class on Thursday Next Assignment –III.A Use in Commerce