Protecting the Design and Presentation of Products

Protecting the Design and Presentation of Products: Dealing With Distinctiveness and Non-Functionality

to Protect the Trade Dress

A thesis submitted to the Bucerius/WHU Master of Law and Business Program in partial fulfillment of the requirements for the award of the Master of Law and Business (“MLB”) Degree

Mauricio Vallecilla de la Espriella July 26, 2013

14.708 words (excluding footnotes and citation in text) Supervisor 1: Prof. Dr. Holger Ernst

Supervisor 2: Frau Yvonne Draheim, LL.M.

TABLE OF CONTENTS

INTRODUCTION .................................................................................................................... 1

CHAPTER 1: TRADE DRESS AS A TRADEMARK .............................................................. 2

A. What is a trademark? ................................................................................................... 2

Definition from a functional perspective ........................................................................... 2

Sources of protection for trademarks ............................................................................... 3

Different types of trademarks .......................................................................................... 4

B. What is a trade dress? ................................................................................................. 5

Definition – is it a trademark ............................................................................................ 5

Classification of trade dresses ......................................................................................... 6

CHAPTER 2: RECENT DEVELOPMENTS AND REQUIREMENTS FOR TRADE DRESS

PROTECTION ....................................................................................................................... 9

A. Recent developments of trade dress in the U.S. ........................................................ 9

Two Pesos Case ............................................................................................................. 9

Wal-Mart Case .............................................................................................................. 10

TrafFix Case.................................................................................................................. 12

B. Legal Requirements. .................................................................................................. 13

Functionality .................................................................................................................. 13

Distinctiveness .............................................................................................................. 14

CHAPTER 3: DIFFERENCES BETWEEN UTILITY PATENTS, DESIGN PATENTS AND

TRADE DRESS ................................................................................................................... 16

A. Utility patents and its difference with trade dress. .................................................. 16

B. Design patents and its difference with trade dress. ................................................ 17

CHAPTER 4: ADDRESSING THE ISSUES OF DISTINCTIVNESS AND FUNCTIONALITY

............................................................................................................................................. 20

A. First protect by design patent. .................................................................................. 20

B. From utility patent to trade dress. ............................................................................. 21

C. Be consistent with the use of the trade dress. ......................................................... 22

D. Advertising to promote the design, not to tout the benefits. .................................. 24

CONCLUSION ..................................................................................................................... 26

BIBLIOGRAPHY .................................................................................................................. 27

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INTRODUCTION

In today’s highly competitive markets, customers have a wide range of products with similar characteristics and prices to choose from, and companies need to design strategies to be able to stand out in the market and differentiate their products from those of competitors. Trademarks as a part of intellectual property rights can be a useful tool for companies to make their products stand out in these competitive markets.

Companies must explore creative ways of protecting their intellectual property in order to acquired competitive advantages in markets that are inundated with products and information (Kramer, 2003). Must companies have focused their efforts on developing traditional intellectual property rights such as patents, name marks or logo marks. However recently there has been a trend towards the protection of trade dress. Trade dress is generally described as a trademark that protects the overall impression or the “look and feel” of a product or package design (Greenberg & Johnson, 1994).

While the concept of trade dress has existed for many years, its use and development were not so common in recent years until the United States Supreme Court brought attention back to it. And companies in the United States have begun to implement mechanisms to identify their trade dresses and protect them (Bartow, 2013). The proper use of trade dress can help companies promote their product and differentiate it from others with similar characteristics; trade dress can be also useful to create an international mark that can be used to identify the same product in different markets regardless of language or geographical differences. The appropriate use and protection of a trade dress can be an element through which companies can obtain market advantages and recognition.

Trade dress can be a useful tool for companies to protect the design and presentation of their products, and to make them stand out from competitors. However success in doing so depends highly on how companies address, from the beginning, the issues related with distinctiveness and non-functionality, two of the requirements that the U.S. considers necessary for the existence and protection of a trade dress. Throughout this document I will describe, from a U.S perspective, what a trade dress is, what are its main functions and characteristics, what are the latest developments, what requirements are necessary to protect it, and how companies can address these requirements. I will particularly focus on the development of the distinctiveness and non-functionality doctrines as two elements that must be proven in order to successfully protect a trade dress and how companies can address these two issues to protect their own trade dresses.

The objective of this paper is to analyze the nature of trade dress only in the United States; and as such all of the analysis contained herein will be with reference to American federal law and legal precedents unless it is specifically stated otherwise.

The document will be divided into four chapters. In chapter one I will move from the general concept of trademarks to the concept of trade dress as a protectable trademark. Chapter two will analyze the development of the distinctiveness and functionality doctrines for trade dress and how the Supreme Court has addressed these two requirements in three cases. Chapter three will analyze the main differences between trade dress, design patents and utility patents. Finally chapter four will analyze some of the strategies companies can use to address the requirements of distinctiveness and functionality in order to be able to protect their trade dress or at least avoid weakening by their own actions their claims to protect a trade dress.

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CHAPTER 1: TRADE DRESS AS A TRADEMARK

In this chapter I will first describe the concept of trademark based on the different functions it can serve to the law and businesses. I will then describe the concept of trade dress and explain why it is considered a trademark, what its main characteristics are and how it has been classified by U.S. courts.

A. What is a trademark?

Definition from a functional perspective

Trademarks began to have an important role during industrialization and have become an important factor in international trade. Traders and manufacturers can offer customers a wide variety of products with similar characteristics, which differ in price, quality, etc. In this kind of market, consumers need guidance that allows them to make a choice between competing products. Trademarks serve to give a name to these products and identify them from those of competitors (WIPO, 2004).

There are several definitions for trademarks. According to World Intellectual Property Organization (WIPO) a trademark is any sign that individualizes the goods of a given enterprise and distinguishes them from the goods of its competitors (WIPO, 2004). Article 15.1 of the TRIPS agreement defines trademark as:

“Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks. Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use. Members may require, as a condition of registration, that signs be visually perceptible.” (WTO, 1994)

This definition identifies the primary function of trademarks, which is to distinguish the goods and services of one undertaking from those of other undertakings (Carvalho, 2010).

Even though both definitions are accurate and serve as guidance about what a trademark is and what is its main function, they fall somewhat short on what it means for commerce and businesses today.

Many practicing managers refer to the term brand instead of trademark. For these managers the term brand is broader and is more than a trademark. They identify the term brand as something that has created a certain amount of awareness, reputation and prominence to others in the marketplace. However according to the American Marketing Association (AMA) a brand is: “a name, term, sign, symbol, or design or a combination of them intended to identify the goods and services of one seller or group of sellers and to differentiate them from those of competition” (Keller, 2012). The definition created by the AMA for brands matches the given definitions of trademarks. Also, trademark law sees trademarks and brands as synonymous (Desai, 2010).

Despite the fact that trademark law treats brand and trademarks as synonymous and that the AMA definition of brand matches that of trademarks, from a business perspective, the concept of brand has many functions, and only one matches the definition of trademark. This is providing consumers with information on the product and its source in order to make a purchase decision. Companies use brands to achieve other things, for example to create reputation or provide customers with stories and images. When companies use brands to promote a product or service they are not only selling a product, they are looking to sell a brand image that appeals to consumers (Desai, 2010).

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Businesses can only succeed when customers buy the products or use the services they offer. To do this, businesses need to create and maintain a reputation. Marketing and advertisement serve the function of creating demand for the product and for marketers’ own goods. Trademarks serve as important tools to help identify the product or service (Shilling, 2011). Then with the proper combination of marketing and trademarks companies can develop a positive reputation for their products and make them stand out.

According to the functions and characteristics that trademarks have, from here forward any time the term trademark or brand is used I will be referring to the broad concept of it, one that not only considers trademarks and brands as a source identifier, but also considers the business perspective of a brand. This concept sees a trademark as a sign or combination of signs capable of distinguishing between products, identifying its source and also one that has the capacity to involve and create a reputation, image and good will for companies, products and services.

Sources of protection for trademarks

Contrary to what occurs with patents; trademarks do not need to be registered in order to obtain protection. The simple use in commerce of a trademark will create the rights and protection against imitation and other violations of the trademark. This is known as common law trademark (Shilling, 2011).

Notwithstanding that, trademarks are protected without registration, registering a trademark is worthwhile because it will increase the rights of the registrant against the infringer. The effect of registering is that the trademark will be in a public record and in case of infringement everyone is deemed to have knowledge of its existence. Once a trademark is registered the holder can identify it with the symbol ® but if the trademark is not registered it has to be identified with the symbol ™, which means that trademark rights have been asserted in the

mark, but not that a government has approved or registered it (Shilling, 2011). If a registered trade dress is not identify with the symbol ® or with an statement that is registered in the U.S. Patent and Trademark Office the owner may not be able to recover profits and damages from infringements. On the contrary, there is no statutory requirement to mark with the ™

symbol an unregistered trademark or trade dress. However, it is recommendable for the party claiming and using a trademark to notify the public and competitors that the owner is asserting trademark rights in that particular trade dress or trademark whether the trademark is registered or not. This notification is done by using the given symbols (Wilkof & Basheer, 2012).

