Trademark 02.07.

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Review

2/7/2012 12:03:00 PM

what is the appropriate approach to take with assessment of scope of protection of trade dress (Seabrook/Abercrombie test) is trade dress treated the same as tm? Why/why not? What issue is animating the different tests applied in textual and nontextual marks Which one has the most power and is the best?

Functionality I. Introduction a. About competitiveness b. Two part trademark policy i. Consumer identification ii. Avoid unfair competition c. But should not be able to use TM to take away opportunities d. Functionality is preferred over distinctiveness e. So what should be characterized as functional? Utilitarian and aesthetic functionality i. Utilitarianfeatures which contribute to some other competitive feature of the product that if stopped competitors from using this, they would be at a disadvantage ii. Aestheticnon-reputation based commercial advantage; users drawn to the product not because of the source but the feature itself. Aesthetic value that users place on a mark? Maybe aesthetic functionality problem f. No bright line between aesthetic and utilitarian functionality II. In re Morton-Norwich Products, Inc., 671 F2d 1332 (CCPA 1982) a. Separateness doctrinemark must be separate from the merchandise to which it is applied; less of a concern now that trade dress is in effect b. Utility patent III.Wallace Int Silversmiths v. Godinger Silver Art a. Aesthetic functionality test i. Where an ornamental feature is claimed as trademark, and ii. Trademark protection would significantly hinder competition by limiting the range of adequate alternative designs, then

iii. Aesthetic functionality doctrine will deny such protection IV. Brunswick v. British Seagull Ltd.mftr of outboard motors manufacture black motors because it matches many other colors and makes the engine look smaller, and finally radiates heat faster than any other color. a. Which elements are utilitarian? Aesthetic? i. Heat? Utilitarian ii. Looks good with things? Could be utilitarian (sells well), could be aesthetic (sense of look) V. Inwood Labs v. Ives Labs, Inc. a. Functionality is in general terms, a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost of quality of the article b. What does this mean? c. Qualitexif exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage d. Desirability? Referring to aesthetic functionality, e.g. the non-reputational disadvantage VI. Vornado Air Circ. V. Duracraft Corpinteraction between patent and trademark and in reference to the functionality doctrine a. Public domainafter patent protection expires, everyone is entitled to copy the intellectual property b. Testwhere a disputed product configuration is part of a claim in a utility patent, and the configuration is a described, significant inventive aspect of the inventionso that without it the invention could not fairly be said to be the same invention, patent law prevents its protection as trade dress, even if the config is nonfunctional. c. Doesnt matter that consumers are confused, patent doctrine is the one that applies and design is now in the public domain d. Is this ok? See Traffix? e. Is every element of an expired patent no longer capable of being trade dress; are you necessarily saying that this can never be trade dress thereafter i. Problemanything characterized as a significant part of the invention simply because it was part of patent at one point ii. Former patent holders are the only ones who could not get distinctive trade dress for their former patented product

VII.

Traffix Devices v. Marketing Displays, Inc. a. Holding i. Person claiming trade dress (former patent holder) must demonstrate that the dress is nonfunctional ii. Design is functional (Inwood)

VIII. Questions a. What is the aesthetic test? i. Inwood = utility ii. Qualitex = aesthetic b.

2/7/2012 12:03:00 PM

2/7/2012 12:03:00 PM