1. Establishing Protection Intro to IP – Prof. Merges 3.10.2010

2. Categorizations Trademark TENDER VITTLES ( cat food ) ROACH MOTEL ( roach trap ) CHAP STICK ( lip balm ) VISION CENTER ( optical store ) BEER NUTS ( snack food ) FAB ( laundry detergent ) BOLD ( laundry detergent ) STRONGHOLD ( nails ) CITIBANK ( banking services ) NUTRASWEET ( sweetner ) Category Descriptive Suggestive Descriptive Arbitrary Suggestive Descriptive

3. Categories of Marks Less ProtectionMore Protection Generic Denotes general class of products Unprotectible Shredded Wheat, Aspirin, Thermos, Cellophane, Car, Computer Arbitrary Bears no relation to product Automatically Protectible Descriptive Describes some characteristic/quality Protectible if secondary meaning Suggestive Suggests some characteristic Automatically Protectible

4. Statutory basis: registration of descriptive marks Except as expressly excluded in paragraphs... of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce. -- Lanham Act sec. 2f, 15 USC 1052(f)

5. Trade Dress & Product Design Trade DressProduct Design

6. Trade Dress Protection Lanham Act § 43(a), 15 USC 1125(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 ….

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

8. IPNTA 5 th p 764 n. 1 Trade dress’ is the total image of the business. Taco Cabana’s trade dress may include the shape and general appearance of the exterior of the restaurant, the identifying sign, the interior kitchen floor plan, the decor, the menu, the equipment used to serve food, the servers’ uniforms and other features reflecting on the total image of the restaurant.

9. Two Pesos (cont’d) 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

10. Sec. 1114 (Lanham Act sec. 32). Remedies; Infringement; Innocent Infringement by Printers and PublishersSec. 1114 (Lanham Act sec. 32) (1) Any person who shall, without the consent of the registrant — (a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark....

11. [I]t is common ground that §43(a) protects qualifying unregistered trademarks and that the general principles qualifying a mark for registration under §2 of the Lanham Act are for the most part applicable in determining whether an unregistered mark is entitled to protection under §43(a)

12. IPNTA 5 th at 767 The protection of trademarks and trade dress under §43(a) serves the same statutory purpose of preventing deception and unfair competition. There is no persuasive reason to apply different analysis to the two.

13. Sec. 1125 (Lanham Act sec. 43). (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, … or any false designation of origin, … which — (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods... Shall be liable

14. Inherently Distinctive?

15. What about product designs? Same issues? Any distinctions?

16. Inherently Distinctive?

17. Jeans Pocket design – no secondary meaning proven

18. Walmart v Samara Children’s clothing designs Product design as opposed to packaging or trade dress What are the requirements for establishing protection for trade dress?

19. Samara Clothing Design

20. IPNTA 5 th 771 These courts have assumed, often without discussion, that trade dress constitutes a ‘‘symbol’’ or ‘‘device’’ for purposes of the relevant sections, and we conclude likewise. ‘‘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.’’ Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 162 (1995).

21. Nothing in §2, however, demands the conclusion that every category of mark necessarily includes some marks ‘‘by which the goods of the applicant may be distinguished from the goods of others’’ without secondary meaning—that in every category some marks are inherently distinctive.

22. It seems to us that design, like color, is not inherently distinctive. The attribution of inherent distinctiveness to certain categories of word marks and product packaging derives from the fact that the very purpose of attaching a particular word to a product, or encasing it in a distinctive packaging, is most often to identify the source of the product.