Trademarks depend on the use in order to be legally protected. Some countries allow companies to register a trademark before using it only if the company is intended to use it in the future (Shilling, 2011). As previously stated, one of the main purposes of trademarks is to identify a product or a service in the market and to be able to associate the product with good will already earned. For this purpose to be achieved the trademark must be used in commerce, otherwise it will fail to serve one of the purposes the law has given to it. Under section 45 of the Lanham Act refers to “use in commerce”. This means bona fide use in the ordinary course of trade. Other kinds of use to preserve the trademark will not be sufficient. For effective protection, the use has to have some connection with the sale of the goods or services and with the marketing of the product; without use there would not exist any good will to protect. (Shilling, 2011).

The Lanham Act is the main law in the U.S. which regulates trademarks. The Act was created in 1946 and has been amended twice in order to update trademark laws with business practices and changes in other laws (Bartow, 2013).

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Different types of trademarks

When trademarks are mentioned, most people think of the type used to identify a particular product. However there are three other types of trademarks known as service marks, collective marks and certification marks.

Service marks work the same way for services as trademarks do for products. They identify the source of a service provider, distinguish it from other service providers and help the company to create an image and reputation regarding the service provided. Collective marks are used to indicate that the company belongs to an association or organization with the objective of creating a unified image for the product. Certification marks serve to indicate that the merchandise meets certain standard; it can be used when a distributor or seller is different than the manufacturer of the merchandise (Shilling, 2011).

Besides the above types of marks, courts have also divided trademarks into four or five categories: descriptive, suggestive, arbitrary, and fanciful. The fifth category will be generic marks however this type is not protected by trademark law so I will not consider it as a trademark or analyze it in depth. A generic mark is one that identifies a whole type of merchandise, not one manufacturer´s merchandise of that type. For example shampoo is the generic name for a hair care product and “Pantene” is a trademark for one brand of shampoo (Shilling, 2011). The other categories are entitled to protection to a greater or lesser extent by trademark law.

A descriptive trademark will be any kind of mark that merely describes the product (Shpetner, 1998). Examples of descriptive trademarks can be using the name “Big Burgers” for a burger restaurant or “Fashion Magazine” for a magazine that focuses its articles in the fashion business.

Suggestive trademarks imply or suggest certain properties of the product to which they apply (Economides, 1998). Examples of suggestive trademarks can be using the name “Velocity” for a supplier of high speed internet, or “Naturalia” for a company that sells garden equipment.

An arbitrary trademark consist of a sign that has previous direct meaning but is used in a vastly different field that there is no possibility of confusion (Ramello, 2006). known examples of arbitrary mark are “Apple” and “Orange”. Both “Apple” and “Orange” are words or marks that exist in the language and have a different meaning which have nothing to do with hardware, software or electronics; hence their use is arbitrary and would constitute an arbitrary trademark.

Fanciful trademarks consist of any novel signs that do not have any pre existing meaning (Ramello, 2006). Known examples of fanciful trademarks are Xerox and Google, both are words that didn’t exist in the dictionary and those companies decided to create them to identify photocopy machines and internet related services.

The level of protection and strength of a trademark may depend on the category it belongs to. Descriptive trademarks are the less strong and less protected ones, they may get lost in the market because competitors that have products with similar characteristics are able, to some extent, to use similar terms or marks to distinguish their products. In the example of “Fashion Magazine” a competitor such as “Vogue Magazine” may be able to describe itself as a fashion magazine or maybe use as a slogan in commercial a sentence like “the fashion magazine for the contemporary woman”.

Suggestive, arbitrary, and fanciful trademarks are considered to be inherently distinctive and their scope of protection is bigger. A descriptive trademark can obtain, with a lot of effort, time and advertisement, what is known as secondary meaning. This is the public association between the trademark and only one supplier of the goods as a distinctive identity. Then the scope of protection will be the same as for the other categories of trademarks.(Shilling, 2011)

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All these categories of trademarks have their advantages and disadvantages in the market. For example with a descriptive trademark it can be easier for a company to promote its product in the beginning because the trademark already includes a marketing message. However in the long run the trademark may not be that strong and may get lost in the market. On the other hand, with fanciful trademarks companies will need to put more effort in advertisement and marketing to tell the customers what the product is about however ultimately the trademark will be stronger and more protected (Lemper, 2012).

The above classification of trademarks is known as the Abercrombie Classification and was created by Justice Friendly in Abercrombie & Fitch vs Hunting World ("Abercrombie & Fitch Co. v. Hunting World, Inc," 1976).

This Classification serves as a test for determining inherent distinctiveness in traditional trademarks by classifying the trademark as generic, descriptive, suggestive, arbitrary or fanciful. As stated before any trademark that is classified as suggestive, arbitrary or fanciful will be considered inherently distinctive.

However some courts have observed this test does not translate as easily to certain aspects of trade dress. Courts have found the Abercrombie test can be easily applied to the cases of trade dresses that involve packages or labels, which like trademarks use names and symbols independent from the product to give information to consumers. The problem comes when courts try to apply the Abercrombie test to trade dresses consisting of product configuration because these sorts of cases involve the product itself. Courts find it difficult to determine when the shape of a product suggests the product, describes the product, or if the shape can transcend its common properties and become arbitrary or fanciful. This dilemma has led some courts to treat trade dress issues involving packaging or product configuration differently (Shpetner, 1998).

B. What is a trade dress?

Trade dresses are ubiquitous. They can be found everywhere in the market, from restaurants to clothes, from electronic devices to the food industry, and far beyond. This is because companies use several shapes, colors, sizes, and combinations of different elements in order to differentiate their products or services from those of competitors and to make customers remember and be aware of those products or services.

While the concept of trade dress has existed for several years, its development and importance in the legal and business world is fairly new. Recent court decisions have renewed the discussion and returned the attention of legal practitioners and business people to this type of intellectual property. With the recent development of trade dress issues many companies have begun to pay it attention and have tried to identify and protect the trade dresses they had. This has increased the number of trademark applications seeking protection of trade dress in the last fifteen years, at least in the U.S. With all these recent developments, trade dress rights have become some of companies´ most important intellectual property assets (Bartow, 2013).

Definition – is it a trademark?

The total image of a product and its marketing campaign, including its package, is known as trade dress. A trade dress can include the configuration or shape of the product, the product package, the colors or design used in the product or package, and the combination of all the visual elements found in the product or package (Shilling, 2011). In other words, trade dress refers to the combination of all elements that creates the visual appearance in which a products or service is offered to the public.

Some authors, like Darius C. Gambino and William Bartow, consider trade dress as a separate legal concept from trademarks but still identify it as a type of intellectual property.

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For these authors trademarks are words, phrases, logos, or a combination of these elements, while trade dress includes more three dimensional shapes and color schemes. They recognize some common elements in both trademarks and trade dress but consider that there are enough differences to build a separate body of law. However, this authors believe that trade dresses are brands (Bartow, 2013).

Notwithstanding what these and other authors may consider, the concept and protection of trade dress is considered to be a trademark within legal statutes, at least in the U.S. To avoid this discussion, at the beginning of this chapter I developed a functional definition of trademark that merged with the concept of brand with the legal and economical functions of the trademark. According to the said functions of a trademark, it can be stated that a trade dress is a trademark because it serves to distinguish between products or services, identifies the source of products or services, and also has the capability of creating an image and good will for the companies, products and services that use the trade dress.

Trade dress then will be a trademark involving the appearance of a product or service that includes features such as shape, size, color, texture, graphics and even sales techniques. Trade dress includes the appearance of the product as well as that of the container and all elements that create the visual image by which the product is presented to the public (Wilkof & Basheer, 2012)

Classification of trade dresses

As discussed above, in the section “different kinds of trademarks”, the difficulty in analyzing the distinctiveness of all trade dresses under the Abercrombie test, has led the courts to classify trade dresses between two and sometimes even three categories: product configuration, product packaging and product color. I will not analyze the latter in depth as a separate category, because I consider this “category” of trade dress can be located in either of the other two depending on each individual case. A product package trade dress can consist of the color of the package and the same will apply for a product configuration.

Courts treat both categories of trade dress very differently; therefore how companies classify their trade dress and present it to courts is of paramount importance in winning or losing a case. If the trade dress is classified as product packaging, its holder would not necessarily have to prove the secondary meaning and the trade dress may be consider de facto as inherently distinctive. However if the trade dress is classified as product configuration, then distinctiveness will be proven via secondary meaning (Bartow, 2013).

The line between product configuration and product packaging is often very hard to define. In the case of Wal-Mart Stores, Inc vs Samara Brothers, Inc, the court commented that the well

known Coca Cola bottle may be consider as product configuration by some consumers, like collectors or those who prefer to drink from a bottle than a can, but may also be consider product packaging to other consumers. In these challenging cases, courts will typically lean towards classifying the trade dress as product configuration and secondary meaning would need to be proven ("Wal-Mart Stores, Inc. v. Samara Brothers, Inc," 2000).

