1. Trademark and Unfair Comp. Boston College Law School September 9, 2004 Trade Dress - Part 1

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

8. 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

9. 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

10. In Re Morton-Norwich 671 F.2d 1332 (C.C.P.A. 1982) “Superior in function or economy of manufacture, which superiority is determined in light of competitive necessity to copy” Evidence of functionality Existence of utility patents Advertising touting utility Existence of alternatives Cost to manufacture

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

12. Example - Review

13. Administrative Details Next Assignment –Finish II.C - Trade Dress