Due to the difficulty in establishing the line between product configuration and product packaging, the classification of a trade dress may depend highly on how the trade dress is described by its owner (Bartow, 2013). A comparative analysis of two cases made by Darius C. Gambino and William L. Bartow is highly illustrative in showing how this description may affect classification. They compare the case of Leviton Mfg. Co vs Universal Security Instruments, Inc with the case of Fiji Water Company LLC vs Fiji Mineral Water USA, LLC.

In the Leviton case, the plaintiff claimed trade dress protection due to the color and configuration of an electrical outlet. The outlets used the colors almond, ivory, brown and gray, and had a unique front face plate configuration. In its claim, the plaintiff described the trade dress simply as: “the outward appearance of the outlet face plate”. The court found that

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these elements (color and product configuration) cannot be inherently distinctive and required the plaintiff to show secondary meaning (Bartow, 2013).

In the Fiji Water case the plaintiff defined its trade dress in more detail, and described every

element of the trade dress, including: a bottle with dominantly square shape, a blue cap, a transparent outer front label with pink accent in the lower right hand corner, a depiction of a blue background and palm fronds on the inside of the back label, a three dimensional effect created by the transparent label on the front panel of the bottle revealing the inner side of the back label, a raindrop on the front label, a statement on the front label, and prominent use of the word FIJI in block white lettering with metallic outline around the letters. In this case, the court found inherently distinctive product packaging and the plaintiff did not need to prove secondary meaning (Bartow, 2013).

The comparison between the two cases clearly shows how the description of the trade dress can affects its classification. In the Fiji Water case the plaintiff could have described the trade

dress simply as “a square water bottle” and most likely the courts would have classified it as product configuration and it would have had to prove secondary meaning. Conversely, in the Leviton case the plaintiff could have describe the outlet in more detail and in the context of

the packaging in which it was sold, thus classifying it as product package trade dress so it would not have to prove secondary meaning (Bartow, 2013).

Another strategy to avoid proving secondary meaning in court is by registering the product configuration trade dress. Trademarks in general do not need to be registered to be protected. This rule applies for trade dresses regardless of whether it is product configuration or product packaging. Nonetheless, registration of a product configuration trade dress is highly recommended to avoid the costs and need to prove secondary meaning in court (Bartow, 2013).

Product configuration trade dress can be defined as the shape and overall appearance of a product. To be protected in court or registered it needs to have earned secondary meaning. To acquire secondary meaning the product does not need to be necessarily famous or well known. A product configuration trade dress can develop secondary meaning within a niche or well defined group of consumers or within an industry. Known examples of what courts and registration offices have considered to compromise a product configuration trade dress are: the shape of Ferrari cars1, the iPod Touch2, and the Gibson´s “SG”3 guitar produced by Gibson Guitar Corp which has other guitars also protected with trade dress (Bartow, 2013).

When referring to product package trade dress, many people believe that this term may reference the box, bag, wrappers or container a product is presented in. However based on what courts have found and defined as product package trade dress, this concept goes beyond just the wrapper or box in which a product is presented. A product package trade dress can be defined as the overall “look and feel” of a product (Bartow, 2013).

In the context of product package the overall look and feel of packaging can be protected as a trade dress. However this can also include the decoration and layout of restaurants, hotels, venues, shops and a variety of other locations, which can all obtain protection in this manner. This protection can be given either to the internal decoration of the business or to the external decoration such as architectural elements. Known examples of what courts and registries have considered to comprise product packaging are: the format of Reader´s Digest magazines4, the uniform of the Dallas Cowboys cheerleaders5, the shape of the buildings of

1 Ferrari S.P.A. Esercizio v. Roberts

2 U.S. trademark Reg. No. 3.457.218


4 Reader´s Digest Ass´n vs. Conservative Digest

5 Dallas Cowboys Cheerleaders, Inc vs. Pussycat Cinema, ltd

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Walgreen drugstores6, and the overall exterior look of the Wynn Hotel7 in Las Vegas (Bartow, 2013).

As shown throughout this section, the classification of trade dresses between product package and product configuration is a construction of the American courts created to address the concept of distinctiveness and to define when a trade dress needs to be prove secondary meaning and what can be considered as inherently distinctive. The examples shown evidence no clear criteria about classification of trade dresses. It all depends on how well the owner of a trade dress defends its case in courts or registries and how well this owner describes its trade dress to make it seem inherently distinctive and hence classify it as a product package trade dress in order to avoid needing to prove secondary meaning. Therefore when companies and lawyers identify a trade dress they should formulate a strategy to describe the trade dress in a detailed way, making it seem inherently distinctive to avoid the costs and uncertainty that attempting to protect a trade dress via secondary meaning can carry.



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CHAPTER 2: RECENT DEVELOPMENTS AND REQUIREMENTS FOR TRADE DRESS PROTECTION

In Chapter 1 I described what a trademark is and how trademarks can be distinctive and how they are categorized, I also described how trade dresses have been classified into two categories and how this classification is mainly made on the basis of the trade dress being considered inherently distinctive or not. In this chapter I will begin be describing what has been consider by many authors as the three latest cornerstone cases on the development of trade dress law in the U.S. Then I will describe on the basis of what has been set out in these cases the two main requirements that companies seeking protection of trade dress have to prove and how these requirements are interpreted in the United States

A. Recent developments of trade dress in the U.S.

The concept of trade dress has existed for many years. However its development by doctrine and case law lay dormant for several years. It was not until the Supreme Court decided in the Two Pesos case, the Wal-Mart case and the TrafFix case that the profile of trade dress was

elevated and its perception changed for intellectual property practitioners (Bartow, 2013). These three cases have shaped the latest developments of trade dress law in the U.S. in the last twenty years and have been discussed repeatedly by several authors and referenced in numerous precedents.

Two Pesos Case

The Two Pesos case is one of the milestones of the development of trade dress law in the U.S. It reached the Supreme Court, where they analyzed issues regarding trade dress distinctiveness and the necessity of proving secondary meaning.

Facts:

Taco Cabana was a chain of upscale fast-food Mexican restaurants in Texas, founded in 1978. By 1985 there were five Taco Cabana restaurants in San Antonio Texas. All of Taco Cabana Restaurants adopted a detailed trade dress that included the shape of the buildings, the internal decoration of the restaurant and the overall operational procedures ("Two Pesos, Inc. v. Taco Cabana, Inc," 1992).

In 1985 two restaurateurs opened in Houston a Mexican restaurant called “Two Pesos” with a trade dress similar to the one used by Taco Cabana. In 1987 after unsuccessfully trying to convince Two Pesos to modify its trade dress, Taco Cabana sued Two Pesos on the grounds of violating section 43(a) of the Lanham Act by using a confusingly similar trade dress which was distinctive and valuable to Taco Cabana as an identifier of its quality service ("Two Pesos, Inc. v. Taco Cabana, Inc," 1992).

Analysis of proceedings:

The court of first instance ruled in favor of Taco Cabana and found that it had a trade dress that could be considered inherently distinctive. This decision was made by the jury based on the instructions gave by the judge. The judge instructed the jury to decide if the trade dress used by Taco Cabana could be considered distinctive and gave the jury a definition of distinctiveness8.

8 The instructions given by the judge were: “Distinctiveness is a term used to indicate that a trade dress serves as

a symbol of origin. If it is shown, by a preponderance of the evidence, that Taco Cabana's trade dress

distinguishes its products and services from those of other restaurants and is not descriptive and not functional,

then you should find that Taco Cabana's trade dress is inherently distinctive. If it is shown that Taco Cabana's

trade dress does not distinguish its products and services from those of other restaurants, then you should find

that Taco Cabana's trade dress is not inherently distinctive” ("Two Pesos, Inc. v. Taco Cabana, Inc," 1992).

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However during the course of the trial Taco Cabana was not able to prove that its trade dress had acquired secondary meaning in the state of Texas.

Two Pesos appealed the decision, arguing, amongst other things, that the jury findings of inherent distinctiveness were contradictory to its findings that Taco Cabana had not acquired secondary meaning. The court of appeals found that such contradictions did not exist and explained that secondary meaning must be established only when the mark or dress is not inherently or sufficiently distinctive ("Two Pesos, Inc. v. Taco Cabana, Inc," 1992).

After losing the case in the appeal, Two Pesos went to the Supreme Court asking for a writ of certiorari and the Supreme Court confirmed the decision made by the court of appeal. The

court analyzed the usual classification of trademarks used in the Abercrombie test and concluded that suggestive, arbitrary and fanciful marks are inherently distinctive because their intrinsic nature serves to identify a particular source, and that generic and descriptive marks are never capable of inherent distinctiveness. However, descriptive marks can acquire distinctiveness via secondary meaning ("Two Pesos, Inc. v. Taco Cabana, Inc," 1992). In spite of this, the court never explained under which classification Taco Cabana´s trade dress fell.

In its argument the court stated that a trade dress, trademark or service mark is entitled to protection if it is distinctive. That is, if “it serves as a symbol of identification”. That can occur in two ways either by its own meaning or by association. The first is known as “inherently distinctive” and the second as “secondary meaning”. The court held that under section 43(a) there was no reason to apply a general requirement of secondary meaning to trade dress that was not required for other trademarks ("Two Pesos, Inc. v. Taco Cabana, Inc," 1992).

Relevance:

The importance of the Two Pesos case is that the court ultimately solved a long lasting dispute between the courts of appeals as to whether secondary meaning has to be proven in all trade dress cases. The court sent a clear message to the lower courts that trade dress protection would not depend on proving secondary meaning. However this decision left the door open for creative interpretation of inherent distinctiveness (Shpetner, 1998).

Under the decision, trade dresses can be protected under the Lanham Act if the trade dress holder can prove either that the trade dress is inherently distinctive, and therefore it immediately serves as an indicator of the source of the good; or if the trade dress has acquired secondary meaning such that customers associate the trade dress with a particular source (Bartow, 2013).

The main problem with the decision made by the Supreme Court is that it created uncertainty by failing to be explicit on the classification of the trade dress at issue. The court did not explain if the trade dress at issue could be classified under the Abercrombie test or if another type of classification was needed or under which cases there was no need to prove secondary meaning. Hence courts struggled for eight years, until the Wal-Mart case went to

the Supreme Court, with the distinction between product packaging and product configuration (Bartow, 2013).

Wal-Mart Case

Eight years after the Two Pesos decision, the Supreme Court decided another case that defined the scope of what can be protected as trade dress. The Wal-Mart case clarified one of the uncertainties left open in Two Pesos by making a distinction between product

packaging and product configuration.

Facts:

In this case, Samara Brothers was a clothing designer and manufacturer which created a line of spring/summer one-piece seersucker outfits decorated with appliqués of hearts, flowers,

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fruits, and the like. The seersuckers were sold in several chain stores. In 1995 Wal-Mart asked one of its suppliers to create a line of children's outfits for the 1996 spring/summer season. Wal-Mart sent its supplier pictures of a number of garments from Samara´s line on which the supplier’s garments were to be based; the supplier then copied sixteen of Samara´s garments with only minor modifications. The outfits were then sold by Wal-Mart and other retailers ("Wal-Mart Stores, Inc. v. Samara Brothers, Inc," 2000).

After sending several request to Wal-Mart and other retailers to cease selling the “knockoff” product, Samara sued Wal-Mart and the others for copyright infringement, consumer fraud and unfair competition, and for infringement of unregistered trade dress under section 43(a) of the Lanham Act. All of the defendants except Wal-Mart settled before trial ("Wal-Mart Stores, Inc. v. Samara Brothers, Inc," 2000).


The Jury ruled in favor of Samara´s Brothers claims and found that the designs could be protected as distinctive trade dress under section 43(a) of the Lanham Act. Wal-Mart tried to have the verdict overturned in the District and the Appeal Courts, but its arguments were rejected. Finally the Supreme Court granted certiorari and reversed the case ("Wal-Mart Stores, Inc. v. Samara Brothers, Inc," 2000).

The Supreme Court held that under section 43(a) of the Lanham Act a product design trade dress is only distinctive, and therefore protectable, upon a showing of secondary meaning ("Wal-Mart Stores, Inc. v. Samara Brothers, Inc," 2000). To reach this conclusion the Court acknowledged that the Lanham Act provided protection for trademarks and trade dress that have been used in commerce and are distinctive. However, the Court noted that some categories can never be considered inherently distinctive (Bartow, 2013).

In its argument the Court acknowledged that under section 43(a) of the Lanham Act the requirements for protection of trade dress were not clear. The act does specifically require proving that the element of protection is not functional, but it says nothing regarding distinctiveness. However in case of infringement of trade dress the Act does require that the infringing product is likely to cause confusion with the product for which protection is sought and courts have universally required to prove distinctiveness on the basis that without it the trade dress would not cause confusion, hence distinctiveness is an explicit prerequisite for registration under the general principles qualifying a mark for registration under section 2 of the Lanham Act ("Wal-Mart Stores, Inc. v. Samara Brothers, Inc," 2000).

The court argue that in the case of product design as well as in the case of color marks the consumer predisposition to relate the product with the source does not exist and consumers are aware that even the most unusual designs are not intended to identify the source but to render the product more useful or appealing. The fact that the product design serves other purposes than identifying the source does not only make the application of inherent distinctiveness problematic, it also can make its application harmful in terms of competition by depriving the market and competitors of using utilitarian or aesthetic features based upon alleged inherent distinctiveness ("Wal-Mart Stores, Inc. v. Samara Brothers, Inc," 2000).

The Court considered that the Two Pesos case correctly established the principle that trade dress can be inherently distinctive. However it did not established that product design trade dress could be. The Court argued that in Two Pesos the trade dress at issue was the décor

of a restaurant and it did not constitute product design. Instead It could be considered either product packaging or tertium quid, which is akin to product packaging but cannot be used in

the Samara Brothers trade dress ("Wal-Mart Stores, Inc. v. Samara Brothers, Inc," 2000).

Relevance:

The importance of this case is that it distinguishes from two subcategories of trade dress: product design and product packaging. According to the Court product packaging can be protected without the need to show secondary meaning because customers are able to associate the features of a product package with source identification, while in the case of

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product design customers do not readily associate the design with source identification (VerSteeg, 2012). Hence in the case of product design secondary meaning has to be shown in order to acquire protection.

The main impact of the case is that the uncertainty left by Two Pesos, regarding how trade dresses could be classified and in what cases it could be considered inherently distinctive disappeared. This case tried to gave clarity to lower courts and law practitioners regarding the cases in which secondary meaning has to be proven by classifying the trade dresses.

TrafFix Case

One year after the Wal-Mart case, the Supreme Court decided another case that fostered the development of trade dress law in the U.S. In the previous cases the court analyzed the distinctiveness requirement for trade dresses. In the TrafFix case the court had the

opportunity to address and set the standards for the functionality requirement of trade dresses.

Facts:

Marketing Displays, Inc. (MDI) was a successful manufacturer and seller of sign stands. Its temporary road signs had a dual-spring mechanism to keep the signs upright in adverse wind conditions. This mechanism was protected by two utility patents. MDI´s signs were recognizable to buyers because the dual-spring mechanism was visible near the base of the sign. Once the patents had expired, a competitor, TrafFix Devices, Inc, started to sell sign stands with a visible spring mechanism that resembled MDI´s ("TrafFix Devices, Inc. v. Marketing Displays, Inc," 2001).

MDI brought a suit against TrafFix for trademark infringement and for trade dress infringement, based on the copy of the dual-spring design, and for unfair competition. At the same time TrafFix brought a counter claim based on antitrust principles.


Under the court of first instance MDI succeeded on its trademark claim and was not held liable on the antitrust-related counterclaim. These two rulings were reconfirmed at the court of appeal. The claim for trade dress infringement was decided against MDI in the court of first instance and reversed in the court of appeal. Deciding the trade dress infringement, the court of appeal noted there were split decisions from other courts of appeals regarding cases with an expired utility patent that subsequently sought protection under trade dress. In order to resolve that conflict the Supreme Court decided to grant certiorari ("TrafFix Devices, Inc. v. Marketing Displays, Inc," 2001).

The Supreme Court elected to reverse the decision of the appeal court, arguing that functional features cannot be subject of trade dress protection and that trade dresses cannot become a practical equivalent of expired utility patents. In its decision the Court recognized that under the Lanham Act the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional. Courts have to be very careful when addressing these issues to avoid misuse or overextension of trade dresses. The Court recognized that in most cases of product design the design served purposes other than source recognition ("TrafFix Devices, Inc. v. Marketing Displays, Inc," 2001).

In its decision the Court explained that the disclosure of a feature in a utility patent constitutes strong evidence that the feature is functional. The dual-spring mechanism was paramount for the signs to resist strong winds and constituted a functional feature ("TrafFix Devices, Inc. v. Marketing Displays, Inc," 2001).

Regarding the argument that TrafFix could have used the same dual-spring mechanism but with a different design, the Court stated that it was unnecessary for competitors to search for other designs. The dual-spring assures users that the product works and having the

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mechanism visible serves an important market need. It would become a disadvantage if the competitor were required to hide the very feature the users sought. If is the case that a manufacturer seeks protection of an arbitrary ornamental feature of its design such as arbitrary curves of the legs or ornamental pattern colors of the spring then these aspect of the design could be protected as trade dress ("TrafFix Devices, Inc. v. Marketing Displays, Inc," 2001).

Relevance:

The decision of the Supreme Court in the TrafFix case was important for the development of

trade dress law, because it made it clear for patent holders that they cannot extend expired patents by making trade dress infringement claims under the Lanham Act (Christiansen, 2001). However the decision did not impose a rigid rule on which under any circumstances the existence of a utility patent forever forecloses the possibility of trade dress protection. Under the court decision, ornamental, incidental or arbitrary features of a product that had a utility patent may be protected as a trade dress (Bartow, 2013).

What may be considered the most important aspect of this decision is the discussion between the two standards usually used to evaluate functionality, the Inwood and the Qualitex standards. Under the Inwood standard a feature is functional if it is essential to the use or purpose of the product or if it affects its price or quality. Under the Qualitex standard a feature is functional if its exclusive use puts competitors at a significant non-reputation related disadvantage (Weinberg, 2001). In this case the court tried to make it clear under which circumstances each of the standards should be used to prove functionality, but as we are going to see below what really happened is that this decision created more uncertainties.

B. Legal requirements

We have seen how the Supreme Court has ruled the issues of distinctiveness and functionality in the cases of Two Pesos, Wal-Mart and TrafFix. In this section I will explain in

more depth the concepts of distinctiveness and functionality as legal requirements for the protection of trade dress.

Functionality

Section 43(a) of the Lanham Act states as a requirement for the registration or protection of a trade dress that the person who intends trade dress protections proves that the matter sought to be protected is not functional.

The doctrine of functionality is not new. In 1909 the Supreme Court recognized the idea of functionality in Kellogg Co. v. National Biscuit Co. The court denied trade dress protection for

a “pillow shape” of shredded wheat breakfast cereal under the arguments that the shape was functional because the cost of the biscuit would increase and the quality would be lessened if some other form were substituted for the pillow shape biscuit. Since this decision the doctrine of functionality has evolved and different standards have been set in order to address it (Johnson, 2011).

In 2001 with the TrafFix case, the Supreme Court set the two standards that courts should use when addressing functionality issues. These two standards are: 1) When it is essential for the product or affects its cost or quality9, and 2) when the feature is a competitive necessity10. The problem with the TrafFix decision is that the Court did not make clear if the two standards apply individually in respect of traditional and aesthetic functionality or if both

9 This is known as the Inwood standard and was created in the case Inwood Laboratories v. Ives Laboratories.

10 This is known as the Qualitex standard and was created in the case Qualitex Co. v. Jacobson Products. In this

case the court had to analyze whether a color standing alone could be protected as a trademark and addresses

the issue of aesthetic functionality.

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traditional and aesthetic functionality should be considered under the two standards (Johnson, 2011). However, from the reading of the TrafFix decision it can be understood that

the Court did not intended to set the Qualitex standard as a comprehensive definition of functionality, and that function corresponds to the Inwood standard. If functionality is proven under the Inwood standard there will be no need to inquire if the design feature is a competitive necessity or if there are other possible alternatives of design which might serve the same function (Weinberg, 2001).

The rationale behind excluding functional features from trade dress protection is based on some of the purposes that have been given to trademarks. Traditionally it has been said that trademarks served the function of preventing consumer confusion by allowing them to distinguish between the source of a product or service. More recently, it has been said that trademarks also serve the purpose of allowing the owner of the good will associated with a mark to capture this good will instead of its competitor. These two purposes must be balanced with the right to compete freely. Utilitarian functions usually do not intend to prevent consumers’ confusion or to serve as source identification. Instead utilitarian functions serve to make a product better. Hence, excluding utilitarian designs from trademark protection will not affect consumer’s confusion (Johnson, 2011).

The other reason not to allow utilitarian function to become protected by trademarks is that trade dress is not intended to create patent-like rights in product designs. Patent law gives a limited monopoly period in exchange for full disclosure and future use of the innovation to the public, while trademarks provide potentially infinite protection. Protection of functional features by trademark can create an unlimited and undesirable monopoly. Allowing competitors to copy can have beneficial consequences that can lead to technological advances. Allowing the copying of functional features may result in some misappropriation of the good will and hard work made by the company that has innovated in a product. However free competition is the base of capitalist economies and the benefits of such competition outweighs the burden to the trade dress owner in its loss of good will. Therefore, functionality has to be construed to limit the scope of trade dress protection in favor of competition (Johnson, 2011).

Distinctiveness

Distinctness is the second requirement needed in order to protect a trade dress. Distinctiveness means that the appearance of the product is enough for consumers to identify the product from the trade dress. The general rule regarding distinctiveness is that a mark can be protected and considered distinctive if it is either “inherently distinctive” or if it has acquired distinctiveness through “secondary meaning” (Shpetner, 1998).

Prior to the Two Pesos case courts did not agree that in the cases of trade dress secondary meaning should always be proven. For example the Seventh and Eleven circuits’ position was that if a trade dress was inherently distinctive, there was no need to prove secondary meaning. On the other hand other courts were not as willing to grant rights to trade dresses without showing secondary meaning. For example the Second Circuit considered itself unavailable to grant trade dress protection without proof of secondary meaning in the case of Vibrant Sales v. New Body Boutique. In Ferrari S.P.A. v. Roberts the Sixth circuit took the

position that secondary meaning should be proven in order to protect a trade dress. Those disagreements between the courts created the perfect scenario for the Supreme Court to rule once and for all in the Two Pesos case that trade dresses can be inherently distinctive and

secondary meaning does not always have to be shown (Bartow, 2013).

A trade dress is considered to be inherently distinctive if the design, shape or combination off elements is so unique in a particular market that consumers can automatically perceive it as an indicator of source (Shpetner, 1998).

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In Seabrook Foods, Inc. v. Bar-well Foods, Ltd the court created a test known as the Seabrook test. This supplies four factors to determine inherent distinctiveness11. (Bartow,

2013).

An example of an inherently distinctive trade dress is Marlboro. Marlboro uses the image of the Marlboro Man and Marlboro Country in its advertisements. Prior to the use of Marlboro of these elements, no other company in the cigarette industry had used the image of American West to sell its cigarettes. The Southern District of New York found that Marlboro´s trade dress was inherently distinctive because the western motif was unique in the cigarette market, and regardless of actual consumers awareness, consumers could potentially be aware of that fact (Shpetner, 1998).

If the trade dress cannot be considered inherently distinctive then secondary meaning has to be proven. Secondary meaning is created through long and exclusive use of the trade dress, so that it becomes associated with that particular kind of good or service in the minds of the consumers (Bartow, 2013).

Acquiring distinctiveness through secondary meaning is difficult and requires a great effort from the owner of the trade dress to associate a product with its unique trade dress (K. Smith, 2002). The company trying to prove secondary meaning may use consumer surveys and witness testimonies to establish the link between the trade dress and the source. Additional elements that can be used to prove secondary meaning are the sales success, the advertising effort, the advertisement expressly mentions the design features, request from third parties to license the design, and the intentional copying of the trade dress by competitors (Bartow, 2013). Secondary meaning has to be acquired in the relevant market or niches were the goods or services are sold. For example in Two Pesos Taco Cabana was

not able to prove secondary meaning because court asked to prove it had acquired it in all Texas but the restaurants were only located in San Antonio ("Two Pesos, Inc. v. Taco Cabana, Inc," 1992). Companies have to persuade court only to prove secondary meaning in the relevant market or area.

An example of a mark that has acquired secondary meaning is the Nike “Swoosh”. It has become an equivalent of the word “Nike” and serves as an indicator of source for sneakers and athletic gear (Shpetner, 1998). A further example of a trade dress that has acquired and proved secondary meaning is the case of Ferrari v. Roberts. In this case Ferrari proved its designs had acquired secondary meaning by showing: 1) there existed evidence of actual copying, 2) testimonies of magazines publishers stating that the public recognized Ferraris in their magazines by seeing only one portion of the car and, 3) surveys that evidenced that customers recognized a Ferrari by its design alone (Bartow, 2013).

As previously stated, since the Wal-Mart case it is clear that only trade dresses consisting of

product packaging can be considered inherently distinctive and trade dresses consisting of product design necessarily need to prove that they have acquired distinctiveness via secondary meaning ("Wal-Mart Stores, Inc. v. Samara Brothers, Inc," 2000). Hence in case

of trade dress infringement companies should try, if possible, to describe its trade dress as a product package, given that inherent distinctiveness is easier and cheaper to prove. Nonetheless companies should also keep records of their advertisements and conduct regular surveys and others in order to be prepared to prove secondary meaning if necessary.

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These factors are: 1) whether it is a “common” basic shape, 2) whether it is unique or unusual in the particular

field, 3) whether it is a minor change of a common well known form of ornamentation considered by the

customers as a dress or ornamentation for those particular goods, and 4) whether it is capable of create a

commercial impression separate from the accompanying words (Bartow, 2013)

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CHAPTER 3: DIFFERENCES BETWEEN UTILITY PATENTS, DESIGN PATENTS AND TRADE DRESS

In the previous chapters I have described what constitutes a trade dress, what are its characteristics and what requirements a trade dress needs to fulfill to be recognized by courts or registries. In this chapter I will describe the main differences between a trade dress and two other intellectual property rights known as utility patent and design patents. I will also describe the occasions in which these Intellectual property rights interact with each other and sometimes get confused.

A. Utility patents and its difference with trade dress

A utility patent provides protection to new, useful and non obvious inventions. Utility patents protect the useful or functional feature of an invention, regardless of its ornamental appearance (Bartow, 2013). Trademarks and patents are separated by the functionality doctrine. If what is sought to be registered as a trademark has a functional feature then it will not be possible to protect it in this way. The doctrine of functionality has been adopted in all jurisdictions as the most important barrier between trademarks and utility patents (Tomkowicz, 2012).

Patent protection arises only upon registration and grants a length of protection of 20 years. Once the patent has expired the public has the right to use the invention (Zimmerman, 2000). This differs from the protection given by trademarks which can last forever and never pass to the public domain.

The criteria to patent an invention are:

1) The invention must consist of a patentable subject: patentable subjects are established by the statutes of each country, and are usually expressed in terms of exceptions of patentability. An example of a field that can be excluded from patentability is: inventions which cannot be used in commerce because they contravene public policy or moral grounds (WIPO, 2004). For example inventors cannot protect new recreational drugs because it may be against public policy.

2) The invention must be industrially applicable: The invention needs to be applicable for practical purposes and not be only theoretical. If the invention is intended for a product, it should be possible to make the product and if the invention is applied to a process it should be possible to carry out that process (WIPO, 2004).

3) The invention must be new: An invention is considered new if is not anticipated by the prior art. Prior art means all the knowledge that existed before the application for the patent (WIPO, 2004).

4) The invention must be non-obvious: The invention cannot be obvious to a person having ordinary knowledge in the art. This differs from the novelty requirement because novelty exists if there is a difference between the prior art and the invention. The non obviousness requirement means that it has to come from a creative idea and that and it must mean and advance in the prior art (WIPO, 2004).

5) The invention needs to be sufficiently disclosed in the application: The application must disclose the invention in a manner sufficiently clear for the invention to be carried out by a person skilled in the art (WIPO, 2004).

As seen from the criteria to protect a patent there are some differences with trademarks and in our case with trade dresses. For a trade dress to be protected it needs to prove that it is distinctive and that is not functional. In the case of utility patents the invention must be new and non-obvious. These requirements for example are not asked for trade dresses.

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Nevertheless, utility patents and trade dress can intersect on some occasions, usually in opposition to each other. For example in the TrafFix case the issue to solve was if the

existence of a utility patent could prevent trade dress protection on those same features (Bartow, 2013). As stated in TrafFix it is possible to protect with a trade dress some features that were part of a utility patent, but it has to be clear that these features are ornamental or aesthetic and did not form part of the functional aspects of the patent ("TrafFix Devices, Inc. v. Marketing Displays, Inc," 2001). For example if in the TrafFix case MDI had painted the springs with a stripe design and covered them with glitter for arbitrary reasons, then most likely the court would have held that the visible springs with that design constituted a trade dress. On the contrary if the glitter had the function of making the springs and the sign visible from a longer distance, most likely the court would have held that the glitter did not constitute a trade dress.

For this reason is paramount when filling for a utility patent to clarify in the description which features serve a functional purpose and which ones are ornamental or aesthetic.

Trademarks and utility patents can also interact in a non-opposite manner, though these cases are not that common. These overlap between trademarks and utility patents occurs because there is a tendency to expand IP rights’ scope of protection. In the case of utility patents there have been expansions in what can be considered eligible for patent. The expansion of the subject matter of patent for eligible cases has allowed that some features or products that are primarily non-functional be granted with utility patents protection. For example in 1995 the U.S. Patent and Trademark Office granted a utility patent12 to a hat. The hat was analogous to a baseball cap where the dome was yellow and the brim had an irregular form and a white color. The hat was designed so the wearer looked like it was wearing a fried egg on its head. The design of the hat was considered functional because it could be used as an attention getting article for promotional activities at trade shows or conventions. This view of functionality could apply to several products protected with design patents or trademarks on the basis that the product can serve an attention getting function to be use for commercial purposes (Beckerman Rodau, 2011). In this case there could be overlapping rights, because at the same time the hat could be protected as a trade dress if for example is part of the uniform of a restaurant that serves eggs.

The egg shaped hat could also be protected under a design patent. For example the U.S. Patent and Trademark Office granted a design patent13 to a hat that looks like a cheeseburger on the basis that its purpose was ornamental and not functional (Beckerman Rodau, 2011). The same hat could be considered functional if at that time the registration office had considered that it could be used for promotional activities.

This inconsistent treatment of IP in the clothing industry creates significant unpredictability and suggests a level of arbitrariness with regard to the IP protection that can be obtained (Beckerman Rodau, 2011).

B. Design Patents and its differences with trade dress

Design patents provide IP rights similar to the ones given by utility patents. However design patents have the objective of protect non-functional aesthetic or ornamental appearance of a product rather than its functionality (Beckerman Rodau, 2011). A design patent only protects the ornamental features of an entire article or an identified part of an article. (Wilkof & Basheer, 2012).

The articles themselves are not protected by design patents and neither are designs not related to an article or product. Design patents protect the appearance of a product or the

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U.S. Patent Reg. No. 5.457.821 13

U.S. Patent Reg. No. D273.435

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design that is embodied in an article. Then only if the particular design is attached to a product can it receive protection via design patent (Bartow, 2013).

The function of design patents is to protect one of the elements by which manufacturers reach market success. The appearance of a product is one of the characteristics that influence consumers to buy a particular product instead of another, especially in fields where there are several products performing the same function, with similar quality and price. The protection of a design patent serves as an incentive for the effort used in fostering the design element of production (WIPO, 2004).

Design patents are similar to trade dress in the sense that both protect only non-functional and ornamental features. However, trade dress purpose is to protect the public against confusion and to protect the good will of the trade dress owner. Design patents on the other hands serve the purpose of encouraging innovation (Bartow, 2013).

The term of protection of a design patent is 14 years from the date of issuance. As well as with utility patents, a design patent does not need to be used in commerce in order to be recognized and protected (Wilkof & Basheer, 2012). As stated in chapter 1, trademarks need to be used in commerce in order to be protected and recognized and they not necessarily need to be registered.

The requirements for obtaining a design patent are generally the same ones as to obtaining a utility patent, namely novelty, non-obviousness, written description and patentable subject (Wilkof & Basheer, 2012).

Design patents, as well as utility patents, confer on the owner the right to exclude others for a limited time to use, copy, produced, sell or import the patented design. Trade dress on the contrary does not give the owner the right to exclude others from using its trade dress if the copied trade dress does not generate confusion regarding the origin or source of the product (Bartow, 2013).

In general, design patents are easier to obtain than trade dress protection. An application for a design patent requires only illustration of the ornamental aspects of the design. Even though the design must be novel, non-functional and non-obvious, the applicant for a design patent does not need to articulate what is novel and what not about its design. Additionally design patents do not serve as a source identifier, so its owner is not required to demonstrate that the design is distinctive. On the contrary, to obtain protection of a trade dress the owner needs to specifically define its elements, use it in commerce as a source identifier, and to show that the trade dress is distinctive and not functional (Wilkof & Basheer, 2012).

Trade dress rights and design patents overlap in many ways. These two IP rights can also overlap constantly with copyright but I will not address this further herein. The overlap between trademarks, design patents and even copyright occur mostly because the functionality doctrine that serves to separate utility patents from trademarks does not operate in the context of distinguishing between the design patent subject matter and trademark subject matter. Thus ornamental design in several occasions can be protected at the same time as a trademark, a design patent or a copyright. The availability of several forms of protection for the same feature or article, presents a big challenge for IP practitioners, because it is not easy to determine which form of protection is more appropriate (Moffat, 2004).

As an example, the ornamental design used in the front of a car can be protected on the form of design patent, copyright or trade dress. The front of the car will be protected by a design patent if it is novel and non-obvious. It will also qualify for copyright protection if is an original expressive work, and it will qualify for trademark protection if it serves to indicate the source of the car (Moffat, 2004). A real example of a three dimensional shape that has been

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protected simultaneously by both a design patent14 and a trademark15 is the Coca-Cola bottle (Moffat, 2004).

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U.S. Patent Reg. No. D63.657 15

U.S. trademark Reg. No. 1.057.844

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CHAPTER 4: ADDRESSING THE ISSUES OF DISTINCTIVNESS AND FUNCTIONALITY

Throughout this paper we have seen how trademarks serve the purpose of identifying products and give information to the customers about the source of the products. Besides this function in chapter 1 we established that from a business perspective trademarks are more than source identifiers and that the concept of brand has other purposes that are of paramount importance to companies, such as creating a reputation, recognition and image for the company or product that holds the brand. Trade dress as a component of trademark law has the capacity to realize all these functions. In order for a trade dress to be able to successfully accomplish these functions and to prevent others from imitation, it has to be capable of registration or to be able to be recognized in courts. In order to be protected the trade dress owner has to prove that its trade dress is distinctive, either inherently distinctive or by acquired distinctiveness, and non-functional. In this chapter I will show some strategies that can be used in order to address the issues of functionality and distinctiveness, especially acquiring secondary meaning.

A. First protect by design patent

Patents are easier to obtain than trade dress. A company can file and obtain a patent before using the product, whereas to obtain trade dress protection, especially in the cases that require to prove secondary meaning, it may take years to develop the consumer recognition and acquire distinctiveness (Wilkof & Basheer, 2012). Usually the U.S Patent and Trademark Office will find the existence of acquired distinctiveness based on at least five years of continuous and exclusive use of the mark (Crouch, 2010).

Nonetheless, companies may prefer to obtain trade dress protection because it can last forever. However, if a competitor copies the trade dress during the period in which the companies is acquiring distinctiveness for its trade dress, all the effort, resources and time invested will be lost. Therefore protecting first with a design patent will give temporal exclusivity of the design in which the company can execute all the efforts to acquire distinctiveness without the risk of losing the investment (Wilkof & Basheer, 2012).

Up to a point, the strategy of registering first a patent and then the trade dress can work with utility patents also, because both design and utility patents share core features regarding the process of obtaining and protecting the rights (Crouch, 2010). However due to the functionality aspect of utility patents the implementation of this strategy may not be as easier to achieve than with design patents, especially since the TrafFix case asserted that the

existence of an expired utility patent serves as strong evidence of functionality.

Design patents and trade dress regimens are somewhat parallel: both focusing on the visual aspect of a product or packages, both are limited by the functionality doctrine, and both exclude the competition for using a similar design which may confuse customers. However there are some differences that make design patents available when trade dress cannot be protected. By providing a significant period of exclusivity, design patents can help in the process of customer association between the design and its source. This association would in the future serve as evidence of acquired distinctiveness for trade dress protection (Crouch, 2010).

Design patents and trade dress can live at the same time so it is not necessary for the patentee to wait until its patent has expired to register a trade dress that has acquired distinctiveness. This approach was used by Apple with the design of the Ipod Nano. Apple applied for a design patent16 to protect the design of the Ipod Nano in August 2005, before launching the product onto the market. Following the application for the design patent, Apple

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U.S. Patent Reg. No. D549.237

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applied, in July 2006, for trade dress registration and received its certification of registration17 in January 2008, after presenting substantial evidence of acquired distinctiveness (Crouch, 2010).

In this case it can be seen how the early application of the design patent, previous to launching the product to the market, allowed Apple to make an early claim of its rights without publicly releasing information about the design. Then with the following application of trade dress Apple was able to obtain an additional level of protection that could potentially last forever (Crouch, 2010).

If Apple had tried to apply for trade dress protection immediately after launching the product to the market, most likely the registration office would not have allowed the protection based on lack of distinctiveness. If Apple had launched the product to the market without protecting the design with a design patent a competitor would have been able to copy the design at any point between the time the product is launched and when the trade dress acquired distinctiveness, and all the effort of Apple would be lost.

Timing is of the essence to successfully apply this strategy. Companies need to be very careful to protect the design first with a design patent, then launch the product to the market, followed by an intensive advertisement campaign that creates recognition of the trade dress to finally be able to prove acquired distinctiveness and protect the design as a trade dress.

B. From utility patent to trade dress

The transition from a utility patent to a trade dress is not as easy to achieve as with the design patent. The non-functional requirement to protect trade dress ensures that companies would not try to use it to extend the monopoly given by the patent (Christiansen, 2001). However, as stated in TrafFix, it is possible to protect a trade dress via some features that were part of a product protected by utility patent but that did not formed part of the functional aspects of it and were aesthetic or ornamental ("TrafFix Devices, Inc. v. Marketing Displays, Inc," 2001).

Companies should, in anticipation of future protection of trade dress, carefully prepare the patent application. The person in charge of preparing the application should include only a description of the functional features and exclude ornamental, incidental or arbitrary features. These features could later be protected as a trade dress (Christiansen, 2001).

In order for this to work it is necessary to have a close and early collaboration between creators, marketers, managers and lawyers. Leaving the decisions about the best way to protect a design to one single person is not optimal, because even the smallest adjustments in the design and the way to protect it can have a significant impact on the application for protection as a trade dress (Oberholzer-Gee, 2013).

The design of Ferrari offers a good example of how every detail counts when companies are trying to protect trade dress.

Ferrari cars have a unique design that distinguishes them from other cars. In 1980 Roberts Motor Co realized that some people wanted to own a Ferrari Testarrosa but could not afford it. Roberts started to manufacture and sold a one piece body shell, made of fiberglass, which looked similar to the design of the Ferrari Testarrosa. People could buy these shells for $8.500, remove the body from an affordable sport car, replace it with the shell made by Roberts, and have a car that looked like a Ferrari Testarrosa. Ferrari wanted to stop Roberts from producing this shell but did not have a utility or design patent on the shape of the car. Ferrari argued that the shape of the car constituted a trade dress and could not be copied. To prevail in its argument Ferrari had to prove that the shape of the car was not functional. This could have been very hard to prove given that Ferrari cars are designed to run fast and

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U.S. Trademark Reg. No. 3365816

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in that case the shape of the car could be considered functional. However Ferrari overcame this barrier with the testimony of Angelo Bellei, who had developed the Ferrari´s grand touring cars from 1964 to 1975. In his testimony Bellei stated that the company selected the exterior design of their cars based on beauty and distinctiveness, not utility. This testimony convinced the court and the design was protected as a trade dress (Oberholzer-Gee, 2013).

From this example it can be seen that the slightest failure in the description or use of the design can greatly affect the possible protection of a design as a trade dress. Let us imagine for a moment that in this case the car used to be protected by an expired utility patent. If at the moment of registering the utility patent the employee of Ferrari in charge of doing so does not make it clear that the design was chosen for arbitrary reason and it is not part of the functional features of the patent, most likely the design would never have been able to be protected as a trade dress.

The main take away of this case is nonetheless that if the R&D, marketing, management and legal departments of a company are not highly integrated and in constant collaboration, full benefits of intellectual property cannot be achieved (Oberholzer-Gee, 2013).

An opposing example is the case of the 901 speakers of Bose Corporation. The speakers design were denied trade dress protection due to some statements made in the patent registration, as well as some advertisements, which said that the five-sided enclosure shape of the speakers was functional (Cohen, 2004). Most likely in this case there was not a good communication between all departments of the company. If it had been the case that there existed some coordination between the areas of the company, most likely legal counsel would have prevented the appearance of ornamental or brand identifying features in the registration for the utility patent, and if they had to appear they should have been explicitly described as non-functional. At the same time if there had existed a proper collaboration between the marketing department and the other departments of the company, someone would have advised the marketing department not to promote the shape of the speakers as functional.

A successful case of a company that was able to protect its product with trade dress after having a utility patent is the Zippo Lighter. Zippo Manufacturer Company was able to successfully secure trade dress protection for the design of its lighters despite a previous utility patent. Zippo was able to do this because design managers and IP counsels worked together from the beginning of the design process to actively promote design protection. In this case managers and lawyers urged industrial designers to introduce brand identifying features to the product shape. The registration office granted protection to the shape of the lighters18 because it found that the rounded edges and corners of the lighters body, and the curvature in the shape of an arc at the top of the lighter constituted differentiating features from the common rectangular shape of other lighters (Cohen, 2004).

Zippo was able to achieve this and the registration office granted the design as ‘not functional’ based on the following: 1) Zippo´s utility patent showed a lighter with rectangular shape and straight lines and the patent focus in the internal mechanism as opposed to the shape, 2) none of Zippo´s advertisements or literature showed the lighter shape as an utilitarian advantage, 3) Zippo was able to show the availability of alternative designs and hence proved there was not anti-competitive effect, and 4) Zippo was able to prove that its lighter had acquired distinctiveness in the market (Cohen, 2004).

C. Be consistent with the use of the trade dress

Companies should be consistent with the use of their trade dress if they are considering protecting it. By consistency I mean a uniform use for a long period of time and across all

18

U.S. Trademark Reg. No. 2.606.241

23

locations or markets. Consistency is not only important to protect the trade dress, but also to create recognition.

The continuous use of a trade dress for several years without severe modifications is one of the factors courts look at to determine if a trade dress has acquire secondary meaning. The company has to present evidence that is has used the trade dress exclusively for a long period of time. Changing the package or appearance of a product or discontinuing its use for a period of time makes it very difficult for the company to acquire distinctiveness and prove secondary meaning (K. Smith, 2002).

Many companies that are always changing the design of their packages or product to adapt them to the latest trends and may never be able to protect these as a trade dress. For these companies, trade dress protection is not an issue that concerns them because they are looking to follow the trends, not to create an identity through their package or product design.

On the contrary companies that want to secure a market advantage in the future and have a trade dress that becomes a valuable and long-lasting asset need to be consistent with its use. Trademark recognition does not happened in one day, is a long-lasting effort made by the companies to create a link between the trademark, the information that it intends to provide and the product the trademark is attached to (Brown Jr, 1947).

The consistent use of the same trade dress across all markets and locations can also be a strategy to achieve competitive advantages in a globalized world. This is especially important these days with the increase and expansion of satellite television, internet, and air travels. People tend to recognize products first by their color schemes, shapes, and unique graphic elements; and second by their names. Changes of the name in different markets may not have such a negative consequence as people might think. The brand identity is usually best communicated across all countries through packaging graphics or product configuration that are standardized as much as reasonably possible. In order for trade dress to become a strong brand (and by strong brand I mean consumers’ association of the trade dress with the product), it must remain consistent everywhere. If consumers are not able to recognize the trademark they are looking for in the advertisement or the shelf they may switch to a competitor’s product (Roellig, 2001).

An example of consistent use of a trade dress in a globalized market is the low calorie version of Coca-Cola. In some countries the use of the word “diet” in a product may have a negative connotation. For this reason Coca-Cola Company had to come with two different names for its low calorie version of Coca-Cola. The product was named in some countries “Diet Coke” and in others “Coca-Cola Light”. The company then had the challenge of creating a compelling trademark that would be consistently recognizable in 146 countries regardless the name that appeared in the product. Coca-Cola created and positioned a trade dress with the same characteristics in every country so the costumers were able to recognize the product just by looking at the graphics, regardless of the name. This strategy allowed Coca-Cola to make its product identifiable all over the world regardless if the name was rendered in English, Korean, Chinese or Cyrillic (Roellig, 2001).

As explained, consistency of trade dress can serve two purposes; create market advantages in a globalized world and strength the position of the trade dress to be protected. In a case for trade dress protection between two chain restaurants19, the court held that trade dress was not "unique or unusual" because plaintiff did not maintain a uniform decor and floor layout in each of its restaurants. Trade dress should be kept uniformity across all markets or locations to improve the odds of being protected (Ghajar & Burt, 2007).

In order to acquire distinctiveness or achieve enough recognition there has to be a consistent use of the trade dress for a prolonged period of time without deviation of the identity that was set since the beginning. Marlboro for example has been using its trade dress for a long period of time and has been successful in creating and identity that has become a virtual

19

Ale House Management, Inc v Raleigh Ale House, Inc

24

cultural icon of ruggedness and masculinity. By using the trade dress for a long period of time and protect its unique identity Marlboro has successfully achieved a huge amount of recognition in its trade dress. Marlboro has not change the identity of its trade dress since 1955 and hence its distinctive red and white trade dress has become immediately recognizable all over the world. The care with which Philip Morris has treated this trademark has implications that go beyond sales and goes right to the valuation of the brand. For example in 1992 the Marlboro brand was valued in $31billion, making it the world’s strongest product line (Selame, 1993).

D. Advertising to promote the design, not to tout the benefits

The manner in which companies advertise their products can also have an impact on the future protection of the trade dress. Courts look at different factors to determine whether a trade dress has acquired secondary meaning. One of these factors is the amount and type of advertisements that companies have made.

Successful advertisement directs the demand to the article that bears the trademark, in our case the trade dress. The trade dress then becomes a vital link between the advertisement and the product. If this is done in a continuous way the trademark then becomes more than the tool through which advertising is transmitted, and acquires commercial magnetism by itself. One of the oldest advertising strategies to achieve this is the reiteration of the trademark in the advertisement (Brown Jr, 1947).

Companies should document the amount and manner of advertising that they have used for the product. In this case the more spend in advertising the stronger the proof for acquired distinctiveness. For example, in one case20 the manufacturer of a dog house in the shape of an igloo was only able to establish that its trade dress had acquired secondary meaning after proving that it had conducted a massive seven-year advertising campaign that resulted in the customers’ association of the shape of the dog house with the company (K. Smith, 2002).

Not only the amount of advertising is important in order to protect the trade dress; even more important is the way the advertisement is affected. The advertisement needs to establish a link between the trade dress and the company or product (K. Smith, 2002). This is done by highlighting in the advertising the unique design characteristics or shape of the trade dress instead of advertising the product’s utilitarian functions or benefits.

A good example of a company that uses advertising campaigns to strength the position of its trademarks and especially its trade dresses is Apple. Apple´s strategy relies on their knowledge of the intellectual property law to guide investments in the design combined with advertising campaigns that specifically highlight the product’s unique shape and design. With this kind of advertisements Apple creates secondary meaning in the mind of consumers and this secondary meaning becomes the basis for securing the product shape as a trademark (Orozco, 2010).

Most Apple commercials for example consist of a white or black background with the device prominently displayed in the center of the screen, accompanied with a catchy tune and always with the Apple logo and product’s name at the end. In this kind of commercials Apple tries to make its device the main and solely star of the advertisement. Sometimes Apple uses human hands holding the device in order to show the viewers the size and shape of the product. Apple´s marketing and advertisement strategy are made to highlight the “look and feel” of the device and its unique characteristics in order to build secondary meaning (Bartow, 2013).

Besides promoting the shape and trade dress of the product in the advertisement, companies should also be careful not to weaken their claim for trade dress protection by addressing functional features in their own advertisement (Greenberg & Johnson, 1994) in

20

Doogloo Inc vs. Northern Insurance Co

25

the case of the 901 speakers of Bose Corporation, given in “section B” of this chapter. Bose Corporation for example weakened its trade dress claim by mentioning in its advertisements that the shape of the speakers had a utilitarian function.

A good strategy to strengthen the position of a trade dress in the market is to build secondary meaning and evade mentioning utilitarian features in the advertisement using “look for” advertisements instead of “touting” advertisements. “Touting” advertisements are those that promote the benefits of the product and address the functional use of the product while “look for” advertisements are those that indicate to the viewers what to search for; which is done by emphasizing the design, color or shape of the product. For example advertisements that tell the viewer to search in stores the triangular bottle or the yellow package (Welch, 2004).

A good example of how companies can use advertisements to reduce the odds that the trades dress will be seen as functional occurs in the pharmaceutical industry. Two cases in particular illustrate this point.

The Supreme Court has recognized that color can sometimes serve as a trademark. But in the pharmaceutical industry color can sometimes become functional because the public may rely on the color of the pill to determine which drug to take.

In the case of Shire U.S. Inc vs. Barr Laboratories Inc the Court denied trade dress protection to Shire’s Adderall tablet. Shire had sold for several years the Adderall tablets in two colors, 10mg tablets in blue and 20mg tablets in orange. The tablets were stamped with the letters AD on one side and the dosage on the other. Shire promoted this product only through literature given to physicians, featuring pictures of the drug. In 2002 Barr Laboratories began selling the generic version of Adderall using the same color trade dress as Shire. The Court found that the trade dress was functional because the color scheme allowed the generic drug to gain acceptance and be used by consumers. The court found that the color allowed the consumers to identify the drug and gave them confidence when switching to the generic. (Pile, 2004) In this case most likely the lack of massive advertising campaigns prevented Shire from demonstrating that costumers identified the color of the tablets only with the product produced by Shire and hence it should have served as a source identifier.

On the contrary, AstraZeneca marketing campaigns are a good example of how companies can, through advertisement, reduce the likelihood of color being seen as functional and instead become a source identifier. AstraZeneca used in all its advertisements elements for consumers to look for the purple pill, hence creating a source identifier function for the purple color of its Nexium tablet in the mind of consumers (Kramer, 2003). This advertising campaign most likely helped AstraZeneca to persuade the registration office to grant protection to the purple pill as a trade dress21.

21

U.S. Trademark Reg. No. 3.188.285

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CONCLUSION

Throughout this document I have described how trademarks are seen as important elements of Intellectual property law that serve the function of identifying the source of a particular products, but are also able to carry out many other functions that are important from a business perspective, such as upholding the reputation of the company due to that product or providing customers with stories and images. Trade dresses as part of the trademark world are able to achieve these many functions and be used by companies to acquire competitive advantages to distinguish themselves and their products from those of competitors. However the successful protection of a trade dress may not be so simple. Courts have struggled with the interpretation of the requirements needed to protect a trade dress and how to apply these requirements to different type of trade dresses and products without extending this protection to elements of a trade dress that can generate anticompetitive consequences.

The lack of clarity in the interpretation and treatment of the requirements of distinctiveness and non-functionality can lead companies to make mistakes during the development of their trade dress that cannot be solved later on, and will not allow the company to avoid imitation of their trade dress. The company then loses all this effort and investment put into creating a unique design or presentation of a product that might have given them substantive competitive advantages to distinguish themselves and remain above competitors.

In most cases the successful protection of a trade dress by a company will depend on how it addresses the issues of distinctiveness and non-functionality of its trade dress. In order to successfully address these two requirements companies have to know from the beginning what are the elements that constitute their trade dress, how can these elements become distinctive, what they can do or what they have to avoid to make this trade dress distinctive and non-functional.

Companies can apply different strategies to achieve the protection of their trade dress. Because the registries and courts´ approach to the requirements of distinctiveness and non-functionality is highly open to interpretation, companies and those seeking protection can use various strategies and tactics to take advantage of this fact. By strategically explaining and structuring arguments persuasively, one can structure arguments in such a way that these bodies may be persuaded to consider the trade dress as distinctive and non-functional even where there are elements that from another perspective may be seen as non-distinctive or functional and thereby still obtain trade dress protection.

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Protecting the Design and Presentation of Products